Presumption of validity - Japan v. U.S.

April 12, 2011

1. Japanese double track system without any clear roll sharing scheme

US courts respect decisions made by USPTO as the specialized agency. However, Japanese patent law stipulates that Japanese court is substantially authorized to work as Japan Patent Office (JPO) in Article 104-3 of Patent law.

(1) Statute

US law provides 35 U.S.C. 282 stipulating the presumption of validity. Patent is presumed valid under the law in the litigation. However, Japanese patent law provides Article 104-3 (Restriction on exercise of rights of patentee, etc.) instead of the statute of the presumption.

Article 104-3 (Restriction on exercise of rights of patentee, etc.)

(1) Where, in litigation concerning the infringement of a patent right or an exclusive license, the said patent is recognized as one that should be invalidated by a trial for patent invalidation, the rights of the patentee or exclusive licensee may not be exercised against the adverse party.

Japanese Law Translation

(2) Standard of proof

U.S. federal courts requires “clear and convincing evidence standard” to overcome the presumption. However, USPTO can invalidate a patent with “preponderance of evidence standard” in the reexamination procedures.

Japanese laws do not provide any differences between the standards in reexamination in Japan Patent Office (JPO) and litigation courts.

(3) Scope of claim

U.S. federal courts construe the scope of claims to sustain validity (In re Yamamoto). USPTO construe the scope of claims to give broadest reasonable interpretation with the specification (Trans Tex. Holdings). However, USPTO allows to the patentee to amend the claims.

Japanese laws do not provide any differences between the scopes in reexamination and litigation courts.

2. Practice guideline

Currently, the presumption of validity seems to be lost in Japanese courts. Japanese courts routinely invalidate the patent rights on the grounds of inventive step without providing any chance to amend in procedure. Please include the extensive sub claims to make robust rights.

End of report

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