【PATENT ★】Japanese Evidence Collection Procedures in Patent Infringement Case

For requesting a Document Production Order, firstly, it shall be “Necessary“. (Civil Procedure Act　Article 181)

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).

Judge Makiko Takabe, Chief Judge of the IP High Court, wrote in her article that “…the viewpoint of eliminating an exploratory lawsuit should be considered when deciding the necessity (for an order to submit documents), and in this respect, a right holder has to exert its efforts to make a prima facie showing, or produce a lead for the court to have, reasonable doubt that the act in question constitutes an infringement…” (NBL separate volume No.116, page 287)

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.

Said IP High Court 2016 (Ne) 10029 decided that “the existence of a Reasonable Ground is determined by comparing and balancing the disadvantage that the owner suffers by disclosing the documents (required as a secret) and the disadvantage that the party seeking an order to submit documents suffers due to the non-provision of the documents (necessity for the documents as evidence).…The level of protection as a secret should be decided bearing in mind whether there was any protective order issued (Article 105-4 and subsequent provisions of the Patent Act) and the scope of such order, and whether there was any non-disclosure agreement concluded, the scope of the parties of such agreement, its validity, etc.”

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.

As stated above, since the Document Production Order has almost never been issued for proving infringement, Japan is continuously studying foreign countries’ Evidence Collection Procedures and introduced the new Evidence Collection Procedure Sasho in 2019 by referring to the German inspection system.

The new Evidence Collection Procedure Sasho has six requirements as follows.

(i) Necessity: the subjects are necessary for the proof of infringement.

(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.

For requesting Sasho, the petitioner must file the following six items.

(1) Facts to be verified; (2) documents and articles to be collected and their relationship to the facts to be verified; (3) collection locations; (4) acts to be performed by an expert; (5) grounds for the possibility of infringement of patent rights; (6) grounds for which collection is not easy by other means.

The enforcer (expert) can enter the other party’s factory etc. and investigate the subject documents and articles. The court shall designate a neutral and fair third party as an enforcer (expert) from their “Expert Directory” in order to protect the other party’s trade secrets.

In order to ensure the smooth implementation of this procedure, the court shall hear the opinion of the other party before issuing a Sasho order to collect evidence.

An expert can collect evidence only to the extent permitted by the court (e.g., subject to collection, location, date and time, conduct of the expert, etc.) and summarize the results in a report.

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 results of the collection of evidence shall be submitted to the court in a report by the expert for later use by the petitioner as evidence.

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.

If a party does not comply with a Sasho order, the court may find the adverse party’s allegations concerning the details of said document to be true.