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

14

Thank you for your attention