Changes to the civil procedure laws and regulations prompted by specialized litigation: Regarding the United States and the Japanese patent invalidation procedures

Dispute on the validity of patents is deemed as a typical case which requires special procedural rules and system. This is because of the technical specialty in the subject matter, and the preceding administrative patent prosecution procedure.;In the United States, federal courts have jurisdiction over disputes on the validity of patents, the same as ordinary civil cases. Even in patent litigation the parties have primary responsibility to provide special technical knowledge for the case under the general adversary principle. The shortcomings of patent litigation include: the cost of the parties' experts; self-serving "junk science"; and forum-shopping. To address theses shortcomings reexamination was created as an alternative administrative procedure. Nevertheless, both litigation and administrative procedure requires further improvement.;The Japanese patent system has the invalidation trial, which is a special administrative procedure adjudicated at the patent office under the ex officio investigation principle. This administrative procedure has exclusive jurisdiction over patent invalidation and is subject to direct appeal to the Intellectual Property High Court. Therefore, a court hearing an infringement suit traditionally did not have authority to declare invalidity. However, following the "Kilby" decision of the Japanese Supreme Court, the Patent Law codified that an accused infringer may raise a defense that a patent at issue is unenforceable. Now, because infringement suits find invalidity more actively than the traditional route of an invalidation trial and the appeal suit, there is an issue about how to coordinate the "double track" procedures.;For the United States, I propose creation of post-grant opposition procedure which enhances reasons for invalidation and parties' opportunity to argue. Further, concentration of jurisdiction and utilization of neutral experts to strengthen expertise of litigation procedure at trial courts are also proposed. For Japan, I propose further clarification of the treatment for inconsistent finalized decisions of infringement litigation and an invalidation trial. Revision of the basis for standing to request invalidation is also proposed.;Argument and reform which patent invalidation procedure experienced will be a milestone to consider solutions to deal with other areas of specialized litigation which needs to breakthrough traditional thinking and operation.