The Japanese Patent Act provides a “Document Production Order” for proving infringement and damages. Though such Document Production Order has been issued sometimes for proving damages after the Court found infringement, there has been only a few cases in which the Order was issued for proving infringement. Considering such difficulty to prove patent infringement, a new Evidence Collection Procedure called “Sasho” was introduced in 2019, by referring to the German “inspection” system. The following explains the two Evidence Collection Procedures.
Secondly, even if it is Necessary, if there is a Reasonable Ground for the person in possession of the documents to refuse production of the said documents, a Document Production Order is not issued (Patent Act Article 105, Paragraph 1).
IP High Court 2016 (Ne) 10029 decided that “a right holder that seeks an order to submit documents is usually required to make a prima facie showing of reasonable doubt for an act of infringement from the viewpoint of preventing abusive and exploratory lawsuits.…It is found to be sufficient if said person makes a prima facie showing of reasonable doubt for the existence of said act of infringement to an extent that the doubt for an abusive or exploratory claim is eliminated.”
Including this IP High Court case, there are some cases in which the first requirement Necessity is met, but most of the cases did not issue a Document Production Order because of the second requirement explained below.
When comparing and balancing the disadvantages between the owner and the party seeking an order, the leakage of trade secrets was focused on as a disadvantage of the owner in the 1990’s.
However, since the “In Camera Trial” system was introduced in 1999 (Article 105, Paragraph 2 of the Patent Act) and the Protective Order system was introduced in 2004 (Article 105-4 of the Patent Act), leakage of trade secrets is now prevented legally, and Reasonable Ground (which is a factor to block a Document Production Order) shall not be found automatically even if the documents contain trade secrets.
(ii) Probability: the high possibility of infringement of a patent by the other party to an action of infringement of a patent is acknowledged.
(iii) Supplementarity: it is not easy to collect the evidence by other means.
(iv) Appropriateness: time required for collection and burden (financial burden etc.) on the other party is not inappropriate.
(v) After filing a Complaint of patent infringement case etc.
(vi) The other party owns or manages the subjects.
More specifically, the expert enters the other party’s factory etc., asks questions of the other party, requests presentation of documents and machine operations, performs measurements, performs experiments, and performs other acts approved by the court. It is not assumed that an expert enters a third party’s factory etc. other than the other party.
The attendance of the petitioner or their agent in the collection of evidence shall not be permitted from the viewpoint of protecting trade secrets etc.
The report may contain trade secrets etc. of the other party and trade secrets etc. of a third party that the other party is obliged to protect. Therefore, the court first sends a report submitted by an expert to the other party. If the report contains trade secrets etc., the court allows the other party to petition that the whole or part of the report should be blackened (non-disclosed) within a certain period of time. Like the procedure of an order to submit documents, the court allows the whole or part of the report to be blackened (non-disclosed) when the court finds that there is a reasonable ground.
The court shall determine whether or not there is a reasonable ground by weighing the necessity for proof of infringement against the necessity for protection of trade secrets etc. as in the case of the procedure of an order for submission of documents.
Writer: Hideki TAKAISHI
Supervising editor: Kei IIDA
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Hideki TAKAISHI (The person in charge of this Article)
Attorney at Law & Patent Attorney
Nakamura & Partners
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Tokyo 100-8355, JAPAN