June 14 2011
A bill to amend the Code of Civil Procedure and the Civil Provisional Remedies Act has recently been promulgated, introducing changes that will come into effect by May 2012. Its provisions relate to the international jurisdiction of the Japanese courts and will apply to civil cases which become pending after the effective date of the amendment. The code (as now in force) does not contain specific provisions on international jurisdiction and foreign businesses should be prepared for significant changes on a number of fronts (for further details please see "New international jurisdiction rules: foreign companies must brace for change"). However, for IP stakeholders the bill raises specific concerns.
Pursuant to the amendment, the Japanese courts will have exclusive jurisdiction over actions relating to the presence, absence or validity of a form of intellectual property that requires registration in Japan in order to be effective (ie, a patent, utility model right, design or trademark). For example, a party that wishes to invalidate a Japanese patent will be required to file an invalidation claim with the Japanese Patent Office. If it wishes to challenge the resulting decision, it will be required to file suit for cancellation with the IP High Court. Even if a foreign court issues a judgment which invalidates a Japanese patent and is final and binding, the Japanese courts will not approve it and such foreign judgment will be unenforceable in Japan.
This rule does not apply to copyright. In addition, an action that relates to the registration of intellectual property in Japan will be subject to the exclusive jurisdiction of Japanese courts. For example, an action to transfer registration of a Japanese patent will be subject to the exclusive jurisdiction of the Japanese courts. Thus, a foreign court judgment for such a transfer will be unenforceable in Japan, even if a dispute arises from a contract that stipulates a foreign law as the governing law and identifies a foreign court as having exclusive jurisdiction.
The amendment does not introduce specific provisions on infringement litigation. In light of Supreme Court precedent on jurisdiction, IP infringement litigation is categorised as an action relating to a tort. Following the amendment, the Japanese courts will have jurisdiction over an action relating to a tort if the place where the tort was committed is in Japan. The phrase 'the place where the tort is committed' includes both the place where the tortious action takes place and the place where the result of the tortious action occurs. However, if it is not reasonably foreseeable that the result of the tortious action will occur in Japan, the Japanese courts will not have jurisdiction over the action.
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