Does Sales on Foreign Website Constitute “Offer in Japan to Sell”?

Aki Ryuka
Japan Patent Attorney, Certified for IP Litigation
Attorney at law, California, USA

The “offer to sell” must occur in Japan to infringe a Japanese patent.

NIDEC v. SEMCO (22-Ne-10003, Japan IP High Court, 2010)
The Court admitted jurisdiction over patent infringement, where “offer to sell” was made on the website in Korea in English. The Court did not affirm “offer to sell” and merely found its possibilities in finding the jurisdiction.

If Actually Sold?
If there are actual sales to Japan, then there is a sales agreement beforehand that is a result of a valid offer (expression of sales intent) and acceptance. This offer can be considered as made in Japan via the website in view of NIDEC v. SEMCO if the purchaser accepts the offer in Japan.

Offer in Japan to Sell?
Among other things, the following factors are important for determining the location of “offer to sell.”
– Actual sales to Japan
– Seller’s address including that of the subsidiary
– Governing law and the court that resolves legal issues according to the sales contract
– Intent to sell to Japan
If the first three are out of concern, the intent to sell is important.

Our Suggestions
For avoiding infringement, we suggest automatically declining the sales of the infringing products if Japan is selected as the destination. If only the infringing products are sold, we suggest not showing “Japan” in a list of destination countries.

We also suggest indicating “this product is not for sale in Japan” on the website to prove the lack of intent.