[Patent/Civil Code] Tokyo District Court, 2022 (Wa) 19222 <Kokubu> — Analogous Application of Civil Code Article 94(2)
Updated: 6h
Article information
Article type: Case note
Category: Patents
Topics: Damages, Novelty, Creators and inventors
First published on this website: 2026-11-01
Display and classification checked: November 2, 2026
Originally published on Ameblo: 2024-09-30 (Japan time). Full English translation.
[Patent/Civil Code] Tokyo District Court, 2022 (Wa) 19222 <Kokubu>
Double assignment of the right to obtain a patent
⇒ The plaintiff bore responsibility for creating a false appearance.
(1) Partly caused by the plaintiff's own internal circumstances and conduct
(2) Left unaddressed for four years despite knowledge
(3) Left unaddressed for another six months after the judgment finding the shareholders' resolutions nonexistent became final
+ The defendants acted in good faith and without negligence.
⇒ Civil Code Article 94(2) applied by analogy
(Excerpts from the court's reasoning)
(2) Whether the requirements for analogous application of Civil Code Article 94(2) are satisfied in this case
A. The plaintiff's responsibility for creating the false appearance
(a) The evidence cited below and the entire purport of oral argument establish the following facts.
a. D, as an employee of Total Life Factory, was planning with Eternal Co., Ltd. a business manufacturing and selling the “Afloat” hair-treatment iron. H (hereinafter “H”), who supported the plan, established the plaintiff on October 11, 2011 for that business (Exhibits Ko 1 and 26).
b. A, as an assistant at Total Life Factory, handled the company's customer service and administration under D's instructions (Exhibit Ko 26; plaintiff's representative).
c. Around 2014, H decided to resign as the plaintiff's representative and transfer the plaintiff's shares to Total Life Factory in order to concentrate on the business of Grace Co., Ltd., which H managed.
D therefore asked A to become the plaintiff's representative. A assumed that position around June of that year, and the appointment was registered.
As for the plaintiff's shares, to avoid a direct transfer from H to Total Life Factory, a business partner of Grace Co., Ltd., it was decided to transfer them through A. On June 11, contracts prepared by D were executed providing for the shares to be transferred first from H to A, and then from A to Total Life Factory. (Exhibit Ko 26; plaintiff's representative)
d. D and E assigned the right to obtain a patent for the invention to the plaintiff on November 16, 2014, and the plaintiff filed the application on April 6, 2015. A remained the plaintiff's representative at least until around June 11 of that year. (Exhibits Ko 3–5 and 7)
e. On July 15, 2015, A convened an extraordinary shareholders' meeting asserting that A was a shareholder of the plaintiff. The meeting adopted resolutions removing D as a director and appointing A as a director and representative director (Shareholders' Resolution (1)); those matters were registered on July 22. A also convened an extraordinary shareholders' meeting on July 30, which adopted a resolution appointing B as a director (Shareholders' Resolution (2)); that appointment was registered on July 31. (Exhibits Ko 7 and 8) D learned around that month that those registrations had been made. D was not acquainted with B (Exhibit Ko 26; plaintiff's representative).
f. On August 18, 2015, A entered into Assignment Agreement (1) with B and prepared, in the name of the plaintiff's representative director, a deed assigning to B the right to obtain a patent for the invention (the Assignment Deed) (Exhibit Ko 6).
g. On March 1, 2016, A convened an extraordinary shareholders' meeting, which adopted a resolution dissolving the plaintiff and appointing attorney F as its representative liquidator (this resolution, together with Shareholders' Resolutions (1) and (2), is hereinafter referred to as the “Shareholders' Resolutions at Issue”). Those matters were registered on March 14 (Exhibits Ko 7 and 8).
h. On April 19, 2016, attorney F, as the plaintiff's representative liquidator, applied for a payment order against D seeking damages, alleging, among other things, that D had misappropriated the plaintiff's deposits. The application proceeded to ordinary litigation (hereinafter the “Damages Action”). The validity of the Shareholders' Resolutions at Issue became an issue in that action. (Exhibit Ko 26)
i. By November 29, 2016, D had learned that the right to obtain a patent for the invention had been transferred to B. D asked patent attorney L of Soko International Patent Office, who had represented the plaintiff in the patent application (hereinafter “patent attorney L”), about the application's status. L informed D that the applicant had been changed from the plaintiff to B and, correspondingly, the application representative had been changed to Kyoto International Patent Office, a patent professional corporation (Exhibit Ko 30; plaintiff's representative).
j. Examination of the patent application was requested on April 6, 2018, a decision to grant was issued on February 14, 2019, and B obtained registration establishing the patent right on May 17, 2019 (Exhibit Ko 5; Exhibits Otsu 1 and 2).
