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Trial for Patent Invalidation in Japan
November 2016 (H28)
Trial and Appeal Department,
Japan Patent Office
0
1
Roles of Trials and Appeals
Japan Patent Office
Supreme Court of Japan
Examination
departments
District Court
Trial and Appeal
Department
Exchange of information between courts and the JPO
(Patent Act Article 168)
IP High Court
(designs / trademarks)
(patents / utility models)
disputes relating to intellectual property
appeal against examiner's decision of refusal
trial for invalidation
lawsuits rescinding trial decisions
Courts
appeal infringement lawsuits
High Court
final appeal
2
Request trials for invalidation
decision to maintain the patent decision to invalidate the patent
IP High Court
trials
Panel Requests for correction
Written answer
Duplicate of a written request for trial
Lawsuits rescinding trial decisions
Written requests for trials
Registration of a patent
invitation to reply +
Oral proceedings
Advance Notice of Trial Decision
1
2
3
4
request for correction
A Flow of a Trial for Patent Invalidation
5
Demandant
Patentee (Demandee)
3
Japan Patent Office Courts Notify the JPO of infringement
lawsuit instituted (3)
Notify the Court of whether a
request for trial for patent invalidation
has been filed (4)
Patent invalidation defense (5)
Patent Invalidation Defense in Infringement Lawsuit (Patent Act Article 104-3(1)) Where, in litigation concerning the infringement of a patent right or an exclusive license, the said patent is recognized as one that should be invalidated by a trial for patent invalidation, or, registration of an extension of the term of the said patent right is recognized as one that should be invalidated by a trial for invalidation of a registration of extension of duration, the rights of the patentee or exclusive licensee may not be exercised against the adverse party.
Exchange of Information between Trial for Invalidation and Infringement Lawsuit
Patent Act Article 168 (Exchange of Information)
May request the court to deliver
copies of any record of the said
action (6)
4
Average Pendency Periods
“Average pendency periods: trial for patent invalidation” prepared by the JPO
“Average pendency periods: civil suit case relating to IP right” available at the IP High Court website at
http://www.ip.courts.go.jp/documents/statistics/stat_03/index.html
9.8
10.8
9 9.5
8.8
9.8
8.8 8.2
8.7 9.2
10.5
13.5
12.5
14.4 13.7 13.4
14.8
13.4
15.7 15.7 15.1
14.2
0
2
4
6
8
10
12
14
16
18
2005 2006 2007 2008 2009 2010 2011 2012 2013 2014 2015
Mo
nth
s Progress of Average Pendency Periods
Average pendency periods: Civil suit case relating to IP right (district courts of first instance in Japan)
Average pendency periods: Trial for patent invalidation
5
Trial for Patent
Invalidation
Infringement Lawsuit
Patent
Invalidation
Defense
Relation between Infringement Lawsuit and Trial for Invalidation
6
The percentage of “cases relating to infringement” within “requests for trial for invalidation”
(The percentage of “cases relating to infringement” within “requests for trial for invalidation”: requests for trial for patent invalidation relating to infringement lawsuit / requests for trial for patent invalidation (prepared by the JPO))
343
273 284 292
257 237
269
217
247
215 227
104 77 94 82 87 94 110
90 117
85 74
30% 28%
33%
28%
34%
40% 41% 41%
47%
40%
33%
0%
5%
10%
15%
20%
25%
30%
35%
40%
45%
50%
0
50
100
150
200
250
300
350
400
2005 2006 2007 2008 2009 2010 2011 2012 2013 2014 2015
the number of requests for trial for invalidation (patents) cases relating to infringement lawsuit within trial for invalidation
The percentage of “cases relating to infringement” within “requests for trial for invalidation”
The number of requests
for trial for invalidation
(year)
The percentage of “cases relating to infringement
within “requests for trial for invalidation”
infringement
lawsuit
trial for
invalidation
Trend in Request for Trial for Invalidation (1)
7
Note: Where there are multiple patent invalidation trial cases requested and infringement lawsuit cases instituted for one patent, only the case which has been filed at the earliest will be counted. Of patent invalidation trial cases requested between 2013 and 2014, only the cases for which infringement lawsuits were also instituted for the patents concerned were surveyed. (prepared by the JPO)
“Filing dates of a request for” and “acceptance dates of infringement lawsuits”
in chronological order (histogram)
37
14
23 20
8
3 2 3 0
7
0
5
10
15
20
25
30
35
40
-360
day
s or
less
-359~
-271
day
s
-270~
-181
day
s
-180~
-91
days
-90~
-1 d
ays
0~89
day
s
90~
179
days
180~
269
days
270~
359
days
360
days
or m
ore
the
Nu
mb
er
of
tria
ls
Days from filing dates of trial for invalidation to acceptance dates of infringement lawsuits
Requests for trial for invalidation in 2013
26
8
14 17
8
2 5
0 3 2
0
5
10
15
20
25
30
35
40
-360
day
s or
less
-359~
-271
day
s
-270~
-181
day
s
-180~
-91
days
-90~
-1 d
ays
0~89
day
s
90~
179
days
180~
269
days
270~
359
days
360
days
or m
ore
the
num
ber o
f tria
ls
Days from filing dates of trial for invalidation to acceptance dates of infringement lawsuits
Requests for trial for invalidation in 2014
Invalidation trial first lawsuit first
infringement
lawsuit
trial for
invalidation
lawsuit first Invalidation trial first
