1. Current Situation of JP Patent based on Statistics (from view point of attacking pending and granted patents) Nobuo Sekine Japan Patent Attorneys Association International Activities Center AIPLA Mid-Winter Institute January 26-27, 2016 AIPLA Mid-Winter Institute 20161

2. Disclaimer The views expressed in this presentation are those of the author and do not necessarily reflect the views of JPAA or the author’s firm. This presentation is for general informational purposes only and should not be taken as legal advice. AIPLA Mid-Winter Institute 20162

3. (Source)Japan Patent Office Annual Report 2014 Pro-Patent JPO states that they are working for: Speedy Examination and Stable Patent Right. AIPLA Mid-Winter Institute 20163

4. Speedy! Months before first office action *Under expedited examination procedure, First Office Action is issued in about two months from filing request for expedited examination (2013). AIPLA Mid-Winter Institute 20164

5. High patent grant rate! Patent Grant Rate* Patent Grant Rate* = Number of Patent Grants/ (Number of Patent Grants + Number of Final Rejections + Number of Patent Applications Withdrawn or Abandoned after First Office Action ） AIPLA Mid-Winter Institute 20165

6. Stable! Patent Maintained Rate* in Invalidation Trial Decision Patent Maintained Rate* = Number of Trial Decisions maintaining ALL claims / (Number of Trial Decisions maintaining ALL claims + Number of Trial Decisions invalidating at least one claim) AIPLA Mid-Winter Institute 20166

7. Conclusion … Good time for patent applicant / owner! AIPLA Mid-Winter Institute 20167

8. … so, how we can fight against speedy patent granting and stable patent right? AIPLA Mid-Winter Institute 20168

9. Ways to Prevent Patent Granting / Invalidate Patent 1. Third Party Observation 2. Opposition 3. Invalidation Trial AIPLA Mid-Winter Institute 20169

10. Relationship (Timing) 2. Opposition 1. Third-party Observation Publication of Patent Gazette 6mon. Filing of Application Expiration of Patent 3. Invalidation Trial Patent Exists Examination AIPLA Mid-Winter Institute 201610

11. Third Party Observation OppositionInvalid. Trial Who can file Anyone (Anonymous filing allowable) Anyone (Strawman allowable) Party having interest TimingAnytimeWithin 6 months after issuance of patent Anytime Oral ProceduresNo Yes AppealabilityNoOnly to Decision for Revocation (Patentee) Appealable Both to Decisions for and against Validity Prohibition of Double Jeopardy No Yes Official feeFree\16,500 ($138) + claim number x \2,400 ($20) \49,500 ($413) + claim number x \5,500 ($46) Relationship (Summary) 1$=\120 AIPLA Mid-Winter Institute 201611

12. 1. Third Party Observation AIPLA Mid-Winter Institute 201612

13. (Source)Japan Patent Office Annual Report 2015 6000 to 7000 filings / year AIPLA Mid-Winter Institute 201613

14. Pros. - No Official Fees - Can be submitted anonymously - Can be submitted anytime during pendency of application and existence of patent - Detailed explanation can be submitted along with prior art references - Submitted prior art references are used by Examiner in 73% of applications Cons. - Third party cannot join examination procedure - Applicant know third party is interested in the application at issue (and can file many divisional applications, etc.) AIPLA Mid-Winter Institute 201614

15. 2. Opposition AIPLA Mid-Winter Institute 201615

16. Invalidation trials Oppositions 1000 0 7000 6000 5000 4000 3000 2000 ‘96‘97‘98‘99‘00‘01‘02‘03‘04‘05‘06‘07‘08‘09‘10‘11‘12‘13 Abolition of Old Opposition system temporarily increased by about 100 History ‘14‘15‘16 Introduction of New Opposition system 300? 1000? AIPLA Mid-Winter Institute 201616 About 200 to 300 cases/year

17. Pros. - Low Official Fees (\16,500 ($138) + claim number x \2,400 ($20)) - Can be submitted as a strawman Cons. - Third party cannot join examination procedure - Can be submitted within 6 months from publication of patent gazette ??? - Success Rate - Period of Procedure (Similar to Invalidation Trial?) AIPLA Mid-Winter Institute 201617

18. 3. Invalidation Trial AIPLA Mid-Winter Institute 201618

19. Pros. - Low Official Fees (\49,500 ($413) + claim number x \5,500 ($46)) - Can be submitted anytime after patent grant - Very Speedy (9.2 months according to JPO* (?)) Cons. - High patent maintained rate (Slide 6) *(Source)Japan Patent Office Annual Report 2015 AIPLA Mid-Winter Institute 201619

20. Speedy Trial Examination (“9.2 months”) ? *(Source)Japan Patent Office Annual Report 2015 JPO states … An “Advance Notice” is issued if the trial examiners intend to invalidate at least one claim of the patent at issue, and the patentee can file an amendment in response to the notice. The “9.2 months” period is the time period from filing of a demand for Invalidation Trial to final decision (trial decision / dismissal) (note that it is the time period from filing of a demand for Invalidation Trial to an “advance notice”, if any) AIPLA Mid-Winter Institute 201620

21. Ave. = 16 months Duration of Invalidation Trial Examination (Decision of 2014 to 2015) AIPLA Mid-Winter Institute 201621

22. Ave. = 19 months Duration of Invalidation Trial Examination (Decision of 2014 to 2015) (Invalidated) AIPLA Mid-Winter Institute 201622

23. Conclusions: - On average, 2 to 3 years are required to invalidate a JP patent by way of an Invalidation Trial (19 months for Invalidation Trial + 6 to 18 months for Appeal in IP High Court). This period may become as long as 5 years. - An Opposition can be filed as a strawman, and may require less time than an Invalidation Trial in order to invalidate a JP Patent - A Third Party Observation can be filed anonymously - Opposition and Third Party Observation can be used as a precautionary measure AIPLA Mid-Winter Institute 201623

24. Nobuo Sekine nsekine@seiwapat.co.jp Seiwa Patent & Law Thank you for your attention AIPLA Mid-Winter Institute 201624