# 2017/10/02

Q&A regarding Patent Litigation in Japan – costs, length, evidence, damages, etc.

1. Total legal costs for typical patent litigation.  This would include attorney time, costs for evidence gathering (including any expert witness costs), and court costs.

Firstly, please note that, at the stage of litigation before the court, we, patent attorneys, will have to work with an attorney at general law for proceeding with legal procedures before the court. The total costs would very roughly be around JPY 5M and 10M, namely about USD 50,000 – 100,000.

 

2. Typical length of time for patent litigation.

The suit in the first instance would be settled approximately in one year from its initiation.

 

3. Evidence gathering processes for patent litigation.  For example, the U.S.A. allows for extensive evidence gathering.  This evidence gathering drives the overall cost to be very high.  Alternatively, France employs dawn raids/seizure actions for evidence gathering.

In general, we think that the evidence gathering process in Japan is similar to the European process rather than the US process. It is possible for the plaintiff to file a request for documentary submissions agasint the defendant, preservation of evidence, etc. The arguments in an infringement suit are usually based on documentary evidence, but it is of course possible to use personal evidence, such as experts.

 

4. Potential for preliminary injunctions that could shut down a factory or block imports/exports and any other cross-border mechanisms that could stop the flow of goods that are alleged to be infringing composition or process patent claims.

In most cases, the plaintiff requests such preliminary injunctions together with a main injunction and damage suit.

 

5. Patent office challenges.  And if there is a patent office challenge, are the courts likely to stay an infringement action?

It is possible for the defendant to contend in an infringement suit that the patent at issue is invalid. In this case, the court judges the validity of the patent, and if the court decides that the patent at issue is invalid, the infringement suit will be dismissed. Therefore, the court usually determines whether the patent at issue is valid, and then, launches discussions on infringement.

Meanwhile, it is possible for the defendant to file an invalidation trial before the JPO even after the patentee files an infringement suit. In that case, the procedure of the infringement suit is usually adjourned until the JPO makes a decision for the invalidation trial.

 

6. Damages in patent litigation – what are the typical amounts levied against infringers?

Please note that the damages in Japan is relatively low. According to statistical data, the damages decided in about 40% of the total infringement suits were less than USD 100,000. However, the damage sometimes exceeds USD 1M, of course. For your information, please be informed that many infringement suits in Japan (around 70%) end in an out-of-court settlement, and that the data does not precisely reflect settled cases.

 

7. Are there any cross boarder procedure that could prevent goods being imported into Japan?

It is possible for the plaintiff to request prevention of an import and an export of a patented product, each of which is defined as one form of infringement in the Patent Law.