Post Grant Review to be introduced in Japan JPAA International Activities Center Fujiko Shibata January 29, 2013 AIPLA Mid-Winter Institute IP Practice.

Post Grant Review to be introduced in Japan

JPAA International Activities CenterFujiko Shibata

January 29, 2013

AIPLA Mid-Winter InstituteIP Practice in Japan Committee Pre-Meeting Seminar

Contents

History of Opposition system in Japan

Statistics & Former PGR System in Japan

PGR to be introduced in Japan

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History of Opposition System in Japan-1

Japanese patent Law has been revised in 1959

(Enforcement Law of the Patent Act (Act No. 122 of April 13, 1959)Before 1958, Law of the Patent Act (1921)

Before 1959Invalidation trial of Patent Right has been introduced in

1888Opposition system (pre-grant review) has been

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History of Opposition System in Japan-2

Revised in 1970Provision of Information (Enforcement regulations)

Anyone may provide information before allowance, in order to accelerate examination of the filed application and resolve backlogs.

Revised in 1994From Pre-grant review to Post-grant review,

because of fast track granting and international harmonization.

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(*emphasis added)

History of Opposition System in Japan-3

Revised in 2003PGR been abolished, in order to fast-track trial

examination.

Revised in 2011Request for correction in Trial for invalidation of

patent right, appeal for correction, etc.

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Statistics for request of PGR-1

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Statistics for request of Invalidation Trial

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New PGR to be Introduced in Japan (1)

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Reasons for Past PGR Lacking Novelty (Article 29(1), 29bis)Inventive step (Article 29(2)) Written description Requirements (Article 36(4), (6))No addition of New matter (Article 17bis(3))Claimed invention is not including original foreign application

New PGR to be Introduced in Japan (2)

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Based on the draft report of Intellectual Property Policy Committee in Industrial Structure Council

Reasons for New PGR- No changeExcept private interests

Eligible Person for filing a PGR- No changeAny person

Trial examination- Change!Documentary examination in principleOral examination may be possible!

New PGR to be Introduced in Japan (2)

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Opinion from an opponent---Change!Submitting comments when the patent is corrected

non ［ ne ］ bis in idemNot applied– No Change

Term for filing a PGR---No change6 months from issue date of letters patent

New PGR to be Introduced in Japan (3)

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FeeLess than the invalidation trialOfficial fee of invalidation trial = 49,500 + 5,500/claim (JP Yen)

Time frame: not clear now

No discovery system

New PGR to be Introduced in Japan (4)

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Practical TipsTerm for submitting request is short---6 M

If you submit English documents in evidence, Japanese translations are necessary

Please instruct as early as possible!

Official Fee is not expensive

Non [ne] bis in idem is not applied—two chances

Patent holder must be careful

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Any Questions?

Thank you for your kind attention

Ayafune International Patents & Trademarks

Fujiko Shibata

[email protected]

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