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

kitano@saegusa-pat.co.jp