Checklist of Global Forum Shopping Considerations in Patent Cases

The following global forum shopping issues for patent infringement actions are discussed in Hal Wegner's paper on "GLOBAL PATENT FORUM SHOPPING: The Tokyo Fourth Option and Ancillary Issues of International Collateral Estoppel and Transnational Patent Infringement Jurisdiction:"

A. General Issues

1. Is There a Justiciable Controversy under Local Rules?
2. Is a Speedy Trial Desirable?
3. Is there a Lawyer? Bengoshi Availability
4. Is a Patent-Savvy Court a Plus?
5. Witness Testimony and Credibility
6. Jury Vel Non
7. Language Difference as a Plus or Minus
8. Litigation Costs
9. Discovery

B. Special Factors for Japan

1. Mens Rea Elements
2. Oral Disclosure as a Bar
3. Is "Secret" Prior Art a Critical Element
4. Activities in the Priority Year
5. Accuracy of the Patent Application Translation

C. Bringing Suit in Tokyo

1. Patent Infringement Suit
2. Declaratory Judgment of Invalidity
3. Comparison with an American D.J.

D. Japanese Trial for Invalidity

1. Elimination of the Opposition System
2. Strawman Plaintiffs are Permitted
3. Short Trial Proceedings
4. A More De Novo Tokyo High Court Review
5. Amendments to Narrow the Claims
6. Litigation Prior to a Justiciable Controversy
7. A Quick, Focused Determination
8. Contrast to European Proceedings
9. Absence of a Comparable American Remedy