By around that month, D knew that B had obtained registration of the patent right through the above course of events (plaintiff's representative).
k. In the Damages Action, the Tokyo District Court rendered a judgment dismissing the action as inadmissible on October 11, 2019. An appeal was filed, but the Tokyo High Court dismissed it on March 19, 2020, and that judgment became final (Exhibit Ko 26; plaintiff's representative).
l. D subsequently asked attorney F to hand over documents concerning the plaintiff. Because F did not comply, D brought an action against the plaintiff in 2021 seeking a declaration that the Shareholders' Resolutions at Issue did not exist. Despite being duly summoned, the plaintiff did not appear at the oral hearing. On July 20, 2021, the Tokyo District Court granted D's claim, and the judgment became final on August 5, 2021. (Exhibits Ko 7, 8, and 26; plaintiff's representative)
m. Following finalization of the judgment in item l, registrations dated August 30, 2021 recorded, among other things, that the judgment declaring nonexistent the resolution removing D as a director had become final and that D's status as a director had been restored. Further, on September 29, 2021, the registration dated July 15, 2015 of D's departure from office was canceled ex officio, and restoration of D's status as representative director was registered (Exhibit Ko 7).
n. On February 1, 2022, B and Rightsfor entered into Assignment Agreement (2), and on April 8, 2022, Rightsfor and the defendant entered into Assignment Agreement (3) (Exhibit Ko 4; Exhibits Otsu 5 and 10; entire purport of oral argument).
(b) As stated in (a)b through d, A, as an assistant at Total Life Factory, handled customer service and administrative tasks under D's instructions. At D's request, A became representative director around June 2014 and remained the plaintiff's representative director at least until around June 11, 2015. Moreover, H, the plaintiff's founder, decided to transfer the plaintiff's shares through A to Total Life Factory. On June 11, 2014, contracts drafted by D were executed to transfer the shares first from H to A and then from A to Total Life Factory. A also used those contractual arrangements in becoming the plaintiff's representative director through Shareholders' Resolution (1).
As stated in (a)e and f, A convened an extraordinary shareholders' meeting on July 15, 2015, at which Shareholders' Resolution (1) appointing A as representative director was adopted. On August 18, 2015, A and B entered into Assignment Agreement (1), assigning B the right to obtain a patent for the invention.
Accordingly, A's execution of Assignment Agreement (1) arose from the conduct of H, a shareholder of the plaintiff, and D, said to be its true representative. The plaintiff's own internal circumstances and conduct must therefore be said to have played a substantial role in creating the false appearance that B held the patent right.
(c) Further, as stated in (a)e and h, by around July 2015 D knew that registrations had been made removing D as a director, appointing A as a director and representative director, and appointing B as a director. In the Damages Action, too, the validity of the Shareholders' Resolutions at Issue, which included appointing A and B as directors and the like, was disputed.
Moreover, according to (a)e and i and the entire purport of oral argument, by November 29, 2016 at the latest, D knew that the right to obtain a patent for the invention had been transferred to B, with whom D was unacquainted and who appeared to cooperate with A; that the applicant had been changed from the plaintiff to B; and that the application representative had correspondingly been changed to Kyoto International Patent Office.
Further, as stated in (a)j, examination was requested on April 6, 2018, a decision to grant was issued on February 14, 2019, and B obtained registration establishing the patent right on May 17, 2019. D also knew of this course of events.
Thus, D, said to be the plaintiff's true representative, knew by around July 2015 that A had taken steps such as having A appointed the plaintiff's representative director. By November 29, 2016, D also knew that the right to obtain a patent had been assigned to B, whom D did not know and who appeared to cooperate with A.
Nevertheless, as stated in (a)k and l, even after the appeal in the Damages Action was dismissed on March 19, 2020, D did not bring an action seeking a declaration of nonexistence of the Shareholders' Resolutions at Issue until 2021. The entire purport of oral argument also establishes that D took no other measures, such as other contentious or noncontentious proceedings or approaches to B.
