Takeo Nasu JPAA International Activities Center AIPLA 2015 Mid-Winter Institute IP Practice in Japan Committee Pre-Meeting Seminar Updates of Post Grant Proceedings

New Post-Grant Proceedings are Coming SOON!

Timeline for the New Post Grant Proceedings May 14, 2014: Amendment promulgated December 18, 2014: Guidelines proposed January 16, 2015: Public Comments Deadline May 14, 2015 Effective Date (likely April 1, 2015)

Proposed Guidelines  Interested Parties Guideline for Invalidation Trial  Opposition Operation Guideline

5 New Post-Grant Proceedings Invalidation Trial Only –Anyone can be a petitioner –Great burden for petitioner (Oral Hearing) Invalidation Trial –Oral Hearing –Interested parties only Opposition –No Oral Hearing –Anyone can be a petitioner

6 Interested Parties (1)Procedures for Interested Parties Determination  No examination of interested party status if the patentee does not dispute the interested party’s status  If the interested party status is clear to the Appeal Board, the Appeal Board proceeds with the examination without an explanation from the interested party  If the interested party status is NOT clear to the Appeal Boart, the Appeal Board will ask the interested party for an explanation

7 Interested Parties (2) Interested Parties –Person whose legal interests or the status of his/her rights would be affected by the patent

8 Interested Parties  Interested Party Precedents 1.A person who works/worked an invention which is identified to the patented invention 2.A person who may work the patented invention in the future a.A person who works an invention similar to the patented invention b.A person who prepares to work the patented Invention (e.g. purchasing necessary machinery or materials or starting to build/design an equipment) c.A person who has an equipment to work the patented invention 3.A person who engages in the business of making, selling, or using a product or method which is of the same type as a product or a method of the patent 4.A Person who is an exclusive/non-exclusive licensee 5.A person who is/was in litigation for the patent or received warnings 6.A person who has a right to be granted a patent for the patented invention

9 Interested Parties  Interested Parties designated by JPO a)A patentee or an exclusive/non-exclusive licensee of a patented invention which is within the scope of other’s patent b)University or university researchers who conduct research/development jointly with business if there is a legal benefit for the businesses to demand a trial to invalidate the subject patent c)A parent company and a subsidiary are treated as interested parties to each other d)A person who makes or sells a finished product which is an aggregate of a product of the subject patent and another product of the same type

10 Interested Parties  Opponent whose opposition was not successful –NOT treated as Interested parties because he filed the opposition –Needs to have other interests

11 Proposed Opposition Operation Guideline (1) Joinder of Requests (2) Notification of Reason for Revocation (3) Opponent’s Reply (4) Notification of Reasons for Revocation (Advance Notice of the Decision to Revoke) (5) Decision (6) Relationship with Invalidation Trial (7) Relationship with Correction Trial

12 Opponent No Appeal Available Japan Patent OfficePatentee Appeal Against Decision to Revoke the Patent Written Arguments/ Request for Amendment Examination by Documentary Proceedings Copy of Request for Amendment, etc. Opposition Flow Chart Notification of Reasons for Revocation Grant of Patent Copy of Decision to Maintain/ Revoke the Patent Copy of the Notice of Opposition Submission of Reply Notice of Opposition Written Arguments/ Request for Amendment Notification of Reasons for Revocation (Advance Notice) 6 months from grant*1 1 The date of publication in the Official Gazette for Patents

13 Opponent No Appeal Available Japan Patent OfficePatentee Appeal Against Decision to Revoke the Patent Written Arguments/ Request for Amendment Examination by Documentary Proceedings Copy of Request for Amendment, etc. (1) Joinder of Requests Notification of Reasons for Revocation Grant of Patent Copy of Decision to Maintain/ Revoke the Patent Copy of the Notice of Opposition Submission of Reply Notice of Opposition Written Arguments/ Request for Amendment Notification of Reasons for Revocation (Advance Notice) (1) Joinder of Requests

14 (1) Joinder of Requests When Two or More Oppositions are Filed  Jointly examined  Exceptions If Joinder would cause difficulties/significant delays No joinder Request for acceleration filed before 6 months after the grant Examination starts before 6 months have passed

15 Opponent No Appeal Available Japan Patent OfficePatentee Appeal Against Decision to Revoke the Patent Written Arguments/ Request for Amendment Examination by Documentary Proceedings Copy of Request for Amendment, etc. (2) Notification of Reasons for Revocation Notification of Reasons for Revocation Grant of Patent Copy of Decision to Maintain/ Revoke the Patent Copy of the Notice of Opposition Submission of Reply Notice of Opposition Written Arguments/ Request for Amendment Notification of Reasons for Revocation (Advance Notice) (2) Notification of Reasons for Revocation

16 The Appeal Board  Examines all reasons by all Opponents  Notifies all reasons for revocation Term for response: 60 days (90 days for patentee residing outside of Japan) (2) Notification of Reasons for Revocation

17 Opponent No Appeal Available Japan Patent OfficePatentee Appeal Against Decision to Revoke the Patent Written Arguments/ Request for Amendment Examination by Documentary Proceedings Copy of Request for Amendment, etc. (3) Opponent’s Reply Notification of Reasons for Revocation Grant of Patent Copy of Decision to Maintain/ Revoke the Patent Copy of the Notice of Opposition Submission of Reply Notice of Opposition (3) Opponent’s Reply Written Arguments/ Request for Amendment Notification of Reasons for Revocation (Advance Notice)

