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Yoshiki KITANOJPAA International Activities Center
AIPLA Annual Meeting, 2014IP Practice in Japan Committee Pre-Meeting Seminar
•Post-Grant Opposition•Projected Revisions of Patent Examination
Guidelines •Patent Examination Quality Policy
JPO Updates:
Post-Grant OppositionWill Be Reintroduced
Old Opposition
• Old post-grant oppositions ended in 2003– No chance for opponents to participate– Maintained patents were challenged in
invalidation trials– JPO had a large backlog of unexamined
applications
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Old OppositionCases
Oppositions
Invalidation trials
Source: Japan Patent Office; Annual Report 2014
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Opposition Invalidation Trial Third-Party Observation
When Within 6 months from grant1 After grant1 Anytime
Requester Anyone Interested party2 Anyone
Anonymous No No Yes
Oral Proceedings No Yes No
Opposition and Other Systems
1The date of publication in the Official Gazette for Patents
2After the effective date of the amended law
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Opposition Invalidation Trial Third-Party Observation
Requester’s Participation
Only when a claim is corrected3
Yes (Inter Partes)
No
AppealOnly Patentee
To IP high court4
YesTo IP high court
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
4Appeal is against the Japan Patent Office, not opponent
3Not when the panel finds it unnecessary to hear arguments from the opponent
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Opposition Invalidation Trial Third-Party Observation
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 Yes Yes
Violation of Joint Application Yes
Derivation Yes
Opposition and Other Systems
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Opposition and Other Systems
Opposition Invalidation Trial Third-Party Observation
Advantages
•No restriction on requesters•Relatively less expensive
•Less restricted 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
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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.
Opposition Basic Flow
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
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To Be Announced
• Effective date:– Most likely April 1, 2015– Patents granted on or after the effective date will be
subject to oppositions– The interested party requirement for invalidation trials
would likely be imposed on filings on or after the effective date, regardless of the issue date of patents
• Detailed rules– Translation of foreign-language evidence– Level of interest required for filing an invalidation trial
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Projected Revisions of Patent Examination Guidelines
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Projected Revisions of Patent Examination Guidelines
• JPO is considering revising the patent examination guidelines for the following purposes:
1. Concise and clear for the purpose of being easily readable by both Examiners and Applicants, and also easily translated into foreign languages
2. Provide more examples and case laws as needed– Examples without technical field bias– Examples of cutting-edge technology– New case laws
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3. Harmonize with international standards– Create separate guidelines for the provisions that foreign offices
provide (e.g., grace period, public order and morality requirement) – Substantial revisions, if considered, will take into consideration
international harmonization
Schedule: 2015/7-8 Open draft revisions for public comments 2015/10 Release revised guidelines
• Guidelines for patent term extension– Cell sheets as a regenerative medicine become eligible
• Public comments before Nov. 6, 2014 (http://www.jpo.go.jp/iken_e/pharmaceutical_141008.htm)
Projected Revisions of Patent Examination Guidelines
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Patent Examination Quality Policy
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Patent Examination Quality Policy1. Grant robust, broad, and valuable patents
– Robust: will not be invalidated – Broad: scope matching the technical levels (or the degree of
contribution to the prior art) of the invention, as well as of the disclosure
– Valuable: recognized as valid by foreign patent offices
2. Meet wide-ranging needs and expectations– Communicate with applicants in a positive manner– Revised Examiner-Interview Guidelines (2014/10/01):
• Examiners agree to interview requests at least once• Examiners should indicate whether proposed amendments overcome
rejections• Interviews through TV conference system are available for overseas
applicants
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3. Contribute to improving the quality of patent examinations globally
– Provide examination results to foreign patent offices– Examine while keeping in mind that the results will be used by
foreign offices
4. Continually improve operations– More sampling of office actions for quality control– Analyze examination results of foreign offices when different from
JPO’s– Consult with other examiners when examining applications that
meet predetermined conditions
Link to JPO’s policy announcement:http://www.jpo.go.jp/seido_e/s_gaiyou_e/patent_policy.htm
Patent Examination Quality Policy
Thank you for your kind attention!
Any questions?
Yoshiki KITANOSaegusa & Partners