(d) Further, as stated in (a)l, even after the plaintiff obtained a favorable judgment on July 20, 2021 in the action seeking a declaration of nonexistence of the Shareholders' Resolutions at Issue and that judgment became final on August 5, 2021, until the patent right was transferred from B to Rightsfor on February 1, 2022, the plaintiff took neither legal measures, such as demanding that B complete registration of transfer of the patent right or seeking a provisional disposition prohibiting transfer, nor other measures, such as contacting B to request return of the patent registration to the plaintiff or that registration not be transferred to others (plaintiff's representative; entire purport of oral argument).
(e) As explained above, the plaintiff's own internal circumstances and conduct were part of the reason A entered into Assignment Agreement (1) and created the false appearance that B was the patentee. Moreover, although D, said to be the plaintiff's true representative, knew by November 29, 2016 at the latest that this false appearance existed, D did not bring an action seeking a declaration of nonexistence of the Shareholders' Resolutions at Issue or take similar steps for approximately four years, until 2021. Further, even after the judgment declaring those resolutions nonexistent became final on August 5, 2021, no measures were taken against B during the approximately six months before B transferred the patent right to Rightsfor.
In these circumstances, the plaintiff must be found to bear responsibility for the creation of the false appearance so serious as to be equivalent to having actively participated in creating it or deliberately leaving it unaddressed despite knowing of it.
(f) In response, the plaintiff argues that its (D's) conduct after the judgment declaring the Shareholders' Resolutions at Issue nonexistent became final on August 5, 2021 was unobjectionable: the court-commissioned registration was not completed until around mid-October, and after the judgment became final it was difficult to envisage B further transferring the patent right, so the plaintiff was seeking the documents from attorney F.
However, by August 5, approximately six years had already elapsed since Assignment Agreement (1), and B was unacquainted with D and appeared to cooperate with A. Once the judgment declaring the resolutions nonexistent became final, there was therefore a strong need promptly to take legal measures against B, such as demanding completion of registration of transfer of the patent right.
Further, as stated in (a)k and l, even after the judgment dismissing the Damages Action became final, attorney F did not comply with D's request for documents. F, who was regarded as the plaintiff's representative liquidator in the action seeking a declaration of nonexistence of the resolutions, also failed to attend the oral hearing despite being duly summoned. Given F's responses and litigation conduct, even after the judgment declaring the resolutions nonexistent became final, it was not reasonable to expect F to comply with D's request for the documents.
In addition to those circumstances, the plaintiff could have demanded the documents from F while simultaneously pursuing a demand against B for registration of transfer of the patent right. Accordingly, the plaintiff's argument that there was nothing wrong with its (D's) conduct after the judgment became final on August 5, 2021 cannot be accepted.
(g) The plaintiff further argues that B was a party to the unlawful takeover of the plaintiff, and that B's patent attorney would be expected to act according to B's wishes and would not cooperate with D. Thus, even if D had approached B or B's patent attorney, it would not have helped remove the false appearance and might even have been counterproductive.
However, first, there is insufficient evidence to establish that B personally was a party to an unlawful takeover of the plaintiff. Moreover, since D never contacted B, there was no indication of how B would respond, and it is unreasonable to conclude categorically that approaching B would not have removed the false appearance or would have been counterproductive. Further, if B or B's patent attorney did not respond to D's approach, that would simply mean that B and D disputed ownership of the patent right. In that event, D should promptly have brought an action seeking a declaration of nonexistence of the Shareholders' Resolutions at Issue or taken similar steps.
Accordingly, that argument of the plaintiff cannot be accepted.
B. The defendants' good faith and absence of negligence
(a) The evidence cited below and the entire purport of oral argument establish the following facts.
a. Around May 2021, G, the defendant's representative in charge, received a request from the defendant's development department to investigate patents relating to a hair iron under development. G discovered the patent and asked a patent office to conduct a freedom-to-operate investigation into whether the hair iron fell within the invention's technical scope and whether grounds for invalidity existed (Exhibit Otsu 9; witness G).
b. The investigation in item a concluded that the defendant's hair iron under development fell within the invention's technical scope but that grounds for invalidity existed. The defendants therefore decided both to request an invalidation trial and to negotiate with B for assignment of the patent right, entrusting the negotiations to a patent attorney (Exhibits Otsu 6 and 9; witness G).
c. The patent attorney engaged under item b negotiated with B. On February 1, 2022, B visited the patent office to which that attorney belonged, and B and Rightsfor entered into Assignment Agreement (2) (Exhibit Ko 4; Exhibits Otsu 5, 9, and 10; witness G; entire purport of oral argument).
d. At the time of execution of Assignment Agreement (2), G had received no report from the patent attorney engaged under item b of suspicious circumstances concerning Rightsfor's entering into that agreement (witness G).
