Date of
Judgment: June
17, 2005
Issuing
Authority: Supreme Court
Level of
the Issuing Authority: Final Instance
Type of
Procedure: Judicial(Civin( �b>
Subject
Matter: Patent(Inventions)
Main
text of the judgment (decision):
1. The jokoku appeal shall be
dismissed.
2.The
jokoku appellant shall bear the cost of the jokoku appeal.
Reasons:
Concerning
Ground 5 for the petition for accepting the jokoku appeal argued by the
attorneys for jokoku appeal NAKANO Kenichi, et al.
1. This is
a case in which the jokoku appellee who has a patent right for the invention
titled "search method for biopolymer-ligand stable complex
structures" (hereinafter referred to as the "Patent Right")
requires the jokoku appellant to discontinue the sale of the articles listed in
Attachment B for the judgment of the second instance, alleging that the jokoku
appellant infringes the Patent Right. The jokoku appellee has granted Company A
an exclusive license under the Patent Right for the whole scope of the right.
2. It is appropriate to construe that a patent
owner is allowed to claim injunction based on his/her patent right even if
he/she has granted an exclusive license under the patent right, for the
following grounds.
A patent owner shall have the right to claim
injunction to suspend or prevent infringement of his/her patent right (Article
100(1) of the Patent Law). A patent owner who has granted an exclusive license
shall lose the right to exploit the patented invention in the course of doing
business to the extent that the exclusive licensee has been granted the
exclusive right to exploit the patented invention (proviso of Article 68). The
problem to be raised by this article is whether or not the patent owner shall
also lose the right to claim injunction. In light of the language in the
provision of Article 100(1) of the Patent Law, there are no grounds to construe
that the patent owner who has granted an exclusive license is restricted from
exercising the right to claim injunction. Also from a practical perspective, in
cases where it is provided in the license contract that the amount of license
fees shall be determined depending on the sales attained by the exclusive
licensee, it is obvious that the patent owner has a practical reason to
eliminate infringement of the patent right for the purpose of securing license
fees. Furthermore, in general, if infringement of a patent right were left
unattended, it might cause adverse conditions for the patent owner who intends
to exploit the patented invention him/herself when the exclusive license is
terminated for some reason. Therefore, it should be construed that the patent
owner also needs to be allowed to exercise the right to claim injunction.
Consequently, it should be construed that the patent owner does not lose the
right to claim injunction even if he/she has granted an exclusive license.
3. For the reasons stated above, the judgment of
the second instance that held that the jokoku appellee should be allowed to exercise
the right to claim injunction based on the Patent Right can be accepted as
justifiable. The jokoku appellant's argument cannot be accepted.
Therefore, the judgment was rendered in the form
of the main text by the unanimous consent of the Justices.
(This translation is
provisional and subject to revision.)