2018-2020 Utility Model Invalidation Defense at Three Levels Of Court (Damages Settlement)

A renowned Japanese company was producing and selling products that infringed on our foreign client’s patent. Kimura & Partners sent warning letters to the infringer and prominent retailers of their products. Subsequently, the company initiated an invalidation trial with the JPO (Japan Patent Office) to invalidate our client’s UM (utility model).

Kimura & Partners carefully reexamined all aspects of the client’s products and their UM rights. We advised throughout the proceedings, led the trial process for 1.5 years, and won. Then the Japanese company filed a lawsuit appealing the decision to the Tokyo High Intellectual Property Court. We fought this case for six months and won again. The Japanese company then filed an appeal to the Supreme Court. We also led the challenge resulting in a dismissal of the appeal of the Japanese company.

As a result, the validity of our utility patent was confirmed by the Supreme Court. A lawsuit against the infringer seeking damages for our client has commenced. It will be filed in a district court. The first phase of this lawsuit addresses infringement. If we win at this stage, we will proceed to damages determination.

We expect a total period of two years or more at the district court, followed by further proceedings at the High Court. This is a typical example of how we doggedly fight for our clients’ interests and try every available method to achieve victory on their behalf.

Success Stories

2007–2009 Prevention of American Patent Lawsuit and Invalidation Trial (Damages Settlement)

2018–2020 Protecting Local Companies’ Trademark Rights in Japan

2000–2001 Defense of Japanese Company’s EPO Patent Opposition

1995–1998 Defending French Patent Rights in Japan (Breaches of Contract Resolutions)