(b) As stated in items a through d above, G asked a patent attorney belonging to a patent office to conduct a freedom-to-operate investigation and negotiate with B for assignment of the patent right. The attorney concluded Assignment Agreement (2) on February 1, 2022, and G received no report from the attorney of suspicious circumstances concerning its conclusion.
In addition to these circumstances, as of February 1, 2022, when Assignment Agreement (2) was executed, more than six years and five months had elapsed since Assignment Agreement (1), yet its validity was not then expressly disputed. Taking this into account as well, it is appropriate to find that, at the time of Assignment Agreement (2), the defendants were in good faith and without negligence regarding the fact that B had not acquired the right to obtain a patent for the invention and did not hold the patent right.
(c) In response, the plaintiff argues that the defendants must have known, by checking the plaintiff's commercial register, that A was not its representative on August 18, 2015, when Assignment Agreement (1) was executed, and thus knew that B did not hold the patent right.
However, the evidence (witness G) and the entire purport of oral argument establish that the defendants did not check the plaintiff's commercial register. Nor does all the evidence establish that the defendants knew that A was not the plaintiff's representative as of August 18, 2015. The plaintiff's argument therefore lacks its premise and cannot be accepted.
Accordingly, it is not established that the defendants knew B did not hold the patent right.
(d) The plaintiff also identifies the following suspicious circumstances: (1) it is extremely unusual, as with this patent, for an individual applicant and patentee not to be the inventor; (2) it is highly unnatural for the plaintiff, a corporation practicing the invention for which it applied, to assign the right to obtain a patent to B, an individual; (3) while A used a seal bearing the plaintiff's name and A's position as representative director on the April 22, 2015 “Certificate for Application of the Exception to Loss of Novelty,” A used a different personal seal on the Assignment Deed; (4) it is highly unnatural for the plaintiff corporation to assign an individual the right to obtain a patent for an invention it itself practiced only four months after filing; and (5) neither B individually nor the security and maintenance company B apparently represented was engaged in a hair-iron business, making assignment by the plaintiff to such a B unnatural. On these grounds, the plaintiff argues that the defendants had a duty to verify whether A had authority to represent the plaintiff on August 18, 2015.
However, whether it is unnatural that the applicant and patentee was an individual (B) different from the inventor (point (1)), or that the plaintiff corporation assigned the right to obtain a patent to B four months after filing despite practicing the invention (points (2) and (4)), must be assessed in light of the plaintiff's internal circumstances. The defendants were not in a position to know the plaintiff's internal circumstances explained in A(b) above. In those circumstances, it would have been difficult to question the validity of Assignment Agreement (1) and the appearance created by the JPO registration based on it.
As for use of A's personal seal on the Assignment Deed (point (3)), relatively small companies may use a representative's personal seal when entering into contracts. This does not immediately entail that the validity of Assignment Agreement (1) and the appearance of the JPO registration based on it should have been questioned.
Nor does the fact that B was not engaged in a hair-iron business (point (5)), by itself, negate a need for B to acquire from the plaintiff the right to obtain a patent for the invention.
In addition to these circumstances, as explained in (b), the validity of Assignment Agreement (1) had not been expressly disputed for more than six years and five months after its execution, and the appearance that B was the patentee had persisted for a substantial period. Even considering all the suspicious circumstances identified by the plaintiff together, they cannot be said to establish a duty on the defendants to question the validity of Assignment Agreement (1) and the JPO registration based on it, and to verify whether A had authority to represent the plaintiff as of August 18, 2015.
Accordingly, that argument of the plaintiff cannot be accepted.
(3) Summary
For these reasons, it is appropriate to construe Civil Code Article 94(2) as applying by analogy in this case, with the result that the plaintiff cannot assert against the defendant that it holds the right to obtain a patent for the invention.
Translator’s notes (editorial)
The quoted source at subsection A(d) says the plaintiff obtained a favorable judgment, although A(a)l states that D sued the plaintiff and prevailed. Both source statements are retained. Company names are transliterated, not asserted to be official English corporate names.
Update history
The first-published date remains unchanged. Display maintenance, classification changes, related-article updates, and text corrections are recorded separately.
November 1, 2026: First published on this website.
November 2, 2026: Added article information, classification, topics, language navigation, related articles where the same case was confirmed, consultation guidance, and SEO. The original text and first-published date were preserved.
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