Inventive Step in Japan and my personal reflection Dr. Shoichi Okuyama Okuyama & Sasajima AIPPI Japan January 2015 Orlando, Florida 1

Higher Patent Grant Rates in Japan in Recent Years Year% NA Prior to 2002: PR = Patents Granted / Total of Final Disposals Since 2002: PR = Patents Granted / (Final Disposals + Post FA abandonments and withdrawals) IP Basic Act Other events: ・ March 2003, “IP Strategy Headquarters” are set up. ・ April 2005, IP High Court is established. ・ January 2011, what may be called a landmark decision by Judge Iimura, similar to EPO practice. ・ March 2012, Judge Iimura becomes head of IP High Court (retires June 2014). 2

JPO Invalidation Decisions Reversed by High Court 3

Outcomes of appeals against rejection of patent applications at JPO Immediately proceeded to grant OA issued and granted OA issued and rejection maintained Rejection immediately maintained 4

Appeals against rejection by examiners Patent Months for FA Patent: Examiner to Panel Design Number / year Trademark 5

Invalidation Trials end in 8 months average Months till decisionNumber / year Trademark Patent Design 6

JPO Examination is much better for applicants Patent grant rate is considerably UP – much easier to obtain patents Invalidation is more difficult for alleged infringers Also… June 2013, examination guidelines were revised for easier unity requirement Sept. 2011, examination guidelines were revised for restricting support requirement (or JP version of “written disclosure requirement”) 7

If we look back - Pre-TRIPS Era Prior to 1993 Examination guidelines for each technical field E.g. cosmetics, chemical substances (organic and inorganic), alloys, machinery, etc. Inventive step standards were different for each field 8

Examination Guidelines in 1993 General and Coherent Examination Guidelines published in 1993 In anticipation of TRIPS Agreement in 1994 International harmonization English translation was prepared and published almost at the same time Very liberal in terms of inventive step and disclosure requirements 9

Tokyo High Court Started Knocking Down Patents Tokyo High Court started knocking out patents granted under the new Examination Guidelines Tokyo High Court has sole jurisdiction over appeals from the JPO Four divisions in the Tokyo High Court and the current IP High Court Each division has four or five judges Head of each division has strong influence If the JPO finds a patent valid, it was more likely for the Tokyo High Court to reverse it The JPO changed its Examination Guidelines in 2000 to adopt tougher standards 10

Changes of Attitude at the High Court Intellectual Property Basic Law in 2002 Importance of IP protection was recognized IP Strategic Headquarters were set up under Prime Minister in 2003 IP High Court was established April 2005 It is simply a reorganization of the four IP divisions of the Tokyo High Court Not a new court, but given certain autonomy In 2006, Judge Iimura came back to the IP High Court after a two-year appointment as head of a local district court 11

Judge Toshiaki Iimura Under the leadership of Judge Iimura, he and other judges started lowering the level of inventive step by restructuring standards TMS – teaching, motivation or suggestion is required for combing prior art documents Problems solution approach and could-would approach Complete reversal of trends Now if the JPO finds a patent invalid, the IP High Court likely reverse We talk the same language – U.S., EPO, Japan The JPO is currently revising its Guidelines in their entirety Inventive step in Japan is becoming low compared with several years ago He retired from the IP High Court as of June 2014 and now with Yuasa & Hara 12

HOWEVER 13

Annual Patent Filings at IP5 Patent Offices 14

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Number of IP lawsuits 16

% Losses of Patentees at District Courts in Japan Patent infringement lawsuits only 17

What do we do now? Further changes are required toward more effective patent protection New plans are now cooking – more report in April? 18

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