Post Grant Review Post Grant Review and Other Third Party and Other Third Party

Review in JPReview in JP-Who Moved JP -Who Moved JP Opposition???Opposition???

Kay KONISHIKay KONISHI NICHI-EI Patent and Trademark NICHI-EI Patent and Trademark Attorneys, P.C.Attorneys, P.C.

AIPLA MWI, Japan Practice AIPLA MWI, Japan Practice Committee Meeting, Jan. 22, Committee Meeting, Jan. 22, 2012, Las Vegas2012, Las Vegas

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1.1.1.1. Rationale for Third Party Rationale for Third Party ReviewReview

1.1. Actual/ Actual/ potential potential Dispute Dispute

resolution resolution between between partiesparties

2.2. Public Public participation participation in patentingin patenting

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1.2.1.2. Comparable Procedures in Comparable Procedures in Different JurisdictionsDifferent Jurisdictions

US presentUS presentEx Parte Ex Parte Reexamination and Reexamination and Inter Partes Inter Partes

Reexamination only on the grounds of prior art Reexamination only on the grounds of prior art publicationpublication

US AIAUS AIAPost-Grant Review within 9 months after grant Post-Grant Review within 9 months after grant

on wider groundson wider groundsInter Partes Inter Partes ReviewReview

EPEPEPO Opposition with broad range of groundsEPO Opposition with broad range of groundsInvalidation procedures before national Invalidation procedures before national

authoritiesauthorities

JP used to have opposition…JP used to have opposition…

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2.2.1.1. Long History of Third Party Long History of Third Party Review…Review…

1921-19931921-1993

FDFD Pub.Pub. Pub. of Pub. of Examined Examined Appl.Appl.

GrantGrant

Third Party ObservationThird Party Observation

Pre-Pre-Grant Grant OpposOppositionition

3M3M Invalidation Trial at JPOInvalidation Trial at JPO

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2.2.2.2. Long History of Third Party Long History of Third Party Review…Review…

1994-20021994-2002

FDFD Pub.Pub. GrantGrant

Third Party ObservationThird Party Observation

Post-Grant Post-Grant OppositionOpposition

6M6M

Invalidation Trial at JPOInvalidation Trial at JPO

2000 (2000 (KilbyKilby Sup. Ct. case)- Sup. Ct. case)-Invalidation Defense in Ct.Invalidation Defense in Ct.

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2.2.3.3. Long History of Third Party Long History of Third Party ReviewReview

2003-Present2003-Present

FDFD Pub.Pub. GrantGrant

Third Party ObservationThird Party Observation

Invalidation Trial at JPOInvalidation Trial at JPO

Invalidation Defense in Ct.Invalidation Defense in Ct.

Post-Grant Third Party Post-Grant Third Party ObservationObservation

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3.1.3.1. 1994 Change1994 Change-From Pre-Grant to Post-Grant-From Pre-Grant to Post-Grant

Changed in aiming Changed in aiming fast grantfast grantPressure came from overseasPressure came from overseas

1989 US Senate Resolution on problematic JP patent 1989 US Senate Resolution on problematic JP patent systemsystem

1993 US-JP Framework for new Econimic Partnership1993 US-JP Framework for new Econimic Partnership 1994 US-JP Agreement1994 US-JP Agreement Pre-Grant Opposition was found as impediment to fast Pre-Grant Opposition was found as impediment to fast

grantgrant

High burden on Examiners involved High burden on Examiners involved in Opposition was another pressurein Opposition was another pressure

...The biginning of the end...The biginning of the end

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3.2. 2003 Change3.2. 2003 Change-Post-Grant Opposition Abandoned...-Post-Grant Opposition Abandoned...

Abandoned « to be merged into Abandoned « to be merged into Invalidation Trial » in the course of Invalidation Trial » in the course of dispute resolution reform within Dispute dispute resolution reform within Dispute Resolution sub-committee in METI Resolution sub-committee in METI Industrial Structure CouncilIndustrial Structure Council

Treble tracks after grant was found Treble tracks after grant was found complicated and duplicatedcomplicated and duplicatedNO Estoppel between Post-Grant Opposition and NO Estoppel between Post-Grant Opposition and

Invalidation Trial, thus one party can freely demand Invalidation Trial, thus one party can freely demand Invalidation Trial again after he lost in the opposition Invalidation Trial again after he lost in the opposition or even simultaneously on an identical groundor even simultaneously on an identical ground

NO joinder between Opposition and Invalidation TrialNO joinder between Opposition and Invalidation Trial

