IP PRACTICE IN JAPAN PREMEETING AIPLA Mid-Winter Institute Las Vegas, NV January 22-23, 2012 Shigeyuki Nagaoka, JPAA

Correction Trial & Exception of "Group of Claims" 2

・ What is Correction Trial? ・ Background & Underlying Issues ・ Key Provisions & Group of Claims ・ Practical Tips 3

WHAT IS CORRECTION TRIAL? Tool for amending patent claims, specification and drawings after grant (Art. 126) JPO Appeal Board handles Correction Trial Similar to Reissue Patent In US 4

WHAT IS CORRECTION TRIAL? Art. 126(1) – Patentee may request Correction Trial to amend specification, claims or drawings Art. 126(2) – Correction Trial may not be filed from filing of Invalidation Trial in JPO until Invalidation Decision is finalized 5

BACKGROUND & UNDERLYING ISSUES Claims are examined as-a-whole – Appeal against Examiner’s Refusal (Art. 121) – Appeal Board makes decision as-a-whole If claim 1 is NG and claim 2 is OK, Appeal Board makes single negative decision This Japan practice is different from the US 6

BACKGROUND & UNDERLYING ISSUES Exception to “as-a-whole” basis is explicitly stipulated in Patent Law – Invalidation Trial (Art. 123 (1)) Court Decisions –Decision is made claim by claim – e.g. Claim 1 is invalid but claim 2 is valid 7

BACKGROUND & UNDERLYING ISSUES If handled on “claim by claim” basis in Correction Trial Corrections to claims 1 and 3 are allowed Correction to claim 2 is dismissed PATENT CLAIMS Claim 1 Claim 2 Claim 3 CLAIMS ON TRIAL Claim 1' OK Claim 2' NG Claim 3' OK TRIAL DECISION Claim 1' Claim 2 Claim 3' 8

BACKGROUND & UNDERLYING ISSUES If handled on “as-a-whole” basis Corrections to claims 1 and 3 are not allowed All or Nothing PATENT CLAIMS Claim 1 Claim 2 Claim 3 CLAIMS ON TRIAL Claim 1' OK Claim 2' NG Claim 3' OK TRIAL DECISION Claim 1 Claim 2 Claim 3 9

BACKGROUND & UNDERLYING ISSUES No provisions stipulate that Correction Trial may be filed claim by claim although Invalidation Trial may be filed claim by claim Supreme Court Decision in 2008 (LED Module Case) Nevertheless, claims having certain relationship should be handled together 10

BACKGROUND & UNDERLYING ISSUES Claims Having Certain Relationship Example: When claim 2 depends from claim 1 Claim 2 returns to before-correction under current practice Claim 2 illogically depends from claim 1 Claims 1 and 2 should be handled as group PATENT CLAIMS Claim 1 = A Claim 2 = A + B CLAIMS ON TRIAL Claim 1' = a OK Claim 2' = a + b NG TRIAL DECISION Claim 1' = a Claim 2 = A + B 11

KEY PROVISIONS & GROUP OF CLAIMS New provision allowing patentee to file Correction Trial on claim-by-claim basis (Art. 126(3) 1st sentence ) New provision prohibiting Correction Trial on claim-by-claim basis when claims define “group of claims” (Art. 126(3) 2nd sentence) Definition of “group of claims” is set forth in Art. 126(3) and Rule 46bis(1)-(4) 12

KEY PROVISIONS & GROUP OF CLAIMS Handled on “group of claims" basis All claims 1-3 return to before-correction because claim 2’ is in bad shape and claims 1-3 should be kept together PATENT CLAIMS Claim 1 = A Claim 2 = A + B Claim 3 = A + C CLAIMS ON TRIAL Claim 1' = a OK Claim 2' = a + b NG Claim 3' = a + c OK TRIAL DECISION Claim 1 = A Claim 2 = A + B Claim 3 = A + C

KEY PROVISIONS & GROUP OF CLAIMS Art. 126(3) –If one claim (e.g. claim 2) depends from another claim (e.g. claim 1), then these claims define group of claims Claim 1 Claim 2 depends from claim 1 14

KEY PROVISIONS & GROUP OF CLAIMS Rule 46bis(1) –If one or more claims (e.g. claim 3) depend from another claim (e.g. claim 2) that already depends from still another claim (e.g. claim 1), then these claims define group of claims Claim 1 Claim 2 depends from claim 1 Claim 3 depends from claim 2 15

KEY PROVISIONS & GROUP OF CLAIMS Rule 46bis(2) –If multiple claims (e.g. claims 2 and 3) depend from one claim (e.g. claim 1), then these claims define group of claims Claim 1 Claim 2 depends from claim 1 Claim 3 depends from claim 1 16

KEY PROVISIONS & GROUP OF CLA IMS Rule 46bis(3) –If one claim (e.g. claim 3) depends from multiple claims (e.g. claims 1 and 2), then these claims define group of claims Claim 1 Claim 2 Claim 3 depends from claim 1 or 2 17

KEY PROVISIONS & GROUP OF CLAIMS Rule 46bis(4) –If one claim (claim 2) depends from another claim (claim 1) and other claims (claims 3-5) have relationship of §46bis(1), (2) or (3), then these claims (claims 1-5) define group of claims when any claim (claim 3) in those having relationship of §46bis(1), (2) or (3) depends from said one claim (claim 2) or said another claim (claim 1); or Claim 1 Claim 2 depends from claim 1 Claim 3 depends from claim 1 Claim 4 depends from claim 3 Claim 5 depends from claim 4

KEY PROVISIONS & GROUP OF CLAIMS Rule 46bis(4) cont'd –If there are one group of claims (claims 1-3) and another group of claims (claims 4-6) each having relationship of §46bis(1), (2) or (3), then these groups of claims (claims 1-6) define combined group of claims when any claim (claim 4) in said another group of claims depends from any claim (claim 1) in said one group of claims Claim 1 Claim 2 depends from claim 1 Claim 3 depends from claim 2 Claim 4 depends from claim 1 Claim 5 depends from claim 4 Claim 6 depends from claim 5

PRACTICAL TIPS Make sure which claims define “group of claims” –You have to file Correction Trial for all of those claims which belong to particular group of claims (Art. 126(4)) 20

PRACTICAL TIPS New provision Art. 126(1)(iv) allows you to disengage one or more claims from “group of claims” Claims 1-3 make no longer group of claims! This is very confusing! Claim 1 Claim 2 depends from claim 1 Claim 3 depends from claim 2 Claim 1 independent claim Claim 2 independent claim Claim 3 independent claim 21

PRACTICAL TIPS When you make corrections to specification or drawings, make sure all relevant claims are corrected at same time (Art. 126(4)) Claim 2 must be included in Correction Trial Request if claim 2 depends from claim 1 Correction Trial Request To correct particular term in specification To correct that term in claim 1 22

Arigato Gozaimashita Shigeyuki Nagaoka Japan Patent Attorneys Association 23