IP PRACTICE IN JAPAN PREMEETING

IP PRACTICE IN JAPAN PREMEETING

AIPLA Mid-Winter InstituteLas Vegas, NV

January 22-23, 2012

Shigeyuki Nagaoka, JPAA

Correction Trial & Exception of "Group of Claims"

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・ What is Correction Trial?・ Background & Underlying Issues・ Key Provisions & Group of Claims・ Practical Tips

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WHAT IS CORRECTION TRIAL?

• Tool for amending patent claims, specification and drawings after grant (Art. 126)

• JPO Appeal Board handles Correction Trial

• Similar to Reissue Patent In US

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WHAT IS CORRECTION TRIAL?

• Art. 126(1)– Patentee may request Correction Trial to

amend specification, claims or drawings• Art. 126(2)

– Correction Trial may not be filed from filing of Invalidation Trial in JPO until Invalidation Decision is finalized

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BACKGROUND & UNDERLYING ISSUES

• Claims are examined as-a-whole – Appeal against Examiner’s Refusal (Art. 121)– Appeal Board makes decision as-a-whole

• If claim 1 is NG and claim 2 is OK, Appeal Board makes single negative decision

This Japan practice is different from the US

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• Exception to “as-a-whole” basis is explicitly stipulated in Patent Law– Invalidation Trial (Art. 123 (1))

• Court Decisions– Decision is made claim by claim– e.g. Claim 1 is invalid but claim 2 is valid

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• If handled on “claim by claim” basis in Correction Trial

• Corrections to claims 1 and 3 are allowed• Correction to claim 2 is dismissed

PATENT CLAIMSClaim 1Claim 2Claim 3

CLAIMS ON TRIALClaim 1' OKClaim 2' NGClaim 3' OK

TRIAL DECISIONClaim 1'Claim 2Claim 3'

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• If handled on “as-a-whole” basis

• Corrections to claims 1 and 3 are not allowed• All or Nothing

PATENT CLAIMSClaim 1Claim 2Claim 3

CLAIMS ON TRIALClaim 1' OKClaim 2' NGClaim 3' OK

TRIAL DECISIONClaim 1Claim 2Claim 3

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• No provisions stipulate that Correction Trial may be filed claim by claim although Invalidation Trial may be filed claim by claim

• Supreme Court Decision in 2008 (LED Module Case)

• Nevertheless, claims having certain relationship should be handled together

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Claims Having Certain Relationship Example: When claim 2 depends from claim 1

• Claim 2 returns to before-correction under current practice• Claim 2 illogically depends from claim 1• Claims 1 and 2 should be handled as group

PATENT CLAIMS

Claim 1 = AClaim 2 = A + B

CLAIMS ON TRIAL

Claim 1' = a OKClaim 2' = a + b NG

TRIAL DECISION

Claim 1' = aClaim 2 = A + B

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KEY PROVISIONS & GROUP OF CLAIMS

• New provision allowing patentee to file Correction Trial on claim-by-claim basis (Art. 126(3) 1st sentence )

• New provision prohibiting Correction Trial on claim-by-claim basis when claims define “group of claims” (Art. 126(3) 2nd sentence)

• Definition of “group of claims” is set forth in Art. 126(3) and Rule 46bis(1)-(4)

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• Handled on “group of claims" basis

• All claims 1-3 return to before-correction because claim 2’ is in bad shape and claims 1-3 should be kept together

PATENT CLAIMS

Claim 1 = AClaim 2 = A + BClaim 3 = A + C

CLAIMS ON TRIAL

Claim 1' = a OKClaim 2' = a + b NGClaim 3' = a + c OK

TRIAL DECISION

Claim 1 = AClaim 2 = A + BClaim 3 = A + C

131 2 3


• Art. 126(3)– If one claim (e.g. claim 2) depends from anoth

er claim (e.g. claim 1), then these claims define group of claims

Claim 1 Claim 2 depends from claim 1

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• Rule 46bis(1)– If one or more claims (e.g. claim 3) depend fro

m another claim (e.g. claim 2) that already depends from still another claim (e.g. claim 1), then these claims define group of claims

Claim 1 Claim 2 depends from claim 1 Claim 3 depends from claim 2

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• Rule 46bis(2)– If multiple claims (e.g. claims 2 and 3) depend

from one claim (e.g. claim 1), then these claims define group of claims

Claim 1 Claim 2 depends from claim 1 Claim 3 depends from claim 1

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• Rule 46bis(3)– If one claim (e.g. claim 3) depends from multi

ple claims (e.g. claims 1 and 2), then these claims define group of claims

Claim 1 Claim 2 Claim 3 depends from claim 1 or 2

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KEY PROVISIONS & GROUP OF CLAIMS • Rule 46bis(4)

– If one claim (claim 2) depends from another claim (claim 1) and other claims (claims 3-5) have relationship of §46bis(1), (2) or (3), then these claims (claims 1-5) define group of claims when any claim (claim 3) in those having relationship of §46bis(1), (2) or (3) depends from said one claim (claim 2) or said another claim (claim 1); or

Claim 1 Claim 2 depends from claim 1

Claim 3 depends from claim 1 Claim 4 depends from claim 3 Claim 5 depends from claim 4

KEY PROVISIONS & GROUP OF CLAIMS • Rule 46bis(4) cont'd

– If there are one group of claims (claims 1-3) and another group of claims (claims 4-6) each having relationship of §46bis(1), (2) or (3), then these groups of claims (claims 1-6) define combined group of claims when any claim (claim 4) in said another group of claims depends from any claim (claim 1) in said one group of claims

Claim 1Claim 2 depends from claim 1Claim 3 depends from claim 2

Claim 4 depends from claim 1 Claim 5 depends from claim 4 Claim 6 depends from claim 5

PRACTICAL TIPS

• Make sure which claims define “group of claims” – You have to file Correction Trial for all of

those claims which belong to particular group of claims (Art. 126(4))

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PRACTICAL TIPS

• New provision Art. 126(1)(iv) allows you to disengage one or more claims from “group of claims”

Claims 1-3 make no longer group of claims!

This is very confusing!

Claim 1 Claim 2 depends from claim 1Claim 3 depends from claim 2

Claim 1 independent claim Claim 2 independent claim Claim 3 independent claim

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PRACTICAL TIPS

• When you make corrections to specification or drawings, make sure all relevant claims are corrected at same time (Art. 126(4))

Claim 2 must be included in Correction Trial Request if claim 2 depends from claim 1

Correction Trial Request

To correct particular term in specification To correct that term in claim 1

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Arigato Gozaimashita

Shigeyuki Nagaoka

Japan Patent Attorneys Association

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Documents

IP PRACTICE IN JAPAN PREMEETING