Introduction of Japan’s IP Conciliation Proceedings
IP Conciliation Proceeding is a tool available in Japan, aiming to resolve an IP dispute between parties in a speedy manner based on the proposition that parties have agreed to bring their dispute through IP Conciliation and have engaged in negotiation prior to the proceeding. IP Conciliation Proceeding is different from litigation and provisional disposition.
Initially this proceeding was introduced at the Osaka District Court in 1999. From October 1, 2019, the 21st and 26th Civil Divisions of the Osaka District Court and 29th, 40th, 46th and 47th Civil Divisions of the Tokyo District Court (divisions specialized in IP cases) started operating a renewed IP Conciliation Proceedings with a new framework.
Under the new framework, a conciliation committee conducts an IP Conciliation Proceeding. The conciliation committee consists of a judge (who hears IP cases regularly), and two experts / conciliation commissioners (lawyers and patent attorneys with vast experiences in dealing with IP disputes).
IP Conciliation Proceeding has the following characteristics / advantages:
- The parties may choose the key issues for the proceeding.
- The parties may go back and negotiate outside the proceeding (out-of-court negotiations).
- Any party may choose to litigate or file a petition for provisional disposition, instead.
- The proceeding will move expeditiously since the parties would have agreed on various matters when submitting the petition, submission of all the relevant document and evidence is also required before the First Date of the proceeding (about 6 weeks after filing of the petition. Please see below), plus the conciliation committee is required to render its opinion (verbally) by the Third Date of the proceeding (about 3 weeks to 1.5 months after the second date for proceeding. The second date of proceeding is about 3 weeks to 1.5 months after the first date of the proceeding. Please see below).
- The conciliation committee members are specialized in IP dispute resolutions.
D. Confidentiality (closed to the public)
- Forms and evidence submitted during the proceeding are not open to the public inspection and confidential.
There are four major steps in the proceeding.
- Step 1. The parties will need to reach an agreement on jurisdiction, designating either the Tokyo District Court or the Osaka District Court. One of the parties, the petitioner, files a petition for IP Conciliation with points of disputes, an agreement on jurisdiction, documentary evidences and other supporting documents; the respondent submits a written answer, documentary evidences and other supporting documents 10 days before the First Date of the proceeding.
- Step 2. The First Date (about 6 weeks after the filing of the petition), where the court confirms the issues, and, if the issues are simple, the IP conciliation committee may provide its opinion or suggest a direction of a possible solution. The committee may instruct parties to submit supplementary allegations / evidence therefor, if necessary.
- Step 3. The Second Date (about 3 weeks to 1.5 months from the First Date), where the committee considers the supplementary allegation and its evidence, if any, and a conciliation proposal, and may present its opinion or suggestion on the direction of a possible solution.
- Step 4. The Third Date (about 3 weeks to 1.5 months from the Second Date), where the committee verbally presents its opinion to the parties by this date, regarding the committee’s determination on the issues.
Considering these characteristics of the proceedings, cases suitable therefor may be disputes arise during
IP Conciliation Proceeding is a speedy and flexible tool for settling some of IP disputes in Japan. According to Japan Patent Attorneys Association (or JPAA), 78% of the cases were successfully conciliated during the last two years since the start of this IP Conciliation Proceeding, and average duration therefor was 5 months. For more information, please refer to the following links:
- Tokyo District Court – Guide to IP Conciliation Proceedings: Guide_to_IP_Conciliation_Proceedings.pdf (courts.go.jp)
- Osaka District Court – Guidelines for IP Conciliation Proceedings at the Osaka District Court: https://www.ip.courts.go.jp/eng/vc-files/eng/file/Guide_to_IP_Conciliation_Proceedings.pdf
- Osaka District Court - Explanation of the New IP Conciliation at the Osaka District Court: Explanation_of_the_New_IP_Conciliation_at_the_Osaka_District_Court.pdf (courts.go.jp)