takeo nasu jpaa international activities center aipla 2015 mid-winter institute ip practice in japan...
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Takeo NasuJPAA International Activities Center
AIPLA 2015 Mid-Winter InstituteIP Practice in Japan Committee Pre-Meeting Seminar
Updates of Post Grant Proceedings
New Post-Grant Proceedingsare Coming SOON!
Timeline for the New Post Grant Proceedings
May 14, 2014: Amendment promulgated December 18, 2014: Guidelines proposed January 16, 2015: Public Comments Deadline
May 14, 2015
Effective Date (likely April 1, 2015)
Proposed GuidelinesInterested Parties Guideline for Invalidation TrialOpposition Operation Guideline
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New Post-Grant Proceedings• Invalidation Trial Only
– Anyone can be a petitioner
– Great burden for petitioner (Oral Hearing)
• Invalidation Trial– Oral Hearing
– Interested parties only
• Opposition– No Oral Hearing
– Anyone can be a petitioner
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Interested Parties(1) Procedures for Interested Parties Determination No examination of interested party status if the
patentee does not dispute the interested party’s status If the interested party status is clear to the Appeal
Board, the Appeal Board proceeds with the examination without an explanation from the interested party
If the interested party status is NOT clear to the Appeal Boart, the Appeal Board will ask the interested party for an explanation
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Interested Parties
(2) Interested Parties– Person whose legal interests or the status
of his/her rights would be affected by the patent
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Interested Parties Interested Party Precedents
1. A person who works/worked an invention which is identified to the patented invention
2. A person who may work the patented invention in the futurea. A person who works an invention similar to the patented inventionb. A person who prepares to work the patented Invention (e.g. purchasing
necessary machinery or materials or starting to build/design an equipment)
c. A person who has an equipment to work the patented invention3. A person who engages in the business of making, selling, or using a product or
method which is of the same type as a product or a method of the patent4. A Person who is an exclusive/non-exclusive licensee5. A person who is/was in litigation for the patent or received warnings6. A person who has a right to be granted a patent for the patented invention
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Interested Parties Interested Parties designated by JPOa) A patentee or an exclusive/non-exclusive licensee of a patented
invention which is within the scope of other’s patentb) University or university researchers who conduct
research/development jointly with business if there is a legal benefit for the businesses to demand a trial to invalidate the subject patent
c) A parent company and a subsidiary are treated as interested parties to each other
d) A person who makes or sells a finished product which is an aggregate of a product of the subject patent and another product of the same type
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Interested Parties Opponent whose opposition was not successful
– NOT treated as Interested parties because he filed the opposition
– Needs to have other interests
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Proposed Opposition Operation Guideline(1) Joinder of Requests(2) Notification of Reason for Revocation(3) Opponent’s Reply(4) Notification of Reasons for Revocation (Advance Notice of the Decision to Revoke)(5) Decision(6) Relationship with Invalidation Trial(7) Relationship with Correction Trial
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Opponent
No Appeal Available
Japan Patent Office Patentee
Appeal Against Decision to Revoke the Patent
Written Arguments/Request for Amendment
Examination by Documentary Proceedings
Copy of Request for Amendment, etc.
Opposition Flow Chart
Notification of Reasons for Revocation
Grant of Patent
Copy of Decision to Maintain/ Revoke the Patent
Copy of the Notice of Opposition
Submission of Reply
Notice of Opposition
Written Arguments/Request for Amendment
Notification of Reasons for Revocation (Advance Notice)
6 months from grant*16 months from grant*1
1The date of publication in the Official Gazette for Patents
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Opponent
No Appeal Available
Japan Patent Office Patentee
Appeal Against Decision to Revoke the Patent
Written Arguments/Request for Amendment
Examination by Documentary Proceedings
Copy of Request for Amendment, etc.
(1) Joinder of Requests
Notification of Reasons for Revocation
Grant of Patent
Copy of Decision to Maintain/ Revoke the Patent
Copy of the Notice of Opposition
Submission of Reply
Notice of Opposition
Written Arguments/Request for Amendment
Notification of Reasons for Revocation (Advance Notice)
(1) Joinder of Requests(1) Joinder of Requests
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(1) Joinder of Requests When Two or More Oppositions are Filed
Jointly examined Exceptions
If Joinder would cause difficulties/significant delays
No joinder Request for acceleration filed before 6
months after the grant Examination starts before 6 months have passed
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Opponent
No Appeal Available
Japan Patent Office Patentee
Appeal Against Decision to Revoke the Patent
Written Arguments/Request for Amendment
Examination by Documentary Proceedings
Copy of Request for Amendment, etc.
(2) Notification of Reasons for Revocation
Notification of Reasons for Revocation
Grant of Patent
Copy of Decision to Maintain/ Revoke the Patent
Copy of the Notice of Opposition
Submission of Reply
Notice of Opposition
Written Arguments/Request for Amendment
Notification of Reasons for Revocation (Advance Notice)
(2) Notification of
Reasons for Revocation
(2) Notification of
Reasons for Revocation
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The Appeal BoardExamines all reasons by all OpponentsNotifies all reasons for revocation
Term for response: 60 days (90 days for patentee residing outside of Japan)
(2) Notification of Reasons for Revocation
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Opponent
No Appeal Available
Japan Patent Office Patentee
Appeal Against Decision to Revoke the Patent
Written Arguments/Request for Amendment
Examination by Documentary Proceedings
Copy of Request for Amendment, etc.
