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Custom Office Proceedings for Stopping Importation of Goods allegedly Infringing Japanese Patents

Custom Office Proceedings for Stopping Importation of Goods allegedly Infringing Japanese Patents. January 25-26, 2005 AIPLA MWI Pre-Meeting Hirokazu Honda Abe, Ikubo & Katayama. Introduction.

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Custom Office Proceedings for Stopping Importation of Goods allegedly Infringing Japanese Patents

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  1. Custom Office Proceedings for Stopping Importation of Goods allegedly Infringing Japanese Patents January 25-26, 2005 AIPLA MWI Pre-Meeting Hirokazu Honda Abe, Ikubo & Katayama Abe, Ikubo & Katayama

  2. Introduction • The Customs Tariff Law amended in 2003 enables patentees to stop importation without waiting for courts’ decision. • Alleged infringing goods will be held at the Customs in effect until the Customs makes a decision. Abe, Ikubo & Katayama

  3. Actual Injunction of Goods Application for injunction against importation Notice of Start of Verification Procedure Examination of Goods and Parties’ Opinion Order to Patentee to Put Bond Patentee’s Request to ask JPO’s Opinion (within 20 working days) JPO’s Opinion (within 30 days) Verification Import Prohibition Abe, Ikubo & Katayama

  4. Procedure to Seek an Injunction against Importation • Application -File a form with evidence that may prove prima facie the infringement -Document & Evidence: like an infringement suit • Statement of the scope of the patent • Explanation of infringing goods • Claim chart • Sample, photo, figure, product no., etc. • Acceptance or rejection of the application -Not transparent: Importers not given any opportunity to make a substantial counter argument Abe, Ikubo & Katayama

  5. VerificationProcedure • Application for a permission for importation  Examination (Notice to both parties) • The parties file opinion with evidence within 10 days • The opinion of the Commissioner of Patent Office • Security by applicant • Withdrawal of the “verification procedure” • Importer’s options when infringement is found Abe, Ikubo & Katayama

  6. Fujitsu v. Samsung on PDP Patent Background: • PDP market surged worldwide • Parties negotiated but could not reach agreement • Samsung sued Fujitsu in U.S. for declaratory judgment Abe, Ikubo & Katayama

  7. Fujitsu v. Samsung on PDP Patent April 6, 2004: -Fujitsu filed preliminary injunction suit to Tokyo District Court April 8, 2004 -Fujitsu filed application for an injunction against importation with Customs Office Abe, Ikubo & Katayama

  8. Fujitsu v. Samsung on PDP Patent How things moved in Customs Office? April 8: Fujitsu filed an application April 9: Samsung submitted a letter to ask an opportunity for explanation April 21: Customs Office accepted Fujitsu petition April 23: Samsung applied for a permission for importation  Product suspended in Custom’s Office Abe, Ikubo & Katayama

  9. Fujitsu v. Samsung on PDP Patent How things moved in Customs Office? (Cont’d) April 30: Customs Office started verification procedure May 17,25: Samsung filed briefs May 28: Customs Office decided to inquire the opinion of the Commissioner of JPO Abe, Ikubo & Katayama

  10. Fujitsu v. Samsung on PDP Patent How things moved in Tokyo District Court? April 6: Fujitsu filed preliminary injunction April 8: Petition served (Samsung also filed invalidation trial before Patent Office) April 22: Samsung filed (1) Complaint of declaratory judgment and (2) Preliminary injunction petition requesting withdrawal of Fujitsu petition to Customs Office April 26: Samsung filed Answer Abe, Ikubo & Katayama

  11. Fujitsu v. Samsung on PDP Patent How things moved in Tokyo District Court? (Cont’d) May 7: 1st hearing in Court May 21: 2nd hearing in Court June 4: Parties settled Abe, Ikubo & Katayama

  12. Issues Examined for Amendment of the Law • Examination by a patentee of products’ samples -If a patentee cannot file opinion or evidence even after the inspection of an importer’s products, the Customs Office may provide their samples with the patentee to examine them. • Injunction for Goods Prohibited to Import under the Unfair Competition Prevention Law Abe, Ikubo & Katayama

  13. Strategy • Consider possibility of Customs procedure • Be prepared for immediate defense • Consider to invalidate patent first or declaratory judgment suit when an attack could be considered Abe, Ikubo & Katayama

  14. Abe, Ikubo & Katayama • Office Fukuoka Bldg. 9th-10th Floor 8-7, Yaesu 2-Chome Chuo-ku, Tokyo 104-0028 Japan Phone: +81-3-3273-2600 Fax: +81-3-3273-2033 Hirokazu Honda: honda@aiklaw.co.jp Abe, Ikubo & Katayama

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