SVIPLA February 19, 2015

Transcription

1 SVIPLA February 19, 2015

2 Latest Developments in Japanese IP Law

3 SUGIMURA US Office (CA) Tokyo Office JPO SUGIMURA

4 Silicon Valley Office Team 2 Japanese Patent Attorneys US Attorney at Law US Patent Agent Capabilities Support Tokyo Office Consult clients on Japanese IP matters Provide information regarding Japanese IP industries 4

5 Speakers Tatsuya Sawada is the head of SUGIMURA's Silicon Valley office. His practice encompasses patent prosecution and litigation. He advises clients on Japanese IP matters and is a frequent speaker at IP conferences. He is often sought to consult on the important differences between Japanese IP law from and the clients domestic IP laws, application and enforcement procedures, and infringement suit representation. Takayoshi Kawai is the Director of International Filing at SUGIMURA. His practice encompasses patent prosecution in the electrical engineering, software, mechanical engineering and medical device fields. Mr. Kawai has been based at the Palo Alto office since 2013 with the responsibility for enhancing business development with clients in the U.S. and other countries. He also manages quality assurance of international patent filings of SUGIMURA.

6 Japanese Market - Closed to foreign companies, many non-tariff barrier, saturated growth rate, etc. - 2 nd largest developed economy - 3 rd largest by nominal GDP - 4 th largest by purchasing power

7 Success Stories iphone Market Share 69.1% in Japan 43.1% in USA 35.0% in Australia Users 36% from USA 27% from Japan 4% from UK 4% from Korea

8 JPO s Quality Policy The fastest and utmost quality patent examination in the world

9 Number of Examiners

10 Examination Waiting Period

11 Number of Patent Applications

12 Number of Examined Applications per Examiner

13 Number of Outsourced Searches 250 (k)

14 Allocation of JP/non-JP Applicants

15 Number of PCT Applications JPO as RO

16 Grant Rates

17 Number of IP-related Civil Cases

18 Allocation of IP-related Civil Cases

19 Enforcement: Litigation Causes of action Indirect Infringement Doctrine of Equivalents Exhausition Remedies Preliminary Injunction Injunction Damages (No treble damage for willful infringement) 19

20 Patent Act Art. 2 (Definitions) (3) "Working" of an invention in this Act means the following acts: (i) in the case of an invention of a product (including a computer program, etc., the same shall apply hereinafter), producing, using, assigning, etc. (assigning and leasing and, in the case where the product is a computer program, etc., including providing through an electric telecommunication line, the same shall apply hereinafter), exporting or importing, or offering for assignment, etc. (including displaying for the purpose of assignment, etc., the same shall apply hereinafter) thereof;

21 18000 Patent Monetization

22 Japan IP Law Revision Key Topics Post Grant Opposition Non-traditional Trademark Legislation Passed Congress on Apr. 25, 2014 Cabinet Order as of Jan. 28, 2015 Effective Date: April 1, 2015

23 Post Grant Opposition

24 Post Grant Opposition - History until 2003 Post Grant Opposition, as public monitoring system Invalidation Trial, inter parte on oral proceeding 2004 Revision Post Grant Opposition merged Invalidation Trial available to anyone

25 Post Grant Opposition - History Invalidation Trial Post Grant Opposition merge

26 Post Grant Opposition - History 2014 Revision Separate Post Grant Opposition from Invalidation Trial

27 NEW Post Grant Opposition Anyone can file Within 6 months after patent issuance Invalidation trial: petitioner limited to interested party can be filed at anytime Petitioner can file written argument Official Fee JPY16,500 ($ 140)+JPY2,400 ($20) /claim

28 NEW Post Grant Opposition Grounds Patentability Industrial applicability, Novelty, Inventive step ---(Articles 29(1), 29bis, 29(2)) Double patenting New matter --- (Article 17bis(3)) Written description requirements Enablement, Definiteness, Support ---(Articles 36(4), (6)) Public Order ---(Article 32)

29 Challenging/Preventing Patent Post Grant Opposition Invalidation Trial Third-Party Submission When Within 6 months from issuance After issuance Anytime Who Anyone Interested party Anyone Named / Anonymous Named Named Anonymous

30 Challenging/Preventing Patent Post Grant Opposition Invalidation Trial Third-Party Submission Petitioner s Participation When a claim is amended Yes (Inter Partes) No Oral Proceedings No Yes No Appeal Only Patentee to IP high court Yes To IP high court No Official Fee JPY16,500 + JPY2,400/cl. (approx. $140 + $20/cl.) JPY49,500 + JPY5,500/cl. (approx. $410 + $45/cl.) Free

