I.
Introduction to the Hantei System
The Hantei system is designed
to permit any party to request that the Japan Patent Office (JPO) provide an
official opinion (advisory opinion) regarding, for example, in the case of a
patent, whether an “item in question” falls under the technical scope of a
patented invention. The Hantei System is not limited to the provision of an
official opinion regarding an “item in question” in a patent, and also
includes, using the JPO parlance, a “method in question”, a “description in
question”, a “design in question”, a “trademark in question”, etc.
Hantei results are not
legally binding on defendants or third parties. However, Hantei is viewed as an
official opinion of the JPO, and accordingly, Hantei is generally considered to
be an expert opinion.
The Hantei system is
designed to judge cases in a neutral manner and provide results of the
investigation rapidly (in some cases, within three (3) months from the date on
which the request for Hantei was filed). Hantei
trial examinations are generally conducted solely on the basis of submitted documents.
However, oral proceedings may also be conducted ex officio or if one of the
parties makes such a demand. The procedures are the same as the procedures for
a trial examination and the cost for filing a request for Hantei is 40,000 yen
(US$370) (Based on 108¥ = 1USD. Rate as of January 2020).
II.
Hantei opinion results
1.
Confirmation of IPR infringement.
2.
Resolution of conflict by agreement of the parties involved in accordance with Hantei
results. This is often helpful in the case of petty disputes.
3.
In future legal proceedings, the Hantei opinion may be viewed as
a) Documentary evidence
proving infringement,
b) Documentary evidence
proving the item in question is an equivalent, and/or
c) Documentary evidence indicating
that a reasonable cause of action for injunction or for claiming damages does
or does not exist.
(Documentary
evidence would include, but is not limited to licensing agreements, patent
numbers on items, warning letters, a demand made to an arbitration institution,
etc).
(For
more details regarding the Hantei system, including useful advice when making a
request for a Hantei opinion, please refer to the information on the JPO
website: http://www.jpo.go.jp/tetuzuki_e/t_tokkyo_e/hantei.htm)