The changing roles of the patent office and the courts after Fujitsu/TI

Like many other areas of the Japanese legal system, intellectual property (IP) law has been undergoing major changes over the past decade.¹ These changes are a result of a strong U.S. influence on Japanese patent law and have led to the adoption of pro-patent policy.² A prime example of these trends is found in the patent enforcement process. As originally designed, the Japanese patent system had the Japan Patent Office (JPO) playing a central role in the development of patent policy and also gave the JPO power to decide not only the validity of patents issued but also the protection scope of patents.3 Although revisions of patent law codified in the Patent Act of 1959 had taken away the JPO's power to decide the protection scope,4 JPO's exclusive power to decide patent validity remained intact until the Supreme Court handed down its Fujitsu/TI decision in 2000.5 This decision gave Japanese courts the power to examine the validity of a patent and to refuse to enforce obviously invalid patents. The case signals a departure from German patent validity practice, which the Japanese patent system traditionally followed, and demonstrates movement toward the U.S. approach to patent validity.