1. Yoshiki KITANO JPAA International Activities Center AIPLA Annual Meeting, 2014 IP Practice in Japan Committee Pre-Meeting Seminar Post-Grant Opposition Projected Revisions of Patent Examination Guidelines Patent Examination Quality Policy JPO Updates:

2. Post-Grant Opposition Will Be Reintroduced

3. Old Opposition Old post-grant oppositions ended in 2003 –No chance for opponents to participate –Maintained patents were challenged in invalidation trials –JPO had a large backlog of unexamined applications 3

4. 4 Old Opposition Cases Oppositions Invalidation trials Source: Japan Patent Office; Annual Report 2014

5. 5 OppositionInvalidation Trial Third-Party Observation When Within 6 months from grant 1 After grant 1 Anytime RequesterAnyoneInterested party 2 Anyone AnonymousNo Yes Oral Proceedings NoYesNo Opposition and Other Systems 1 The date of publication in the Official Gazette for Patents 2 After the effective date of the amended law

6. 6 OppositionInvalidation Trial Third-Party Observation Requester’s Participation Only when a claim is corrected 3 Yes (Inter Partes) No Appeal Only Patentee To IP high court 4 Yes To IP high court No 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 4 Appeal is against the Japan Patent Office, not opponent 3 Not when the panel finds it unnecessary to hear arguments from the opponent

7. 7 OppositionInvalidation Trial Third-Party Observation Industrial ApplicabilityYes NoveltyYes Inventive StepYes Double PatentYes EnablementYes SupportYes New MatterYes Violation of CorrectionYes Violation of Joint Application Yes DerivationYes Opposition and Other Systems

8. 8 OppositionInvalidation Trial Third-Party Observation Advantages No restriction on requesters Relatively less expensive Less restricted 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

9. 9 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. Opposition Basic Flow 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

10. 10 To Be Announced Effective date: –Most likely April 1, 2015 –Patents granted on or after the effective date will be subject to oppositions –The interested party requirement for invalidation trials would likely be imposed on filings on or after the effective date, regardless of the issue date of patents Detailed rules –Translation of foreign-language evidence –Level of interest required for filing an invalidation trial

11. 11 Projected Revisions of Patent Examination Guidelines

12. 12 Projected Revisions of Patent Examination Guidelines JPO is considering revising the patent examination guidelines for the following purposes: 1.Concise and clear for the purpose of being easily readable by both Examiners and Applicants, and also easily translated into foreign languages 2.Provide more examples and case laws as needed –Examples without technical field bias –Examples of cutting-edge technology –New case laws

13. 13 3.Harmonize with international standards –Create separate guidelines for the provisions that foreign offices provide (e.g., grace period, public order and morality requirement) –Substantial revisions, if considered, will take into consideration international harmonization  Schedule: 2015/7-8 Open draft revisions for public comments 2015/10 Release revised guidelines Guidelines for patent term extension –Cell sheets as a regenerative medicine become eligible Public comments before Nov. 6, 2014 (http://www.jpo.go.jp/iken_e/pharmaceutical_141008.htm) Projected Revisions of Patent Examination Guidelines

14. 14 Patent Examination Quality Policy

15. 15 Patent Examination Quality Policy 1.Grant robust, broad, and valuable patents –Robust: will not be invalidated –Broad: scope matching the technical levels (or the degree of contribution to the prior art) of the invention, as well as of the disclosure –Valuable: recognized as valid by foreign patent offices 2.Meet wide-ranging needs and expectations –Communicate with applicants in a positive manner –Revised Examiner-Interview Guidelines (2014/10/01): Examiners agree to interview requests at least once Examiners should indicate whether proposed amendments overcome rejections Interviews through TV conference system are available for overseas applicants

16. 16 3.Contribute to improving the quality of patent examinations globally –Provide examination results to foreign patent offices –Examine while keeping in mind that the results will be used by foreign offices 4.Continually improve operations –More sampling of office actions for quality control –Analyze examination results of foreign offices when different from JPO’s –Consult with other examiners when examining applications that meet predetermined conditions Link to JPO’s policy announcement: http://www.jpo.go.jp/seido_e/s_gaiyou_e/patent_policy.htm Patent Examination Quality Policy

17. Thank you for your kind attention! Any questions? Yoshiki KITANO Saegusa & Partners kitano@saegusa-pat.co.jp