Date of
Judgment: January 27, 2000
Issuing
Authority:
Supreme Court
Level of
the Issuing Authority: Final Instance
Type of
Procedure: Judicial（Administrative）
Subject
Matter: Patent (Inventions)
Main
text of the judgment (decision):
1.The final appeal is dismissed.
2. The appellant of final appeal
shall bear the cost of the final appeal.
Reasons:
Concerning
Reason I for final appeal argued by the appeal counsel
I. The circumstances that led up to this action
are as follows.
The appellees of final appeal and Company D,
which is not a party to the case, respectively filed requests for trials for
invalidation of a patent granted for an invention titled "lead chromate
pigment and manufacturing method thereof" based on which the appellant of
final appeal held a patent right (Patent No. 952065), and during the trial
proceedings jointly conducted, they alleged the same facts and produced the
same evidence. Since the Japan Patent Office (JPO) rendered a decision to
dismiss the claims in both requests for trials, the appellees filed this action
to seek revocation of the JPO decision, whereas Company D did not file an
action to seek revocation of the JPO decision, and as a result, the JPO
decision became final and binding in relation to Company D.
II. Article 167 of the Patent Act provides that
when a final and binding trial decision rendered by the JPO in response to a
request for a trial for invalidation of a patent (hereinafter referred to as a
"request for an invalidation trial") has been registered, no one may
file a request for an invalidation trial on the basis of the same facts and
evidence. What is meant by this provision is that if a JPO decision to dismiss
the claim in a request for an invalidation trial filed with regard to a
particular patent (hereinafter referred to as a "decision of
dismissal") has become final and binding and such decision has been
registered, no one is allowed to file another request for an invalidation
trial, after said registration, on the basis of the same facts and evidence.
Said provision should not be interpreted as having meaning beyond that, that
is, meaning that if a final and binding decision of dismissal is registered,
any request for an invalidation trial already pending before the JPO at the
time of the registration would become unlawful. Consequently, it is appropriate
to construe that a request for an invalidation trial (Request A) would not
become unlawful even if a final and binding decision rendered by the JPO to
dismiss the claim in another request for an invalidation trial (Request B)
filed on the basis of the same facts and evidence as those cited in Request A
is registered after the filing of Request A. The grounds for this view are as
follows.
The law does not prohibit more than one person
from filing a request for an invalidation trial with regard to the same patent.
Any person who has interest in invalidating a patent may at any time file a
request for an invalidation trial regarding the patent, and such interest in
invaliding a patent is an inalienable interest vested in each person who files
an invalidation trial. However, in the case where a decision of dismissal
rendered by the JPO in response to a request for an invalidation trial
regarding a particular patent has become final and binding and such decision
has been registered, if another request for an invalidation trial is allowed to
be filed repeatedly on the basis of the same facts and evidence as those cited
in the previous request, this would undermine the stability of the patent right
and would go against the purpose of the Patent Act, i.e. protection and use of
inventions. From this viewpoint, Article 167 of the Patent Act aims to ensure
balance between the inalienable interest of a person who files a request for an
invalidation trial and the interest residing in the stability of the patent
right, and restricts the right of an interested person to file a request for an
invalidation trial only on the conditions prescribed in said Article.
Therefore, the provision of said Article should not be interpreted by
broadening the scope of cases where it applies, but it is appropriate to
interpret its text literally.
If the provision of said Article is interpreted
as meaning that if a final and binding decision of dismissal is registered, any
request for an invalidation trial filed on the basis of the same effects and
evidence that is already pending before the JPO at the time of the registration
would become unlawful, such interpretation would lead to the consequence that
when more than one request for an invalidation trial is pending before the JPO,
and if any of the persons who filed the requests does not appeal against a
decision to dismiss his/her request, the procedures conducted so far by the
other persons who filed the requests for their own interests would become
meaningless and these persons would no longer be able to enjoy the interests.
This is unreasonable.
According to this view, when more than one
request for an invalidation trial has been filed simultaneously with regard to
the same patent on the basis of the same facts and evidence, there could be a
case where the JPO renders a decision of dismissal in one of the trial cases
while rendering a decision to invalidate the patent (hereinafter referred to as
a "decision of invalidation") in another trial case, and both
decisions become final and binding. However, when the decision of invalidation
becomes final and binding, the patent right is deemed to have never existed (Article
125 of the Patent Act). Therefore, even if the decision of dismissal has
already become final and binding separately from the decision of invalidation,
the patent would lose its effect, and there would be no confusion in the legal
status caused by the inconsistency or conflict between the JPO decisions. The
same applies in the case where the JPO renders a decision of dismissal and
decision of invalidation in response to requests for invalidation trials on the
basis of different facts or evidence and both decisions become final and
binding. The same also applies in the case where the JPO renders decisions of
dismissal in response to all of the requests for invalidation trials filed with
regard to the same patent on the basis of the same facts and evidence, and the
JPO decisions become final and binding in relation to some of the persons who
filed the requests, whereas other persons file actions for revocation of the
relevant JPO decisions and receive court judgments upholding their claims and
decisions of invalidation by the JPO.
The precedent of the Former Supreme Court (1919
(O) No. 811, judgment of the Former Supreme Court of March 19, 1920, Minroku
No. 26, at 371) that is contrary to this view should be modified.
III. In the present case, when the appellees
filed requests for invalidation trials, the final and binding decision rendered
by the JPO in response to Company D's request for an invalidation trial filed
on the basis of the same facts and evidence cited in the appellees' requests
had not yet been registered. We can affirm the conclusion of the court of prior
instance that determined the appellees' requests for invalidation trials to be
lawful. The appeal counsel's arguments cannot be accepted.
Concerning other reasons for final appeal argued
by the appeal counsel and the reasons for final appeal argued by the appeal
counsel
The findings and determination by the court of
prior instance with regard to the points argued by the appeal counsel can be
affirmed as justifiable for the conclusion in light of the evidence cited in
the judgment in prior instance. The appeal counsel's arguments attack the
admission of evidence or finding of fact, which comes under the exclusive
jurisdiction of the court of prior instance, and criticize the judgment in prior
instance based on their own dogmatic view or allege illegality in the judgment
in prior instance based on matters that do not affect the conclusion of the
judgment. None of their arguments can be accepted.
Therefore, the judgment has been rendered in the
form of the main text by the unanimous consent of the Justices.
(This translation is
provisional and subject to revision.)