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3.2.3.2. 2003 Change2003 Change-Post-Grant Opposition Abandoned-Post-Grant Opposition Abandoned

Post-Grant Opposition was less popular Post-Grant Opposition was less popular than Pre-Grant one and criticized as than Pre-Grant one and criticized as unfriendly for third party requesterunfriendly for third party requester

Post-Grant Opposition was no more the Post-Grant Opposition was no more the same one as Pre-Grant Oppositionsame one as Pre-Grant OppositionPost-Grant Opposition was highly Post-Grant Opposition was highly ex parteex parte, while , while

Pre-Grant Opposition was closer to Pre-Grant Opposition was closer to inter partesinter partesOnce the requester filed opposition, he was no Once the requester filed opposition, he was no

more notified of patentee’s amendment/brief more notified of patentee’s amendment/brief Post-Grant Opposition was designed to be Post-Grant Opposition was designed to be

differentiated from Invalidation Trial differentiated from Invalidation Trial

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3.3. Comparison in Third Party 3.3. Comparison in Third Party Reviews before JPOReviews before JPO

Pre-Grant Op.Pre-Grant Op. Post-Grant Op.Post-Grant Op. Invalidation Invalidation TrialTrial

Who to file?Who to file? Anyone, even Anyone, even anonymouslyanonymously

Anyone, even Anyone, even anonymouslyanonymously Anyone Anyone

When to file?When to file? 3 M window3 M window 6 M window6 M window AnytimeAnytime

GroundsGrounds Broad groundsBroad groundsBroad grounds Broad grounds except derivation except derivation (Old Art.113)(Old Art.113)

Broad grounds Broad grounds (Art.123(1))(Art.123(1))

Who to Who to examine?examine? ExaminerExaminer Collegial Body of Collegial Body of

BOA ExaminersBOA ExaminersCollegial Body of Collegial Body of BOA ExaminersBOA Examiners

Oral Oral Proceeding?Proceeding? NoNo NoNo YesYes

Requester’s Requester’s participation?participation?

Yes, Closer to Yes, Closer to Inter PartesInter Partes

No, Highly No, Highly Ex Ex parteparte Yes, Yes, Inter partesInter partes

Appealable?Appealable? NoNo Yes, only for Yes, only for patenteepatentee YesYes

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3.4.3.4. What Was Expected in 2003 What Was Expected in 2003 ChangeChange

In 2003 change, Invalidation Trial System In 2003 change, Invalidation Trial System was enhanced to cover public was enhanced to cover public participation function of oppositionparticipation function of oppositionReal interest has been no more requiredReal interest has been no more requiredAverage trial duration shortened (about 12 Average trial duration shortened (about 12

months or less)months or less)

Users preferred more participation to Users preferred more participation to proceedingsproceedings

Accordingly, Post-Grant Opposition was Accordingly, Post-Grant Opposition was assumed no more necessary and assumed no more necessary and replaceable by enhanced Invalidation replaceable by enhanced Invalidation Trial Trial

...Really??...Really??

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3.53.5. . What Happened after 2003 What Happened after 2003 ChangeChange

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3.53.5. . What Happened after 2003 What Happened after 2003 ChangeChange

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4.1.4.1. Present Measures Available Present Measures Available for Third Party Reviewfor Third Party Review

Enhanced Third Party ObservationEnhanced Third Party ObservationBroad range of grounds (eligibility, novelty, Broad range of grounds (eligibility, novelty,

inventive-step, description requirement, new inventive-step, description requirement, new matter introduction...) (Ordinance Rule 13)matter introduction...) (Ordinance Rule 13)

Can be filed anonymouslyCan be filed anonymouslyPatent/non-patent document submissionPatent/non-patent document submissionWith reasons/arguments on unpatentability With reasons/arguments on unpatentability When to be examined is publicly accessible so When to be examined is publicly accessible so

that third party can submit document in due that third party can submit document in due course course ((http://www.deux.jpo.go.jp/ssearch/search.htm))

After 18 month Laid-open Publication; orAfter 18 month Laid-open Publication; orPost-Grant: Submitted documents are just to be Post-Grant: Submitted documents are just to be

docketed for public inspectiondocketed for public inspection

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4.1.4.1. Present Measures Available Present Measures Available for Third Party Reviewfor Third Party Review