18  When the patentee files a request for amendment, the opponent can submit a reply  Deadline for submission: 30 days (50 days for an opponent residing outside Japan)  Exceptions When the amendment would not have significant effect on the decision ①Amendment not meeting requirements ②Minor correction (e.g. typos) ③Cancelation of claim ④Amendment of claim not in Issue (3) Opponent’s Reply

19 Opponent No Appeal Available Japan Patent OfficePatentee Appeal Against Decision to Revoke the Patent Written Arguments/ Request for Amendment Examination by Documentary Proceedings Copy of Request for Amendment, etc. (4) Notification of Reasons for Revocation (Advance Notice to Revoke the Patent) Notification of Reasons for Revocation Grant of Patent Copy of Decision to Maintain/ Revoke the Patent Copy of the Notice of Opposition Submission of Reply Notice of Opposition Written Arguments/ Request for Amendment Notification of Reasons for Revocation (Advance Notice) (4) Advance Notice to Revoke the patent

20  Before a decision to revoke the patent is issued Final opportunity to amend claims  Deadline for Response: 60 days (90 days if residing outside of Japan)  Exceptions No response to previous notification Patentee indicated that he/she does not want to receive an advance notice (4) Notification of Reasons for Revocation (Advance Notice to Revoke the Patent)

21  When claim amendment is filed Opportunity for the opponent to submit a written argument  Exceptions ①Amendment not meeting requirements ②Minor correction (e.g., typos) ③Cancelation of claim ④Amendment of claim which has not been opposed ⑤When Appeal Board decided to revoke the patent ⑥When Appeal Board decided to maintain the patent without doubt (4) Notification of Reasons for Revocation (Advance Notice to Revoke the Patent)

22 Opponent No Appeal Available Japan Patent OfficePatentee Appeal Against Decision to Revoke the Patent Written Arguments/ Request for Correction Examination by Documentary Proceedings Copy of Request for Correction, etc. (5) Decision Notification of Reasons for Revocation Notification of Violation of Correction Grant of Patent Copy of Decision to Maintain/ Revoke the Patent Copy of the Notice of Opposition Written Arguments Submission of Reply Notice of Opposition (5) Decision Written Arguments/ Request for Correction Notification of Reasons for Revocation (Advance Notice)

23  Decision to Revoke Sets for the all revocation reasons Cannot use any reason which was not listed in Notification of Reasons for Revocation (or Advance Notice to revoke)  Decision to Maintain Sets forth the reasons why the patent is maintained (5) Decision

24  When both an Opposition and an invalidation trial are pending Proceed with the invalidation trial Stay opposition  Exceptions If the examination for the opposition has already started and a decision can be issued early on If the evidence related to the opposition is clearly stronger than the evidence related to the Invalidation Trial, and if examining the opposition first would resolve the patent dispute sooner (6) Relationship with Invalidation Trial

25  When both an Opposition and a Correction Trial are pending Proceed with the Opposition Stay the Correction Trial (7) Relationship with Correction Trial

26 Opposition Outcomes

27 OppositionInvalidation Trial Third-Party Submission AnonymousNo Yes Requester’s Participation Only when a claim is amended 3 Yes (Inter Partes) No Oral HearingNoYesNo Official Fees \16,500 + \2,400/cl. (approx. $152 + $22/cl.) \49,500 + \5,500/cl. (approx. $458 + $51/cl.) Free Opposition and Other Systems 3 Not when the panel finds it unnecessary to hear the arguments from the opponent

Actual Dispute If there is an actual dispute related to a patent such as a negative outcome of a negotiation or if you are sued by the patentee Invalidation Trial Potential Dispute If you have a concern about a patent, but it is not clear whether the patent will actually affect your business in the future Opposition Lowest Cost If you have a small concern, but do not want to spend a lot of money 3 rd Party Submission 28 Opposition and Other Systems

Thank you for your kind attention! Any questions? Takeo Nasu Nakamura & Partners

30 OppositionInvalidation Trial Third-Party Submission When Within 6 months from grant 1 After grant 1 Anytime RequesterAnyoneInterested party 2 Anyone AnonymousNo Yes Oral Proceedings NoYesNo Appendix Opposition and Other Systems 1 The date of publication in the Official Gazette for Patents 2 After the effective date of the amended statute

31 OppositionInvalidation Trial Third-Party Submission Industrial ApplicabilityYes NoveltyYes Inventive StepYes Double PatentYes EnablementYes SupportYes New MatterYes Violation of CorrectionNoYes Violation of Joint Application NoYesNo DerivationNoYesNo Appendix Opposition and Other Systems

32 Appendix Opposition and Other Systems OppositionInvalidation Trial Third-Party Submission Advantages No restriction on requesters Relatively less expensive More time for filing Requester’s active participation No restriction on requesters Anonymous filing Low cost No time limit Disadvantages Limited time for filing Limited participation of requesters Restriction on requesters Relatively expensive No participation of third parties