The Japanese Patent Act was revised on May 14, 2014 to provide for post-grant oppositions within one year of the rule change, i.e., by May 14, 2015 (the exact effective date has not yet been set). Under the new opposition system, any party, including non-interested parties and straw men, will be able to file an opposition within 6 months of patent issuance and thus potentially cause invalidation soon after patent grant. In anticipation of the new system less than four months away, parties may wish to begin preparing now and consider being more aggressive in monitoring competitors’ Japanese patent applications and allocating resources to file oppositions, as discussed further below.
New Opposition Proceedings
All bases for an opposition (any substantive grounds for invalidity such as novelty, inventive step, insufficient disclosure, new matter, etc.) and all supporting written evidence must be submitted with respect to each opposed claim by the 6 month deadline, which is non-extendible. The opposition proceeding will be conducted by a Board of 3 or 5 Trial Examiners of the Japanese Patent Office (JPO) based only on the submitted documentary evidence and will not include an oral hearing. If the Board deems the patent valid, the opposition ends with no appeal possible. If the Board finds the patent invalid, the Board will issue a “Reasons for Revocation.” The patentee will then have an opportunity to file remarks and optional amendments (which may only be narrowing) in reply to the Reasons, and the opponent will be able to file counter-remarks to any submitted amendments. If the patent is still deemed invalid by the Board, the patentee may appeal the decision to the Intellectual Property (IP) High Court.
Comparison with Current Invalidation Trials
Prior to 2004, the Japanese patent system provided for both oppositions and invalidation trials. In 2004, the two proceedings were combined into an invalidation trial system, and opposition proceedings were eliminated.
When opposition proceedings are re-introduced this Spring, invalidation trials will still be available for an interested party to initiate at any time after patent grant. Invalidation trials may be oral or documentary based. While oppositions are ex parte proceedings with only a losing patentee having the opportunity for appeal to the IP High Court with the JPO as the opposing party (not the filer of the opposition), invalidation trials are inter partes proceedings with either party able to appeal the invalidation trial decision to the IP High Court with the same two clashing parties.
Prior to 2004, opposition proceedings were used far more often than invalidation trials. The reintroduced opposition proceedings will likely also be used more often because an opposition will be easier to file and cost significantly less than an invalidation trial. The official fees for an opposition are JPY 16,500 (~$140) and JPY 2,400 (~$20)/claim, with preparation and counsel fees being limited to the documents submitted with the opposition request within 6 months of patent grant. In contrast, the official fees for an invalidation trial are JPY 49,500 (~$421) and JPY 5,500 (~$47)/claim, with significant preparation and counsel fees typically being required for the trial. The relatively low cost of the upcoming opposition system is one reason why parties may benefit from monitoring issued Japanese patents so any objections to issued patents can be filed within the 6 month deadline and thus potentially avoid much more expensive and time-consuming litigation after the 6 month opposition period has expired. However, deciding between an opposition and an invalidation trial would not typically be a purely cost-based decision, so consultation about such issues with counsel would almost always be prudent before formally attacking any third party patents.
How to Prepare for the New Opposition System
In preparation for the new opposition system, parties may want to consider taking any or all of the following steps. These steps would also be helpful to enact or continue after the new law is in effect.
- Select Japanese applications to monitor for issuance, such as applications that are owned by competitors, are in a specific relevant field, or are by certain inventors. These applications may in some cases be readily identified as counterparts to currently-known patents or applications in other jurisdictions.
- Periodically monitor the status of selected Japanese applications (e.g., weekly, monthly, or quarterly). If monitoring procedures are not already in place for Japan, the upcoming law change can serve as a good trigger to establish such procedures. If monitoring procedures are already in place for another jurisdiction with post-grant relief, such as Europe and the U.S., the upcoming law change can serve as a good trigger to apply those same techniques to Japan and/or to evaluate the current effectiveness of those procedures.
- Consult with Japanese counsel about services they may offer to monitor recently issued patents in Japan, which they may be able to more efficiently assess than non-Japanese speakers.
- Allocate resources/money for Japanese patent monitoring and for the preparation and filing of oppositions.
- Routinely note the expiration date of the 6 month opposition period for your issued Japanese patents, which can help for budgeting and in determining whether or when to engage in any post-issuance enforcement. If not already done, the upcoming law change can serve as a good trigger to routinely make such notations for issued patents in other jurisdictions offering a limited period of post-grant relief, such as with European oppositions and U.S. post-grant review.