Discussions on possible future amendment of the Japanese Patent Act

  1. Introduction

In September 2013, the Patent System Subcommittee of the Intellectual Property Policy Committee of the Industrial Structure Council issued a report entitled “Aiming at the Prompt Establishment of Strong and Stable Rights and the Improvement of User Friendliness. ” This report might have some effect on the future direction of the revision of laws. This paper mainly explains the “post-grant review system” and the “introduction of relief measures consistent with the Patent Law Treaty (PLT)” discussed in the report of the Patent System Subcommittee.

  1. Post-grant review system

Outline of the system

The system relates to a post-grant review based on a petition filed by a third party within a fixed period of time after the grant of patent by the Patent Office.

Differences between the post-grant review system and the invalidation appeal system in the purpose and features.

The invalidation appeal system is intended to allow the parties concerned to dispute over the validity of patent and attaches importance to an appeal decision rendered after the presentation of arguments by a petitioner for appeal and a patent owner. On the other hand, the post-grant review system aims to correct a defective patent and promptly ensure strong and stable rights and it attaches importance to the protection of due process of those concerned as well as realization of a quick appeal examination and a prompt final determination.

Accordingly, the post-grant review system has the following features.

  1. A petition may be filed only in a fixed period of time after the registration of establishment of a patent right.
  2. The grounds for a petition do not include those concerning the ownership of the right and are limited to those of public good (novelty, inventive step, description requirement, amendment requirement and the like).
  3. In principle, the appeal examination is on a document basis to alleviate the procedural burden on those concerned.

Eligibility to file a petition (demand)

Any person may file a petition. A petition by an anonymous person may not be accepted.

N.B. It is noted in the report that “any person” is currently eligible to demand an invalidation appeal, but with the introduction of the post-grant review system, it is appropriate to change “any person” to “an interested party.”

Period for filing a petition

Six months from the publication of a patent official gazette.

Petitioner's involvement in the procedures

In the event that a patent owner makes a correction, the petitioner may submit an argument if the petitioner desires to do so. “Ne bis in idem” (double jeopardy) does not apply. In other words, the petitioner may demand an invalidation appeal and make a plea against the invalidation of patent in an infringement lawsuit for the same reason as the reason for a petition for a post-grant review.

Clarification of points of dispute by the appeal board

First of all, the board examines the details of a petition (if several petitions are filed, they are collectively examined) and only in the event that the board determines that the petition has grounds for cancellation, the board notifies a patent owner of the fact and gives the patent owner an opportunity to submit an argument and make a correction.

Fees

The required fees are lower than those for demand for an invalidation appeal.

Appeal

The patent owner whose patent was cancelled may file a lawsuit with the Intellectual Property High Court. In the event that the patent is maintained, the petitioner may not appeal the decision. The petitioner may demand an invalidation appeal for the same reason.

Relationship with an invalidation appeal

Even in a period for filing a petition for a post-grant review, demand for an invalidation appeal is not prohibited.

  1. Introduction of relief measures

3-1. Relief for a failure to observe the period for demand for the examination of a patent ap- plication

Requirements: “justifiable grounds,” “within two months from a date on which the grounds were lost (within one year from the futile expiration of the period)”

The right to claim compensation for damage based on the patent right of a re-established patent application may not be excised to a third party who carried out the invention set forth in the patent application after it was deemed to be withdrawn. Charge free non-exclusive license is granted to the third party.

3-2. Priority-related relief

It is noted in the report that in view of the circumstances where relief provisions that comply with the PTL have been globally introduced and there are user needs for them, the priority-related relief provisions will be introduced so as to achieve harmony with the international system.

3-3. Large-scale disaster relief

It is noted in the report that it is appropriate to create provisions that allow timely relief measures to be granted to the patent related procedures filed by a person who is a victim to a large-scale natural disaster that occurred in and outside Japan.