Patent Invalidation Trials in Japan
Feb. 28, 2018
Following on from our previous article regarding the patent opposition system in Japan, this article introduces the patent invalidation system.
As discussed in the previous article, the original patent opposition system was abolished in 2003, having been deemed insufficiently user-friendly. However, subsequently, in response to a growing need for prompt establishment of patent rights, among other considerations, the patent opposition system was re-introduced as of April 2015. Before the patent opposition system was re-introduced, eligibility for filing a request for a patent invalidation trial had been unrestricted. However, after the re-introduction of the patent opposition system, eligibility for filing a request for a patent invalidation trial was limited to "parties of direct interest".
There are two types of patent invalidation trial in Japan: a standard trial for patent invalidation, and a trial for invalidation of a registration of extension of duration. The latter can be filed against a patent that has been registered for an extended patent term. The following table summarizes the two types of patent invalidation trial.
| Patent Invalidation Trial | Trial for Invalidation of Registration of Extension of Duration | |
| Nature of Trial | Inter-Parte Procedure | |
| Eligible to Request Trial | Any party of interest (in case of violation of a joint application or a usurped application, true right holder) | |
| Reasons for Invalidation | Reasons for invalidation set forth in Article 123(1) of the Patent Law: - novelty, inventive step, double patenting, Art. 29bis (prior art effect) - clarity, support requirement, enablement - new matter (including new matter beyond text in original language) - violation of joint application - usurped application - violation of public order and morality Most reasons for rejection of a patent application can be included in the reasons for invalidation, except for those related to the unity of a patent or a "shift" amendment" (Art. 17bis(4): an application is rejected when the invention before and after an amendment does not satisfy the requirement of unity of invention). There are also reasons specific to invalidation trials, such as violation of the requirements for correction of a patent or reasons that occur after a patent is granted. |
Reasons for invalidation of a registration of extension of a patent set forth in Art. 125bis(1) of the Patent Law: - cases in which the acquisition of a disposition designated by Cabinet Order (approval of new drugs etc.) is not deemed to have been necessary for implementation of the patented invention - cases in which the patent holder did not obtain a disposition (approval of new drugs etc.) - cases in which the registered term for patent term extension exceeded the period during which the patented invention could not be implemented - violation of a joint application - cases in which the registration of extension of duration was granted for a patent application of a person other than the patent holder |
| Trial Board | Panel of 3 or 5 trial examiners | |
| Trial procedure | As a rule, oral proceedings are held. (This can be changed to documentary deliberations upon request by a party of interest or a participant, or at the Board's discretion) |
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| Sua sponte Proceedings | Sua sponte reasons for invalidation may be included in the trial deliberations by the Trial Board. In exceptional cases, sua sponte examination of evidence or preservation of evidence may be performed. | |
| Request for Correction | The patent holder may file a Request for Correction of the specification or any other part of a patent application. The scope of possible corrections is limited to: correction of clerical/translational errors, clarification of unclear passages, limitation of the claimed scope, and removal of claim dependencies. Correction that expands or changes the scope of the patent is not allowed. | |
| Fees | 49,500 yen + [5,500 yen×number of claims] | 55,000 yen |
| Appeal against the Decision | Both parties are eligible to file an appeal at the Tokyo High Court (Intellectual Property High Court) | |
The proceedings for a patent invalidation trial are, in brief, as follows. When a party files a Request for Trial, a duplicate of the Request will be served to the patent holder and the patent holder will be given a designated period to file a Written Response. The patent holder may also file a Request for Correction during this period. Then, duplicates of the submitted documents will be sent to the requesting party, and the requesting party will be given a further opportunity to file a Written Refutation, or an opportunity to file an Oral Proceedings Statement Brief, if oral proceedings are to be pursued. Oral Proceedings Statement Briefs are submitted by both parties.
There are also cases in which a Notice of Reasons for Invalidation is issued when a new reason for invalidation has been found as a result of a sua sponte examination of a claim at issue, i.e., a claim for which invalidation has been requested. In response to the Notice, both parties are given opportunities to file Written Submissions. The patent holder can also file a Request for Correction within the designated period in such cases.
During Oral Proceedings, both parties make arguments based on the submitted Oral Proceedings Statement Briefs. The number of times that oral proceedings are held depends on the case. However, in most cases, oral proceedings are only held on one occasion. Oral proceedings are open to the public.
When the Trial Board determines that deliberations have reached their conclusion, the Board renders a Decision. If the patent at issue is to be invalidated, or a Request for Correction is to be rejected, an Advance Notice of Trial Decision is issued, and the patent holder is given a further opportunity to file a Request for Correction. On the other hand, if the patent at issue is to be maintained, an Advance Notice of Trial Decision is not issued. In either case, the final Decision is ultimately handed down, and any party who is not satisfied with the Decision can file an Appeal at the Intellectual Property High Court within 30 days from the issuance of the Decision (an additional ninety-day period is allowed for overseas residents).
According to statistics provided by the JPO, the average duration of proceedings in an invalidation trial was 10.5 months in 2016. Further, the number of requests for invalidation trials was generally between 200 and 300 before 2015; however, this number dropped sharply to 140 in 2016, as the patent opposition system started to be more widely utilized.
Summary prepared by International Information Group
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