Patent Limitation During Infringement Proceedings – Comment on the Japanese Supreme Court Decision, “Sheet Cutter”
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1. The so-called “Kilby” decision of 20001 brought an end to the bifurcation system in Japan whereby only the Patent Office could determine the validity of patents and the courts in infringement proceedings had no power to hold the patent invalid. The “Kilby” decision allowed the defendant in infringement proceedings to raise the invalidity of the patent at issue by way of estoppel. The courts had no power to invalidate the patent, yet could refuse enforcement. This new jurisprudence was subsequently reflected in Sec. 104ter Patent Act2 which reads: “(1) In a litigation that concerns a patent or an exclusive license thereof, the patentee or the exclusive licensee is barred from exercising the patent right if the latter is likely to be invalidated in a nullity action”.
After “Kilby” both the legislature and jurisprudence tried to fine-tune the tactical arsenal of the patentee and alleged infringer in civil proceedings, and align proceedings before the Patent Office with those before...