Long- and well-established Invalidation TrialLong- and well-established Invalidation TrialAnyone can demand, not necessarily by real party in Anyone can demand, not necessarily by real party in

interestinterestNO limitation to grounds for demandNO limitation to grounds for demandNo threshold to commence proceedingNo threshold to commence proceedingFast and scheduled proceeding (ave. 12 months)Fast and scheduled proceeding (ave. 12 months)Decision by collegial body of BOA Examiners is credibleDecision by collegial body of BOA Examiners is credible Inter partes Inter partes proceeding assures a chance of demandant’s proceeding assures a chance of demandant’s

subsequent argument after demand subsequent argument after demand Oral proceeding after both parties’ assertionsOral proceeding after both parties’ assertions Inexpensive official fee (JPY49,500+@JPY5,500/claim)Inexpensive official fee (JPY49,500+@JPY5,500/claim)No Estoppel, only subsequent demand by same party on No Estoppel, only subsequent demand by same party on

identical ground + ref. is prohibited (Amended Art.167)identical ground + ref. is prohibited (Amended Art.167)

Reliable tool for third party validity review Reliable tool for third party validity review in terms of dispute resolution...in terms of dispute resolution...

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4.2.4.2. Revisiting Another Aspect of Revisiting Another Aspect of Third Party Review…Third Party Review…

Public participation in patentingPublic participation in patentingFor Quality PatentFor Quality Patent

Users need something inbetweenUsers need something inbetweenLess burdenLess burdenMore preventiveMore preventiveBefore actual controversyBefore actual controversyFor certain time of periodFor certain time of periodAnonymous demandAnonymous demandGood for training for practitionersGood for training for practitioners

Enhanced Invalidation Trial is not yet a full Enhanced Invalidation Trial is not yet a full replacement of old opposition in terms of replacement of old opposition in terms of public participation...public participation...

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5.1.5.1. Ongoing Discussions on Public Ongoing Discussions on Public Participation in Patenting…Participation in Patenting…

Report from JPO Commissioner’s private Report from JPO Commissioner’s private Patent System Study Group (2009.Dec.)Patent System Study Group (2009.Dec.)Enhancement of Third Party Review was Enhancement of Third Party Review was

discusseddiscussedPros and consPros and cons

Post-/Pre-Grant Review should be introducedPost-/Pre-Grant Review should be introducedCurrent examination quality is satisfactory, no need Current examination quality is satisfactory, no need

to introduce public participationto introduce public participationDiscussing adequacy of abandonment of opposition Discussing adequacy of abandonment of opposition

should be sensitiveshould be sensitive

Proposals from secretariatProposals from secretariatA: « A: « ex parte ex parte Invalidation Trial for certain period of Invalidation Trial for certain period of

time »time »B: « JPO Commissioner’s discretionary B: « JPO Commissioner’s discretionary

Reexamination »Reexamination »

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5.1.5.1. Ongoing Discussions on Public Ongoing Discussions on Public Participation in PatentingParticipation in Patenting

Report from JPO Commissioner’s private Report from JPO Commissioner’s private Patent System Study Group (2009.Dec.)Patent System Study Group (2009.Dec.)No consensusNo consensus« Discussion carried over »« Discussion carried over »Not addressed by 2011 Amendment to Patent ActNot addressed by 2011 Amendment to Patent Act

JPAA submitted and published affirmative JPAA submitted and published affirmative proposal on third party review (2010.Feb.)proposal on third party review (2010.Feb.)

http://www.jpaa.or.jp/activity/appeal/2010/pdf/iken_tokkyoseidokenkyukai.pdf

« « Pre-Grant Cooperating Examination systemPre-Grant Cooperating Examination system » »Publication of allowable application on the InternetPublication of allowable application on the Internet2-3 months for third party submission2-3 months for third party submissionExamination resumes and to be finished within 6 Examination resumes and to be finished within 6

monthsmonths

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5.2.5.2. Wrap-upWrap-upIn order to achieve In order to achieve Quality Patent Quality Patent and and

to keep examination system to keep examination system sustainable, enhancing third party sustainable, enhancing third party review is practical solution in light of review is practical solution in light of time constraints and limited time constraints and limited examination resourcesexamination resources

Applications/patents that are drawing Applications/patents that are drawing public attention may be allowed to draw public attention may be allowed to draw certain extra work by the Officecertain extra work by the Office

In order to eliminate excessive burden In order to eliminate excessive burden on Examiners/patentees, threshold to on Examiners/patentees, threshold to commence, Estoppel or prohibition of commence, Estoppel or prohibition of double jeopardy may workdouble jeopardy may work

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Kay KONISHIKay KONISHI

NICHI-EI Patent and NICHI-EI Patent and Trademark Attorneys, P.C.Trademark Attorneys, P.C.

Konishi@p-nic.com