In a transformative leading decision, the Supreme Court of Japan held: "If it becomes clear that the patent evidently has grounds for invalidation as a result of the court's consideration, then a request for injunction, compensation for damages, or the like based on that patent right shall be considered as constituting a misuse of the right and therefore shall not be permitted in the absence of special circumstances." /Texas Instruments v. Fujitsu /dated April 11, 2000. An innocent defendant should exercise enterprise and promptly initiate proceedings at the Japanese Patent Office to invalidate the alleged patent problem at the bud. This is far better than to react to patent litigation and argue invalidity in the defense since by then it will very much more expensive and also cause unnecessary disruption amongst the defendant's clientèle.

John A. Tessensohn and Shusaku Yamamoto

The Supreme Court of Japan handed down a milestone decision by recognizing the doctrine of equivalents under the Japanese patent infringement law and stated out the appropriate test for applying the doctrine of equivalents.

John A. Tessensohn and Shusaku Yamamoto

On November 26 1998, after receiving and reviewing comments from the public and industry, the Industrial Property Council (the Council) of the Japanese Patent Office (the JPO) issued a report recommending sweeping changes to Japan's IP laws. The recurring theme in the proposed changes was to grant "wide, strong and early" protection of intellectual property rights.

It is expected that these patent and trademark recommendations of the Council are likely to be submitted to the Japanese Diet sometime in February 1999 and it is hoped that these provisions will be passed by the Diet and enacted into Japanese law in order to improve the pro-owner paradigm of Japanese IP laws which has been evolving into shape in the last couple of years.

John A. Tessensohn and Shusaku Yamamoto

Japan is throwing off its reputation as a hostile litigation environment. John Tessensohn and Shusaku Yamamoto provide a guide to the latest changes and take a look at what the future holds

"Enact strategy broadly correctly and openly" - Miyamoto Musashi 1584-1645 AD.

Musashi, one of Japan's most celebrated samurai warriors, penned this conclusion to his classic text, The Way of the Sword. It would be timely for foreign patentees to remember Musashi's words when implementing their Japanese patent litigation strategy in order to compete effectively in Japan and the overall global markets.

The JPO's efforts to sow the seeds of a pro-patentee tradition in Japanese industry were manifest in the seminal policy recommendation report dated April 7, 1997 'Toward the Era of Intellectual Creation - Challenges for Breakthrough'. The Report that served as a blueprint for action by the JPO called for a paradigm shift in Japan's intellectual property system to protect the fruits of research and development. As well as these official moves, there is an appreciable recent increase in patent litigation as competition in high-technology industries has become more intense, and so has the need for private parties to go to court to resolve their IP disputes.

John A. Tessensohn and Shusaku Yamamoto

This article discusses the encouraging Japanese judicial trend to award more generous patent infringement damage verdicts, which culminated in an October 1998 surprise of the largest ever patent infringement damages award in Japanese patent litigation history in SmithKline v. Fujimoto dated October 12, 1998, Tokyo District Court.

John A. Tessensohn and Shusaku Yamamoto

Parallel importation will not constitute patent infringement unless the patentee agreed or indicated on the goods that distribution into Japan was prohibited and Japan has accepted the doctrine of international exhaustion of patent rights, BBS Kraftfahrzeugtechnik AG v. Racimex Japan Corp., & Jap Auto Products Co., Case No. H-7 (o) No. 1988 dated July 1, 1997, Supreme Court of Japan.

John A. Tessensohn and Shusaku Yamamoto