Eligibility for Declaratory Judgment Request in Japan

Aki Ryuka
Japan Patent Attorney
Attorney at law, California

A declaratory judgment (DJ) can be requested, if the plaintiff has an immediate legal interest.

The “immediate interest” is affirmed when there is danger or uncertainty about the rights or legal position of the plaintiff and it is necessary and appropriate to obtain a declaratory judgment to eliminate it. (Supreme Ct., December, 1955)

The courts tend to affirm the immediate interest when the patentee shows the willingness to exercise his right, or the plaintiff is actually practicing the patent.

DJ Requests Denied
Takai v. Yanagiya Machinery Co.,Ltd. (IP High Ct., October, 2014)

– The patentee merely suggested that the subject product might fall within the scope of the patent, but did not show any interest in enforcing an injunction against the plaintiff.
– There was no existing dispute between the parties, and there was no real and specific risk that threatened the right and legal position of the plaintiff.

NIPRO CORPORATION v. Eisai Co., Ltd. (Tokyo District Ct., August 2022)
– The plaintiff, a generic drug manufacturer, was still applying for approval to manufacture and sell the drug, and it was unlikely that such approval would be granted, so there was no real and specific danger for the plaintiff.
– Although the plaintiff was manufacturing the drug for the purpose of applying for approval, the patentee claimed that they would not exercise their rights regarding it.
– Whether the plaintiff’s product falls within the technical scope of the patent is a de facto problem, therefore, it is not the subject of a DJ, which only deals with legal problems.

DJ Requests Accepted
Anonymous Plaintiff v. Systech Kyowa Co.,Ltd. (IP High Ct., June 2007)

– The patentee sent warning letters to the plaintiff and its business partners.
– The business partners considered the plaintiff’s product infringing the defendant’s patent and terminated the sales agreement.

– The patentee specifically stated that it had the right to claim compensation for damages, so there was real and specific risk for the plaintiff.