1 ABE, IKUBO & KATAYAMA 1 Fordham Intellectual Property Law Institute 19 th Annual Conference Intellectual Property Law & Policy April 28-29, 2011 Eiji Katayama 阿部・井窪・片山法律事務 所 ABE, IKUBO&KATAYAMA Patent Law Reform in Japan

2 History Commissioner Suzuki ’ s Leadership to form private committee for reform Committee Report Official Committee for Reform Official Committee Report Draft Amendment of Patent Law s ubmitted to Diet ABE, IKUBO & KATAYAMA

3 Major Points of Committee Report and Amendment of Law Items with * are included in the current draft amendment of law Ⅰ Promotion of Utilization of Patents 1.Reconsideration of License Registration System 2.Exclusive License System 3.Admitting Pledge on Right to Obtain Patent Ⅱ Effective and Proper Resolution of Dispute 1.“ Double Track ” regarding Patent Validity Examination 2.How to treat Retrial based on Invalidation Judgment done through Invalidation Trial after the Final Judgment of Patent Infringement Lawsuit 3.Correction during Patent Invalidation Trial 4.Effect of Decision of Patent Invalidation Trial to the Third Parties 5.Prohibition of Plural Invalidation Trials by Same Person 6.Partial Settlement of Trial Decision and Correction Ⅲ Proper Protection of Rightholder 1.Restriction of Injunctive Right 2.Relief for Usurped Application 3.Evidence Collection and Protective Order in Inventor ’ s Remuneration Suit Ⅳ Promotion of Convenience for Applicants 1.Introduction of Relief to conform with PLT 2.Easier Application for Universities and Researchers 3.Grace Period 4.Reconsideration of Patent Fees * * * * * * * * ABE, IKUBO & KATAYAMA

4 Major Points of Committee Report and Amendment of Law Ⅰ Promotion of Utilization of Patents 1.Reconsideration of License Registration System 2.Exclusive License System 3.Admitting Pledge on Right to Obtain Patent Items with * are included in the current draft amendment of law * ABE, IKUBO & KATAYAMA

5 Farewell to “ License Registration System ” Before Amendment Licensees without registration may not assert their licenses against transferees if a patent is transferred to others. However, very few licenses were registered because of confidentiality of licenses and expensive fees for registering large number of patents. After Amendment Registration System of Non-exclusive License is abolished. Licensees will be protected without registration. Issues Industry wished harmonization. Will the license agreement between the transferor (A) and licensee (L) be effective between the licensee (L) and the transferee (B)? Legal relationship remains unclear. ABE, IKUBO & KATAYAMA A B L

6 1.“ Double Track ” of Patent Validity Examination 2.How to treat Retrial based on Invalidation Judgment done through Invalidation Trial after the Final Judgment of Patent Infringement Lawsuit 3.Correction during Patent Invalidation Trial 4.Effect of Decision of Patent Invalidation Trial to the Third Parties 5.Prohibition of Plural Invalidation Trials by Same Person 6.Partial Settlement of Trial Decision and Correction Ⅱ Effective and Proper Resolution of Dispute * * * Major Points of Committee Report and Amendment of Law Items with * are included in the current draft amendment of law ABE, IKUBO & KATAYAMA

7 Double Track & Change avoiding Retrial Double Track is to be maintained Industry wished to maintain Double Track. Contradiction Contradiction between the two tracks should practically be resolved by IP High Court. However, under the present law, there is a possibility that later invalidation of a patent would reverse the infringement final judgment. This situation will be avoided by amendment of law. ABE, IKUBO & KATAYAMA

8 Correction during Patent Invalidation Trial Present System JPO IP High Court Invalidation Trial Decision Appeal to IP High Court Correction Trial Correction Trial Final Decision Another Invalidation Decision Cancellation Decision of Invalidation Decision Appeal Appeal Decision (90 days)

9 Correction during Patent Invalidation Trial New Law JPO IP High Court Invalidation Trial Appeal Appeal Decision Advance Notice of Trial Decision Correction Request of Claim Correction Trial is prohibited Trial Decision

10 Correction during Patent Invalidation Trial Issues “ Catch Ball ” phenomenon will be avoided. Patentee needs to decide whether to correct claim when “ Advance Notice of Trial Decision ” received. ABE, IKUBO & KATAYAMA

11 Ⅲ Proper Protection of Rightholder 1.Restriction of Injunctive Right 2.Relief for Usurped Application 3.Evidence Collection and Protective Order in Inventor ’ s Remuneration Suit * Major Points of Committee Report and Amendment of Law Items with * are included in the current draft amendment of law ABE, IKUBO & KATAYAMA

12 Restriction of Injunctive Right Issues Whether to restrict injunction right? Opinions were divided. Considering low winning rate of patentees in Japan, majority does not wish to further weaken patent right. Conclusion Restriction was not introduced in amendment. ABE, IKUBO & KATAYAMA

13 Major Points of Committee Report and Amendment of Law 1.Introduction of Relief to conform with PLT 2.Easier Application for Universities and Researchers 3.Grace Period 4.Reconsideration of Patent Fees ABE, IKUBO & KATAYAMA Items with * are included in the current draft amendment of law Ⅳ Promotion of Convenience for Applicants * * *

14 Thank you! Eiji Katayama ABE, IKUBO & KATAYAMA