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

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

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

Interested Parties

(2) Interested Parties– Person whose legal interests or the status

of his/her rights would be affected by the patent

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

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

Interested Parties Opponent whose opposition was not successful

– NOT treated as Interested parties because he filed the opposition

– Needs to have other interests

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

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

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

Opponent

No Appeal Available

(1) Joinder of Requests

Grant of Patent

Submission of Reply

(1) Joinder of Requests(1) Joinder of Requests

(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

Opponent

No Appeal Available

(2) Notification of Reasons for Revocation

Grant of Patent

Submission of Reply

(2) Notification of

Reasons for Revocation

(2) Notification of

Reasons for Revocation

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

Opponent

No Appeal Available

(3) Opponent’s Reply

Grant of Patent

Submission of Reply

(3) Opponent’s Reply(3) Opponent’s Reply

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

Opponent

No Appeal Available

(4) Notification of Reasons for Revocation (Advance Notice to Revoke the Patent)

Grant of Patent

Submission of Reply

Notification of Reasons for Revocation (Advance Notice)(4) Advance Notice to

Revoke the patent

(4) Advance Notice to

Revoke the patent

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

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

Opponent

No Appeal Available

Written Arguments/Request for Correction

Copy of Request for Correction, etc.

(5) Decision

Notification of Violation of Correction

Grant of Patent

Written Arguments

Submission of Reply

(5) Decision(5) Decision Written Arguments/Request for Correction

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

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

When both an Opposition and a Correction Trial are pending Proceed with the Opposition Stay the Correction Trial

(7) Relationship with Correction Trial

Opposition Outcomes

Opposition Invalidation Trial Third-Party Submission

Anonymous No No Yes

Requester’s Participation

Only when a claim is amended3

Yes (Inter Partes)

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

Thank you for your kind attention!

Any questions?

Takeo NasuNakamura & Partnerst_nasu@nakapat.gr.jp

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

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

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

Takeo Nasu JPAA International Activities Center AIPLA 2015 Mid-Winter Institute IP Practice in Japan...

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