Trend in Request for Trial for Invalidation (2)
Current Status: Patent Invalidation Defense in Infringement Lawsuits (District Courts) and Requests for Trial for Invalidation
8 Note: A sample survey was conducted on court decisions published in the judicial precedent information at the IP High Court website. (prepared by the JPO)
Year
Validity of rights not contested
Trial for invalidation only
Invalidation defense only
Invalidation defense and trial
Total
the number of infringem
ent lawsuits (district courts)
cases
trial for invalidation
infringement lawsuit
patent invalidation
defense
Comparison of decisions: between Trial for Invalidation and Invalidation Defense in Infringement Lawsuit
Year of requests 2012 2013 2014 2015 The number of requests for trial for invalidation 217 247 215 227 of which relating to infringement lawsuit 90 117 85 74 of which with Patent Invalidation Defense 76 87 64 56
The number of requests for trial for invalidation in relation to the number of cases with Patent Invalidation Defense in infringement lawsuit
Decisions about patent invalidation (matched / unmatched)
(Comparison between court decisions (district courts) and trial decisions
Matched 51%
Unmatched
[パーセンテー
ジ]
No decision 37%
Matched
Unmatched
No decision
49 cases
Requests for trial for invalidation (2012-2014) (prepared by the JPO)
9
A sample survey was conducted on patent infringement lawsuits between
2013 and 2015 published in the judicial precedent information at the IP
High Court website. (prepared by the JPO)
trial for invalidation
infringement lawsuit
patent invalidation
defense
Progress of the percentage of decision to invalidate the patent
10
211
194
142
182
123
102 91
73
43 37 39
114
88 82
92
123 129
140 144 139
105
142
54
34 35 36 37
23 28 32 29
41 34
56% 61%
55% 59%
43% 40%
35% 29%
20% 20% 18%
-50%
-40%
-30%
-20%
-10%
0%
10%
20%
30%
40%
50%
60%
70%
0
50
100
150
200
250
300
2005 2006 2007 2008 2009 2010 2011 2012 2013 2014 2015
Board decisions invalidating the patents (including decisions invalidating a part of the patents)Board decisions not invalidating the patents (including dismissal of requests)withdrawal / abandonmentthe percentage of invalidation
Note: the percentage of invalidation = the percentage of board decisions invalidating the patents (including decisions invalidating a part of the patents) / a total number of requests for invalidation trial processed (prepared by the JPO)
year
Trend in result of trial for Patent Invalidation
The
num
ber o
f pro
cess
ed tr
ial f
or in
valid
atio
n
Request for Correction in Trial for Invalidation
11
requests for correction
filed 48%
requests for correction not filed
52%
(note) A sample survey was conducted on 485 requests for trial for patent invalidation between April 2012 and December 2014 to which trial decisions were made (excluding dismissal by trial decision and rejection of an appeal as inadmissible).
“Correction allowed” includes cases in which correction was partially allowed. “Correction not allowed” means that correction is not allowed entirely. “Patent invalidated” includes decisions partly invalidating the patents. “Patent maintained” means that the patents are maintained entirely.
(prepared by the JPO)
233 cases 252 cases Corrections allowed & Patents
maintained 62%
Corrections allowed & Patents
invalidated 34%
Corrections not allowed &
patents maintained
1%
Corrections not allowed &
Patents invalidated
3%
145 cases
78 cases
3 cases 7 cases
12
Summary
Japan Patent Office
Supreme Court of Japan
Examination
departments
District Court
Trial and Appeal
Department
Exchange of information between courts and the JPO (Patent Act
Article 168)
IP High Court
(designs / trademarks)
(patents / utility models)
disputes relating to intellectual property
appeal against examiner's decision of refusal
trial for invalidation
lawsuits rescinding trial decisions
Courts
appeal
infringement lawsuits
High Court
final appeal
Play a quasi-judicial role Settle disputes promptly and inexpensively by making decisions on trial for
invalidation at an early stage Prevent disputes to promote strategical business activities
Roles of Trials and Appeals
13
(FYI) Opposition to Grant of Patent
Patent
Opposition
System
Trial for
Patent
Invalidation
System
- Only interested persons may file a request - Oral proceedings in principle
<any time after the registration of rights>
- Any persons may file an opposition - Documentary proceedings
<only within six months from the date of publication of the gazette of the patent>
- It is expected that rights will be reviewed at an early stage because time period to make an appeal is limited. - Because a burden of procedures is small, it enables to widely solicit opinions from the parties concerned.
[Comparison between Trial for Invalidation and Opposition] Benefits
Early acquisition of strong and stable patent rights is possible.
Image of Systems in
Japan
The accumulated total number of requests : 1,391 (by patent right, as of: October 28, 2016) (since the system was commenced in April 1, 2015)
Current Status of Oppositions
Trial for Invalidation Opposition
Person(s) eligible
Interested persons only Any persons
Period of time to file
Any time after the registration of rights
Within 6 months from the publication date of the gazette of
the patent
Examined by
Oral proceedings in principle Documentary proceedings only