International Comparative Legal Guides Patents 2020 A practical cross-border insight into patent law 10th Edition Featuring contributions from: A&L Goodbody Gleiss Lutz Reinhold Cohn & Partners, Reinhold Cohn Group Bär & Karrer Ltd. Gorodissky & Partners Ukraine Reising Ethington P.C. Bech-Bruun Gowling WLG Rouse Bird & Bird LLP Kadasa Intellectual Property Setterwalls Blake, Cassels & Graydon LLP Kirkland & Ellis LLP Shearn Delamore & Co. CAPE IP law LexOrbis Studio Legale Russo Valentini Chuo Sogo Law Office, P.C. Lifang & Partners SyCip Salazar Hernandez & Gatmaitan Daniel Law Morgan & Morgan Templars De Beer Attorneys Inc. Nestor Nestor Diculescu Kingston Petersen TIPLO Attorneys-at-Law DERIS OLIVARES Wikborg Rein Advokatfirma AS Duane Morris LLP Oxera Consulting LLP Elzaburu Patrinos & Kilimiris Gilat, Bareket & Co., Reinhold Cohn Group Pham & Associates ICLG.com Table of Contents Expert Chapters International FRAND: The last 18 months and what lies ahead 1 Jane Mutimear & Richard Vary, Bird & Bird LLP Valuation of FRAND: Recent developments and looking forward 6 Dr. Avantika Chowdhury & Shreya Gupta, Oxera Consulting LLP 12 Can We Just Be Reasonable? Scott A. Hogan, Reising Ethington P.C. Many (Un)happy Returns: Government Cannot Initiate Post-Grant Invalidation Proceedings Under the America Invents Act, U.S. 17 Supreme Court Says D. Stuart Bartow, Duane Morris LLP Amendments to the Russian Legislation on Inventions and Utility Models 21 Maxim Sobolev, Rouse & Co. International (UK) Limited (Moscow Branch) 24 Gulf Co-operation Council Countries – Patent Landscape Sara Holder, Rouse & Co. International Mohammad Jomoa, Kadasa Intellectual Property Country Q&A Chapters 27 Australia 115 Israel Bird & Bird LLP: Jane Owen & Rebecca Currey Reinhold Cohn Group: Eran Bareket & Ronnie Benshafrut 34 Belgium 123 Italy CAPE IP law: Patricia Cappuyns & Véronique Pede Studio Legale Russo Valentini: Roberto Bonatti 42 Brazil 129 Japan Daniel Law: Rana Gosain & Ricardo Nunes Chuo Sogo Law Office, P.C.: Naoko Nakatsukasa Malaysia 50 Canada 137 Blake, Cassels & Graydon LLP: Anthony Prenol & Shearn Delamore & Co.: Timothy Siaw & Brett Slaney Pravind Chandra 57 China 144 Mexico Lifang & Partners: Manxia Xu OLIVARES: Daniel Sanchez y Bejar, Sergio Luis Olivares Lobato & José Alejandro Luna Fandiño 64 Denmark Bech-Bruun: Klaus Ewald Madsen & 154 Myanmar Martin Dræbye Gantzhorn Rouse: Fabrice Mattei & Moe Mynn Thu 72 France 161 Nigeria Gowling WLG: Céline Bey & Clémence Lapôtre Templars: Ijeoma Uju & Osayimwense Ogbeta 85 Germany 168 Norway Gleiss Lutz: Dr. Matthias Sonntag & Dr. Herwig Lux Wikborg Rein Advokatfirma AS: Gunnar Meyer & Åse Røynestad Konsmo 92 Greece Patrinos & Kilimiris: Constantinos Kilimiris 175 Panama Morgan & Morgan: María Eugenia Brenes Tovar 98 India LexOrbis: Joginder Singh, Varun Sharma & 182 Philippines Dr. Pradeep Kumar Kamal SyCip Salazar Hernandez & Gatmaitan: Vida M. Panganiban-Alindogan & Anna Loraine M. Mendoza 107 Ireland A&L Goodbody: John Whelan, Alison Quinn & 189 Romania Sinéad Mitchell King Nestor Nestor Diculescu Kingston Petersen: Sorina Olaru, Daniela Savin (Ghervas) & Alina Tace (Dumitru) Table of ContentsXX 196 Russia 247 Thailand Rouse & Co. International (UK) Limited (Moscow Rouse: Fabrice Mattei & Manoon Changchumni Branch): Maxim Sobolev & Andrey Cherkasov 255 Turkey 202 Saudi Arabia Deriş Attorney-At-Law Partnership: Kadasa Intellectual Property (in association with Rouse & Mehmet Nazım Aydın Deriş, Okan Çan & Oya Yalvaç Co. International): Mohammad Jomoa & Sara Holder 264 Ukraine 209 South Africa Gorodissky & Partners Ukraine: Nina Moshynska De Beer Attorneys Inc.: Elaine Bergenthuin & Claire Gibson 272 United Arab Emirates Rouse & Co. International: Sara Holder 217 Spain Elzaburu: Colm Ahern & Alessandro Pelliccioni 278 United Kingdom Bird & Bird LLP: Katharine Stephens & Audrey Horton 223 Sweden Setterwalls: Martin Levinsohn & Per Lidman 289 USA Kirkland & Ellis LLP: Kenneth R. Adamo & 230 Switzerland Bär & Karrer Ltd.: Dr. Markus Wang & Dr. Jonas Eugene Goryunov Bornhauser 297 Vietnam Pham & Associates: Pham Vu Khanh Toan 238 Taiwan TIPLO Attorneys-at-Law: J. K. Lin & H. G. Chen ICLG.com Chapter 20XX 129 Japan Japan Chuo Sogo Law Office, P.C. Naoko Nakatsukasa 1 Patent Enforcement 1.4 What has to be done to commence proceedings, what court fees have to be paid and how long does it generally take for proceedings to reach trial from commencement? 