31 Challenging/Preventing Patent Post Grant Opposition Invalidation Trial Third-Party Submission Industrial Applicability Yes Yes Yes Novelty Yes Yes Yes Inventive Step Yes Yes Yes Double Patenting Yes Yes Yes Written Description Yes Yes Yes New Matter Yes Yes Yes Public Order Yes Yes Yes Violation of Amendment Yes Yes Violation of Joint Application Derivation Yes Yes

32 Challenging/Preventing Patent Post Grant Opposition Invalidation Trial Third-Party Submission Pros More widely available (anyone can file) Less expensive Less time limit More participation of petitioner Anyone can file Anonymous filing No cost No time limit Cons limited time for filing Limited participation of petitioner Limited availability (only parties in interest can file) More expensive No participation Less control

33 Success Rate Dismiss/ Withdraw 2% Patent invalidated 37% Patent maintained 22% 2003 Patent amended 39%

34 Opposition Procedures Petitioner Petition for Opposition Reply Argument No Appeal Available Japan Patent Office Issuance of Patent Copy of the Petition Documentary Proceedings Notification of Reasons for Invalidation Copy of Request for Amendment, etc. Decision to maintain/ invalidate the Patent Patentee Written Arguments/ Amendment Appeal available against invalidation 34

35 JP-US Comparison JP Post Grant Opposition US Post Grant Review WHO Anyone Parties in interest WHEN 6 months from pub. 9 months from pub. WHAT Patentability New Matter Written Description Public order EVIDENCE Any Any PROCEDURE No Estoppel Patentee may amend Patentability New Matter Written Description Estoppel Patentee may amend COST $400/20 clms. $30,000/20 clms. TIME 1 year 1 year

36 Non-traditional Trademark

37 Article 2, Trademark Law CURRENT A trademark is: any characters, figures, signs or threedimensional shapes, or any combination thereof, or any combination thereof with colors.

38 Article 2, Trademark Law REVISED A trademark is recognizable by human perception, and comprises: characters, figures, signs, three-dimensional shapes or colors, any combination thereof, sounds, or other matters designated by Cabinet Order.

39 Article 2, Trademark Law REVISED Color Yes Sound Yes Hologram Yes Taste No Position Yes Motion Yes Texture No Fragrance No

40 Color Color itself is NOT inherently distinctive. Secondary meaning needs to be proven based on extensive use of the color(s) for specific products. CTM Reg Deutsche Post Class 39 Transportation Actual Use: Quoted from their Website

41 Position Secondary meaning of a colored portion disposed in a specific product needs to be proven based on extensive use of the color(s) for the product. The mark consists of a red lacquered outsole on footwear that contrasts with the color of the adjoining ("upper") portion of the shoe. US Reg Christian Louboutin Class 25 footwear

42 Sound Sound contributing distinctiveness of a product Sounds generated by products (e.g., engine starter sound for vehicle engine) are NOT distinctive. Music (e.g., classics, pops ) is NOT distinctive. Sound of a human voice yodeling "YAHOO". US Reg Yahoo! Class 42 Computer services etc.

43 Motion Characters, figures, signs, three-dimensional shapes or colors constituting a mark must alter with time. US Reg Twentieth Century Fox Film Class 9 Motion picture films etc.

44 Hologram Characters, figures, signs, three-dimensional shapes or colors constituting a mark must alter according to angles. US Reg American Express Class 36 Charge card and credit card services

45 Japan IP Law Revision Patent: Easing eligible reason for past due to be recovered Trademark: Expanding eligibility of applicant of Regional Brand Trademark Design: Hague Agreement (Effective on May 15, 2015) Patent Attorneys Act

46 Practical Tips Secret Prior Art Examiner Interviews Prosecution Speed Non-member countries/regions of Paris Convention J-PlatPat Grace Period Foreign Language Application Medical /Software Invention Divisional Application Claim Drafting

47 Secret Prior Art Application 1 Filled Application 2 Filled Application 1 Published Time Publication: 18 months

48 Secret Prior Art (cont d) Secret Prior Art (Art. 29 bis) Similar to 35 USC 102 (a)(2) No self-collision (same applicant) Critical date is the filing date of the later application If the 1 st application is a PCT application and the 2 nd application is granted before the national entry of the 1 st application, the 1 st application can be a ground of opposition/invalication.

