1 abe, ikubo & katayama 1 fordham intellectual property law institute 19 th annual conference...
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1ABE, IKUBO & KATAYAMA
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Fordham Intellectual Property Law Institute19th Annual Conference
Intellectual Property Law & PolicyApril 28-29, 2011
Eiji Katayama
阿部・井窪・片山法律事務所
ABE, IKUBO&KATAYAMA
Patent Law Reform in Japan
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History
2009.1
2009.12
2010.4
2011.2
2011.3
Commissioner Suzuki’s Leadership to form private committee for reform
Committee Report
Official Committee for Reform
Official Committee Report
Draft Amendment of Patent Law submitted to Diet
ABE, IKUBO & KATAYAMA
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Major Points of Committee Report and Amendment of LawItems with * are included in the current draft amendment of lawⅠ Promotion of Utilization of Patents
1. Reconsideration of License Registration System2. Exclusive License System3. Admitting Pledge on Right to Obtain Patent
ⅡEffective and Proper Resolution of Dispute1. “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 Lawsuit3. Correction during Patent Invalidation Trial4. Effect of Decision of Patent Invalidation Trial to the Third Parties 5. Prohibition of Plural Invalidation Trials by Same Person6. Partial Settlement of Trial Decision and Correction
Ⅲ Proper Protection of Rightholder1. Restriction of Injunctive Right2. Relief for Usurped Application 3. Evidence Collection and Protective Order in Inventor’s Remuneration Suit
Ⅳ Promotion of Convenience for Applicants1. Introduction of Relief to conform with PLT2. Easier Application for Universities and Researchers 3. Grace Period4. Reconsideration of Patent Fees
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ABE, IKUBO & KATAYAMA
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Major Points of Committee Report and Amendment of Law
Ⅰ Promotion of Utilization of Patents
1. Reconsideration of License Registration System2. Exclusive License System3. Admitting Pledge on Right to Obtain Patent
Items with * are included in the current draft amendment of law
*
ABE, IKUBO & KATAYAMA
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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
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1. “Double Track” of Patent Validity Examination2. 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 Trial4. Effect of Decision of Patent Invalidation Trial to the
Third Parties5. Prohibition of Plural Invalidation Trials by Same
Person6. Partial Settlement of Trial Decision and Correction
ⅡEffective and Proper Resolution of Dispute
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Major Points of Committee Report and Amendment of Law
Items with * are included in the current draft amendment of law
ABE, IKUBO & KATAYAMA
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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
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Correction during Patent Invalidation Trial Present System
JPOIP 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)
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Correction during Patent Invalidation Trial New Law
JPO IP High CourtInvalidation
Trial
Appeal
Appeal Decision
Advance Notice of Trial Decision
Correction Request of Claim
Correction Trial is prohibited
Trial Decision
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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
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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
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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
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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 Period4. Reconsideration of Patent Fees
ABE, IKUBO & KATAYAMA
Items with * are included in the current draft amendment of law
Ⅳ Promotion of Convenience for Applicants
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