1.1 Before what tribunals can a patent be enforced against an infringer? Is there a choice between tribunals and what The proceedings commence by filing a complaint with a court of would influence a claimant’s choice? competent jurisdiction. A complaint should set out material facts and arguments that support the merits of each asserted claim. When Patent rights can be enforced either in the Tokyo District Court, the complaint is filed, the plaintiff must pay a court fee which varies which has exclusive jurisdiction over intellectual property cases in depending on the amount in dispute. For example, if the plaintiff eastern Japan, or in the Osaka District Court, which has exclusive seeks damages of 50,000,000 yen, the court fee would be 170,000 jurisdiction over such cases in western Japan. A defendant’s domicile yen. The amount in dispute for non-monetary remedies, such as or the place where the infringement occurred determines which of injunctive relief, is calculated based on a formula set out by the court. these courts has jurisdiction. In addition, if the plaintiff seeks A complaint is then served on the defendant(s) by the court along monetary damages, the plaintiff ’s domicile will determine which of with the summons. The first court hearing usually occurs four to six the two courts will have jurisdiction. Provisional injunctions may weeks after the complaint is filed. also be brought in the Tokyo District Court or the Osaka District Court. 1.5 Can a party be compelled to disclose relevant documents Patent cases brought before these two courts are heard by their or materials to its adversary either before or after respective Intellectual Property Divisions that specialise in intellectual property cases. Intellectual Property Divisions have a commencing proceedings, and if so, how? long history going back to the 1960s. The Intellectual Property High Court (“IP High Court”), which is a special branch of the Tokyo Although Japan does have an extensive American-style discovery High Court, has exclusive jurisdiction over appeals of patent cases system, the law provides for document production in certain cases. from both the Osaka District Court and the Tokyo District Court. It is generally each party’s responsibility to collect and submit evidence which it considers necessary to prove its case or rebut the 1.2 Can the parties be required to undertake mediation case of its adversary. However, under Article 105 of the Patent Act, the court may, upon the motion of a party, order the other party to before commencing court proceedings? Is mediation or produce documents that are required to prove the alleged arbitration a commonly used alternative to court infringement or to calculate damages. In addition, under Article 104- proceedings? 2 of the Patent Act, a defendant who denies that specific conditions of an article or process claimed by the plaintiff constitute alleged There are no such requirements. Neither mediation nor arbitration infringement is compelled to show evidence that clarifies the specific is commonly used with respect to patent enforcement. conditions of its act. Under Article 104, where the patent covers a process for producing a product, where the product was not publicly known prior to the filing of the patent application, the defendant 1.3 Who is permitted to represent parties to a patent dispute may be compelled to show evidence that its products are produced in court? by a process other than the patented process. Attorneys are qualified and permitted to represent parties to a patent 1.6 What are the steps each party must take pre-trial? Is any dispute in court. In Japanese practice, patent agents (patent technical evidence produced, and if so, how? attorneys – benrishi) are also permitted to represent a client in: 1) revocation procedures or other cases (without restriction); and 2) patent infringement cases, but only if he/she (x) has passed the There is no specifically required pre-trial procedure. Certain pre-trial specific examination, (y) has obtained a supplementary registration motions such as Inquiry prior to the Filing of an Action and the of specific infringement lawsuit counsel, and (z) represents the same Collection of Evidence Prior to the Filing of an Action are available client in the same court case with an attorney. under the Civil Procedure Code (Article 132-2 and Article 132-4). The scope of pre-trial activities is generally documentary. Patents 2020 ICLG.com © Published and reproduced with kind permission by Global Legal Group Ltd, London 130 Japan 1.7 How are arguments and evidence presented at the trial? the Constitution and the laws. However, as a matter of practice, judges tend to be bound by precedents, to promote legal stability. Can a party change its pleaded arguments before and/or at trial? 1.12 Are there specialist judges or hearing officers, and if so, do they have a technical background? Arguments and evidence are presented by each party at each court hearing, which takes place once every four to six weeks (see question 1.8), generally based only on documents. A party can change its Judges of the IP High Court and the Intellectual Property Divisions pleaded arguments unless the court finds that (i) under Article 157 in Tokyo and Osaka District Courts (see question 1.1) are special of the Civil Procedure Code, the new argument has been presented judges who handle only IP cases. Although they have considerable after the submission deadline either intentionally or through gross experience in IP matters, very few have a technical background. negligence and that allowing the new argument would delay the Experts with knowledge and experience in relevant fields are asked conclusion of litigation, or (ii) the prior argument is found to to participate as technical advisors.