(3) Opponent’s Reply
Notification of Reasons for Revocation
Grant of Patent
Copy of Decision to Maintain/ Revoke the Patent
Copy of the Notice of Opposition
Submission of Reply
Notice of Opposition
(3) Opponent’s Reply(3) Opponent’s Reply
Written Arguments/Request for Amendment
Notification of Reasons for Revocation (Advance Notice)
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When the patentee files a request for amendment, the opponent can submit a reply
Deadline for submission: 30 days (50 days for an opponent residing outside Japan)
Exceptions When the amendment would not have
significant effect on the decision① Amendment not meeting requirements② Minor correction (e.g. typos)③ Cancelation of claim④ Amendment of claim not in Issue
(3) Opponent’s Reply
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Opponent
No Appeal Available
Japan Patent Office Patentee
Appeal Against Decision to Revoke the Patent
Written Arguments/Request for Amendment
Examination by Documentary Proceedings
Copy of Request for Amendment, etc.
(4) Notification of Reasons for Revocation (Advance Notice to Revoke the Patent)
Notification of Reasons for Revocation
Grant of Patent
Copy of Decision to Maintain/ Revoke the Patent
Copy of the Notice of Opposition
Submission of Reply
Notice of Opposition
Written Arguments/Request for Amendment
Notification of Reasons for Revocation (Advance Notice)(4) Advance Notice to
Revoke the patent
(4) Advance Notice to
Revoke the patent
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Before a decision to revoke the patent is issued Final opportunity to amend claims Deadline for Response: 60 days (90 days if
residing outside of Japan) Exceptions
No response to previous notification Patentee indicated that he/she does not
want to receive an advance notice
(4) Notification of Reasons for Revocation (Advance Notice to Revoke the Patent)
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When claim amendment is filed Opportunity for the opponent to submit a
written argument Exceptions
① Amendment not meeting requirements② Minor correction (e.g., typos)③ Cancelation of claim④ Amendment of claim which has not been opposed⑤ When Appeal Board decided to revoke the patent⑥ When Appeal Board decided to maintain the
patent without doubt
(4) Notification of Reasons for Revocation (Advance Notice to Revoke the Patent)
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Opponent
No Appeal Available
Japan Patent Office Patentee
Appeal Against Decision to Revoke the Patent
Written Arguments/Request for Correction
Examination by Documentary Proceedings
Copy of Request for Correction, etc.
(5) Decision
Notification of Reasons for Revocation
Notification of Violation of Correction
Grant of Patent
Copy of Decision to Maintain/ Revoke the Patent
Copy of the Notice of Opposition
Written Arguments
Submission of Reply
Notice of Opposition
(5) Decision(5) Decision Written Arguments/Request for Correction
Notification of Reasons for Revocation (Advance Notice)
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Decision to Revoke Sets for the all revocation reasons Cannot use any reason which was not listed
in Notification of Reasons for Revocation (or Advance Notice to revoke)
Decision to Maintain Sets forth the reasons why the patent is
maintained
(5) Decision
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When both an Opposition and an invalidation trial are pending Proceed with the invalidation trial Stay opposition
Exceptions If the examination for the opposition has already
started and a decision can be issued early on If the evidence related to the opposition is clearly
stronger than the evidence related to the Invalidation Trial, and if examining the opposition first would resolve the patent dispute sooner
(6) Relationship with Invalidation Trial
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When both an Opposition and a Correction Trial are pending Proceed with the Opposition Stay the Correction Trial
(7) Relationship with Correction Trial
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Opposition Outcomes
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Opposition Invalidation Trial Third-Party Submission
Anonymous No No Yes
Requester’s Participation
Only when a claim is amended3
Yes (Inter Partes)
No
Oral Hearing No Yes No
Official Fees\16,500 + \2,400/cl.
(approx. $152 + $22/cl.) \49,500 + \5,500/cl.
(approx. $458 + $51/cl.)Free
Opposition and Other Systems
3Not when the panel finds it unnecessary to hear the arguments from the opponent
Actual Dispute If there is an actual dispute related to a patent such as a negative outcome of a negotiation or if you are sued by the patentee
Invalidation Trial
Potential DisputeIf you have a concern about a patent, but it is not clear whether the patent will actually affect your business in the future
Opposition
Lowest CostIf you have a small concern, but do not want to spend a lot of money
3rd Party Submission 28
Opposition and Other Systems
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Opposition Invalidation Trial Third-Party Submission
When Within 6 months from grant1 After grant1 Anytime
Requester Anyone Interested party2 Anyone
Anonymous No No Yes
Oral Proceedings No Yes No
AppendixOpposition and Other Systems
1The date of publication in the Official Gazette for Patents
2After the effective date of the amended statute
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Opposition Invalidation Trial Third-Party Submission
Industrial Applicability Yes Yes Yes
Novelty Yes Yes Yes
Inventive Step Yes Yes Yes
Double Patent Yes Yes Yes
Enablement Yes Yes Yes
Support Yes Yes Yes
New Matter Yes Yes Yes
Violation of Correction No Yes Yes
Violation of Joint Application No Yes No
Derivation No Yes No
AppendixOpposition and Other Systems
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AppendixOpposition and Other Systems
Opposition Invalidation Trial Third-Party Submission
Advantages
•No restriction on requesters•Relatively less expensive
•More time for filing•Requester’s active participation
•No restriction on requesters •Anonymous filing•Low cost•No time limit
Disadvantages
•Limited time for filing•Limited participation of requesters
•Restriction on requesters•Relatively expensive
•No participation of third parties