2011 japanese patent law revision aipla annual meeting october 21, 2011 yoshi inaba tmi associates
TRANSCRIPT
2011 Japanese Patent Law Revision
AIPLA Annual MeetingOctober 21, 2011Yoshi InabaTMI Associates
Summary of Revisions
1. Six month Grace Period for any activities by applicant
2. No registration necessary for non-exclusive license
3. Misappropriated patent to be transferred to real owner
4. New Invalidation and Correction Trial procedure
5. Restriction to Re-trail
Summary of Revisions
6.Others:
Registrability of expired trademark Reduction of fees Remedy for failure to meet deadline (submission o
f translation)
Six month Grace Period for any activities by applicant Under the old law Grace Period is available for limited activities
conducted by the applicant
Under the new law Grace Period is available for any activities conducted by the applicant.
Note: Grace Period remains 6 months.
No registration necessary for non-exclusive license Under the old law In order for a non-exclusive license to be effecti
ve against a third party including a successor of the patent, there must be a registration at the JPO.
Under the new law No such registration is necessary and no such r
egistration exists anymore, but licensee must show that such a license in fact exists.
Note: Sen-Yo Jisshiken exclusive license must still be registered.
Misappropriated patent to be transferred to real owner Misappropriated patent means a patent filed by
someone who is not an inventor or a successor of the right to obtain a patent.
Under the old law There is a provision that such an misappropriated
patent can be invalidated but no provision that the patent can be transferred to real owner.
Under the new law Real owner may request transfer of such a patent .
Plaintiff
Invalidity defense
Infringement
Defendant
Courtdecision
DistrictCourt
Final and binding
Infringement lawsuit
Demandant
Demandee
Invalidity
JPOTrial
decision
Patent correctionFinal and binding
Invalidation trial
New Invalidation and Correction Trial procedure- Current “Double track” in validity judgments
IP HighCourt
Appeal
Appeal(lawsuit)
Courtdecision
Courtdecision
New Invalidation and Correction Trial procedure- Current “Catch-ball” phenomenon
* Data from Japan Patent Office
JPO
Canceltrial decision
Invalidationtrial
Reopentrial
IP HighCourt
30
da
ys
90
da
ys
Patentcorrection
1st trialdecision
Affirmtrial decision
Patentcorrection
1st suit
444 cases*
902 casesin 2005-2009*
267 cases*
190 cases*
Appeal(49%)
Remand(43%)
Final andbinding
2nd suit
81 cases*
Pate
nt
correc
tion
2nd trialdecision
Appeal(43%)
26 cases*(4 cases
remanded)
Appeal
Invalidationtrial
New Invalidation and Correction Trial procedure
Under the old law Correction after appeal to IP High Court possible
Case bounces back and forth between the court and JPO.
Under the new law No Correction after appeal to IP High Court possible Instead, before a final decision made, a preliminary trial
decision will be made to give a patentee a Correction opportunity following the preliminary trial decision.
JPO
Canceltrial decision
IP HighCourt
30
da
ys
90
da
ys
old
Invalidationtrial
Reopentrial
Patentcorrection
1st trialdecision
Patentcorrection
Canceltrial decision1st suit
Appeal Remand
2nd suit
Pate
nt
correc
tion
2nd trialdecision
Appeal
JPO
IP HighCourt
new3
0 (
or
60
) d
ay
s
Patentcorrection
Invalidationtrial
Preliminarytrial decision
to invalidate patent
Patentcorrection
Patentcorrection
1st suit
Appeal
30
da
ys
1st trialdecision
Canceltrial decision
Reopentrial
New Invalidation and Correction Trail procedure
New Invalidation and Correction Trial procedure - Third party effect of an invalidation trial decision abolished Under the old law Once someone files a trial and a decision is made
final, another trial based on the same facts and evidence cannot be filed by anyone.
Under the new Law A final invalidation trial decision binds only the
parties involved in the invalidation trial. A third party can still challenge validity of the same
patent based on the same facts and evidence
Plaintiff
Invalidity defense
Infringement
Defendant
Final and bindingcourt decision
DistrictCourt
Final and binding trial decision
Infringement
Infringement lawsuit
Restriction to Re-trial
Invalid patent
Retrial Cancel the court decision
Patent proprietor returns damage compensation.
Demandant
Demandee
Invalidity
JPO
Patent correction
Invalidation trial
Defendant pays damage compensation.
X
Restriction to Re-trail Gist of the reform
A final and binding court decision should be respected, as it was delivered after sufficient offense and defence procedures between
the parties, which include a defendant’s plea of invalidity of the patent (Art.104-3) and a patentee’s request to correct deficiencies of the patent.
Newly introduced Art.104-4 No retrial against a final and binding court decision on the following
grounds: A final and binding trial decision of invalid patent A final and binding trial decision of invalid extension of patent term A final and binding trial decision of patent correction
Applicable to retrials filed on or after 1 April 2012 (provisional)
Registrability of expired trademark
Under the old law A registered trademark or similar thereto
cannot be registered by a third party within one year of expiration of the trademark registration.
Under the new law Above provision is abolished. No such
restriction anymore.
- Remedies for failure to meet translation and patent fee deadlines Under the old law – Very strict
Japanese translation of an English-language application 14 months from a priority date (Art.36-2)
Japanese translation of an English-language PCT application 30 months + 2 months from a priority date (Art.184-4)
Late payment of patent fees (fourth annuity and onwards) Late payment period: 6 months + surcharge (Art.112)
Under the new law Failure to meet the deadlines can be cured if caused by a justifiable
reason Hospitalization due to illness, unpredictable failure of a docketing system, etc. Additional 2 months from the date when the reason is ceased, but not
later than 1 year from the deadlines.
- Reduction of examination fees
Reduction of an examination fee (basic fee) by about 30%
Reduction of PCT international search fees by about 20-30%
- Fee reduction/exemption requirements for small entity, etc. Points of the revision
Extension of the reduction/exemption term for patent fees from 3 or 6 years to 10 years.
Broadening of the scope of small and medium-sized companies subject to reduction/exemption.
Abolishment of the employee invention requirements for universities, etc.
Effective Date of the Revisions
has not yet been decided, but shall be someday
before JUNE 8, 2012.
