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Interview: Toshiaki Iimura, IP High Court, Japan




Toshiaki Iimura, chief judge of the Intellectual Property High Court, tells Peter Leung how he is enjoying his new responsibilities in improving the court and raising awareness of it worldwide

How has your term as the chief judge been so far? What additional responsibilities do you have compared to your previous position at the Third Circuit?

As the chief judge, I continue to handle IP cases, just like when I was presiding judge of the Third Circuit. I still handle appeals on patent and other IP matters as well as suits appealing Japan Patent Office board decisions. However, given my administrative duties, I now only handle half as many cases as before.

As chief judge, I have a wide range of additional responsibilities, but primarily administrative matters such as supporting judges to help them process cases smoothly and efficiently, making it easier for parties to use the court system, and disseminating correct information about the court and its decisions nationally and internationally.

I also work to exchange views with interest groups such as the Japan Federation of Bar Associations, Patent Attorneys Association, Japan Patent Office, and users such as domestic and foreign companies. To further this exchange, I participate in IP-related conferences in and out of Japan, or send other judges to these events. I also host domestic and foreign visitors to the court, and engage in other related endeavours.

The foreign guests come from countries all over the world including the United States, Europe, and many Asian countries including China and Korea. They come from a wide variety of professions, including judges, scholars, practitioners including attorneys and patent attorneys, corporate researchers, and related government officials from patent offices and Customs.

This international communication is very important. I not only provide information about Japan's court system, operations, and decisions, but also get to learn about their countries. By deepening the mutual understanding of different systems, we are inspired to find similarities and differences among different countries, and to consider what would be an ideal regime for IP protection.

Since I assumed this position, I have enjoyed the administrative tasks as well as hearing IP cases.

Has becoming High Judge changed your perspective or given you additional insights into the state of intellectual property in Japan?

I would say yes and no. As industry, culture, and society changes, so does the IP environment. Throughout my career as an IP judge, I have always believed that how you solve an IP dispute can never be static or rigid, and that your approach needs to be flexible and adaptable to changes in real life. Therefore, in both patent and copyright cases, it is important to achieve a balanced solution between the need to protect a creator's monopoly rights, the freedom of others to operate, and the benefits to society resulting from the creation. In this sense, nothing is changed.

However, there may be a small change in my approach. I have always pursued a balanced and flexible system when hearing and determining actual cases. Since I assumed the position of chief judge, the basic perspective is unchanged, but I have added some other aspects to my approach. I now consider the cases with more depth and examine whether a judgment is sound from the perspective of business and other environmental factors, whether it is responding to the users' needs, and I think this ultimately presents a better model for dispute resolution.

Do you see any trends in the types of cases or legal issues being heard by the IP High Court?

Yes. As companies become global, naturally IP disputes also become global. At the IP High Court of Japan, we are seeing an increasing number of cases involving foreign companies or foreign patents. In patent cases, an increase can be seen in IT and smartphone technology, environmental technology, and pharmaceuticals.

Globalisation and the increase in IT-related cases also bring new issues, such as standardisation, FRAND (fair, reasonable and non-discriminatory) licensing terms, whether there is infringement when multiple players exercise the patent invention partially and separately among each other, and the duration of a patent related to pharmaceuticals. These issues are often disputed in other countries, and how they are decided serves as a useful reference.

Do you think there will be more Grand Panel cases?

Yes. The IP High Court of Japan is responsible for establishing reliable rules to increase the predictability of IP decisions, without always waiting for a Supreme Court decision. The Grand Panel system is one way to fulfil this mission. In order to achieve the objective, I would like to have more Grand Panel cases.

Do you have any goals for your time as the chief of the IP High Court?

The IP High Court of Japan has a number of experienced judges who are IP specialists, who make convincing and sensible conclusions based on elaborate fact-finding after careful hearings. In addition, the research law clerk system supports judges from the technology perspective. IP High Court judges are highly skilled in making a proper judgment on claim construction and patent validity, as well as in making a reasonable judgment on calculating damages in line with the economic reality. Furthermore, we are fast in delivering high-quality decisions and litigation costs are relatively low.

From the foregoing, it is obvious I believe that the quality of the Japanese judicial system in patent infringement cases is very high. Indeed, we have a favourable reputation internationally. By strengthening the reputation of the IP High Court as one capable of providing predictable, high quality judgments, I expect the court will be utilised more and more as a forum for international patent disputes.

In this respect, I am considering to disseminate our decisions more internationally in an internationally communicative language, like English. But of course my ultimate goal is to fulfil the raison d'être of the court, namely to continue to make every effort to resolve disputes in a way that produces high quality rulings that are reliable and predictable for users.

What will be the biggest legal developments in Japan in the next few years?

In 2011, Japan passed a major revision to the Patent Act, which came into effect on April 1 this year. This legislation made the first major changes to the Patent Act since its enactment 50 years ago. The revision purports to provide more incentives to pioneering inventions and innovations, to make it easier for users to utilise patents, and to increase speed and efficiency in dispute resolution in patent infringement suits.

The changes to how patent infringement cases are resolved are worth noting. Prior to the revision, even when a patentee won the patent infringement litigation and that decision was conclusive, the decision could effectively be overruled if the patent at issue was invalidated subsequently in a separate trial. The revision made clear that when a patentee wins the patent infringement litigation and that decision is conclusive, the decision shall not be overruled even if the patent is later determined to be invalid.

The revised Patent Act of Japan only came into effect recently. Therefore, not many cases have come out yet. In this respect, the development of case law under the revised Patent Act will have a significant impact.

Do you think foreign parties understand the IP system in Japan?

It is certainly improving. I do not encounter very many misunderstandings about IP law in Japan anymore.

As mentioned earlier, information dissemination nationally and internationally is one of the important roles of the IP High Court. For example, the IP High Court has its own website in addition to the entire court system. Most of the site's contents are translated into English, French, German, Chinese and Korean. In addition, we try to upload decisions as soon as possible, and to regularly update the status of the IP High Court, forms necessary for trials, hot topics and so on. I believe these are some effective ways to help prevent misunderstandings about IP in Japan.

Chief Judge Iimura would like to thank Nahoko Ono for her assistance in translation.


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