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

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Presentation transcript:

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

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 1959 Invalidation trial of Patent Right has been introduced in 1888 Opposition system (pre-grant review) has been introduced in

History of Opposition System in Japan-2 Revised in 1970 Provision of Information (Enforcement regulations) Anyone may provide information before allowance, in order to accelerate examination of the filed application and resolve backlogs. Revised in 1994 From Pre-grant review to Post-grant review, because of fast track granting and international harmonization (*emphasis added)

History of Opposition System in Japan-3 Revised in 2003 PGR been abolished, in order to fast-track trial examination. Revised in 2011 Request for correction in Trial for invalidation of patent right, appeal for correction, etc

Statistics for request of PGR

Statistics for request of Invalidation Trial

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

New PGR to be Introduced in Japan (2)  Based on the draft report of Intellectual Property Policy Committee in Industrial Structure Council Reasons for New PGR- No change Except private interests Eligible Person for filing a PGR- No change Any person Trial examination- Change! Documentary examination in principle Oral examination may be possible!

New PGR to be Introduced in Japan (2) Opinion from an opponent---Change! Submitting comments when the patent is corrected non ［ ne ］ bis in idem Not applied– No Change Term for filing a PGR---No change 6 months from issue date of letters patent

New PGR to be Introduced in Japan (3) Fee Less than the invalidation trial Official fee of invalidation trial = 49, ,500/claim (JP Yen) Time frame: not clear now No discovery system

New PGR to be Introduced in Japan (4)

Practical Tips Term 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

Any Questions? Thank you for your kind attention Ayafune International Patents & Trademarks Fujiko Shibata