49 Examiner Interview Effective tool for reducing the number of Office Actions. Guide line was changes last year. The applicant is allowed to have an interview at least once. More than one amendments may be presented (depending on the examiner).

50 Examiner Interview (cont d) Firm Applications Attorneys Average 1Shiga 9, Sakai 5, Ito 4, Suzuye 4, Onda 3, Seiwa 3, Soei 3, Fukami 3, Aoyama 2, Miyoshi 2, Taiyo Nakajima 2, Nakamura 2, Kyowa 2, Yuasahara 2, Otsuka 1, Tani Abe 1, Zonderhoff 1, Shusaku Yamamoto 1, SUGIMURA 1, Harakenzo 1,

51 Tailored Prosecution Speed Super Accelerated Preferential Accelerated PPH Average Decelerated 1 month to 1 st OA 2-3 months to 1 st OA 2-3 months to 1 st OA 2-3 months to 1 st OA 11 months to 1 st OA +36 months +11 months +6 months 51

52 Accelerated Prosecution Avg. PPH Accelerated Preferential Super Accelerated Granted Foreign App Small/Mid. Entity Academic Inst. Commercial use Foreign App 3 rd party use (3 rd party can file) 1. Foreign App 2. Commercialize in JP (within 2 yrs) 11 m 2-3m 2-3m 2-3m 1m 2-3yrs 1-2yrs 1-2yrs 1-2yrs <1yr 52

53 Synchronized Prosecution US Application JP Application 2 to 6 months (Expedited Examination) Patent Granted PPH- MOTTAINAI EP, CN, KR, TW, MY, IL, GB, DE, RU, AU, CA, AU Application PPH- MOTTAINAI

54 Decelerated Examination Priority App JP App Req. Exam 1 st OA Reply 12m 36m 11m 3m 3m 54

55 Priority under Paris Convention If an applicant is from a non-member country/region of Paris Convention, then the claimed priority is not accepted! But, if the applicant has an office in a member country, the priority is granted. Art. 3 of Paris Convention Nationals of countries outside the Union who are domiciled or who have real and effective industrial or commercial establishments in the territory of one of the countries of the Union shall be treated in the same manner as nationals of the countries of the Union.

56 J-PlatPat Japan Platform for Patent Information (J- PlatPat), a new service to provide patent information, will be launched on March 23, Capable of text-searching in English.

57 J-PlatPat

58 Grace Period Disclosure Filing Date (JP National or PCT) Time JP: 6 months US: 12 months

59 Translation Issues: PCT PCT App JP National Phase JP Translation

60 Translation Issues PCT Divisional or Paris Convention Priority App JP Translation

61 Translation Issues PCT Divisional or Paris Convention Priority App Foreign Lang App JP Translation

62 Med. Invention: Patentability Methods of surgery, therapy or diagnosis of humans are NOT patentable in Japan. Draft method claims as device claims Exclude humans in therapeutic claims

63 Med. Invention: Patentability EPO JPO USPTO In vitro Diagnosis of Humans yes no yes In vivo Diagnosis in Humans no no yes In vitro Diagnosis of Non-Human Animals yes yes yes In vivo Diagnosis in Non-Human Animals no yes yes Medical Treatment of Humans no no yes Medical Treatment of Animals no yes yes Kits or Compositions for Diagnosis or Treatment yes yes yes Gene Expression Profiles no no no Database e.g. sequence listing no no no Data Carrier e.g. signal yes no no 63

64 Software Invention: Software Inventions are patentable Each step must be executed by hardware Grant rate has been increasing (8% in > 25%).

65 Divisionsals: Submission Periods File App Req. Exam 1 st OA OA Decision of Grant Reg. 0-36m 11 m 3m 3m 3m 3m <30d 65

66 Divisionsals: Submission Periods File App Req. Exam 1 st OA OA Decision of Rejection 0-36m 11 m 3m 3m 3m 3m 3m 1m 66

67 Tips for Claim Drafting Apparatus, method, system, and computerreadable medium claims: allowed In software claims, all steps within the invention must be tied to hardware. Multiple dependent claims: allowed. Alternative expressions and relative expressions: generally not allowed. Functional claims (means plus function) can be interpreted very narrowly.

68 Thank You Silicon Valley Office Tokyo Office