Post-Grant Review in Japan

Transcription

1 Post-Grant Review in Japan Houston, January 30, 2018 Toshifumi Onuki International Activities Center Japan Patent Attorneys Association Peter Schechter Partner Osha Liang LLP

2 Post-Grant Review in Japan San Diego, February 1, 2018 Toshifumi Onuki International Activities Center Japan Patent Attorneys Association Kerry S. Taylor, Ph.D. Partner Knobbe Martens

3 Post-Grant Review in Japan Three Tools for PGR in Japan Comparison of PGR JP vs US How to Use PGR Tools Summary 3

4 Three Tools for PGR in Japan Type of PGRs History of PGRs Proceedings of PGRs Comparison of Three PGRs 4

5 Three Tools for PGR in Japan Type of PGRs History of PGRs Proceedings of PGRs Comparison of Three PGRs 5

6 Three Tools for PGR - Type of PGRs - Opposition Invalidation Trial Citation of Prior Art 6

7 Three Tools for PGR in Japan Type of PGR History of PGRs Proceedings Comparison of Three PGRs 7

8 Three Tools for PGR - History of PGRs - Opposition Patent Law 1921 Pre-Grant Opposition Patent Law 1994 Post-Grant Opposition Patent Law 2003 Patent Law 2015 Post-Grant Opposition Invalidation Trial Invalidation Trial Citation of Prior Art 8 Pre-grant Post-grant AIPLA-JPAA Joint Meeting 2014

9 Three Tools for PGR in Japan Type of PGR History Proceedings of PGRs Comparison of Three PGRs 9

10 Proceedings Opposition 10

11 Trial Statutory Period 6 Ms Opposition Proceeding (1) Petitioner JPO Issuance of Patent Patent Publication Patentee Petition Forwarding Copy Copy of Petition Starting Trial 11

12 Ave. 5.8 Months Opposition Proceeding (2) Petitioner JPO Patentee Any Grounds? No Yes Notification of reasons for revocation Response Inquiring Response Proceeding Trial Written Argument Request for Correction Cl./Spec. Notification of reasons for revocation Written Argument Request for Correction 12 Appeal to IP High Court Trial Decision Appeal to IP High Court

13 Proceedings Invalidation Trial 13

14 Ave. 46 Ds Ave. 52 Ds Ave. 17 Ds Ave. 95 Ds Ave. 27 Ds Invalidation Proceeding (1) Requester JPO Request for Trial Invitation to Reply Patentee Answer Request for Correction Invitation to Rebuttal Rebuttal 14 Trial Date Arrangement Trial Issue Notification

15 Ave. 96 Ds Ave. 70 Ds Invalidation Proceeding (2) Requester JPO Trial Date Arrangement Trial Issue Notification Patentee Statement Summary Statement Summary Oral Hearing Rebuttal Decision Notice Invitation to Rebuttal Request for Correction Cl./Spec. Trial Decision 15 Appeal to IP High Court Appeal to IP High Court

16 Proceedings Citation of Prior Art 16

17 Ave. 1 year 3-6 Ms Ave. 11 Ms Statutory Period Statutory Period 3 Years Statutory Period 18 Ms Citation of Prior Art Third Party JPO Application filing Applicant Laid-open to public Request for Examination Prior Art Office Action 17 Prior Art Decision to Grant Patent Publication Invalidation Trial Correction Trial Response Amendments Registration fee Patentee Prior Art

18 Three Tools for PGR in Japan Type of PGR History of PGRs Proceedings of PGRs Comparison of Three PGRs 18

19 Three Tools for PGR - Comparison of Three PGRs - Item Opposition Invalidation Trial Citation of Prior Art Character Ex-parte Inter-parte Ex-parte When 6 months from grant Anytime after registration Anytime Who Anyone Interest person Anyone Anonymous Not Allowed Not Allowed Allowed Use of other s name Possible Possible Possible 19

20 Three Tools for PGR - Comparison of Three PGRs - Item Opposition Invalidation Trial Grounds Patentee s Arguments/ Correction Public interest (novelty, inventive step, description, new matter etc.) Public interest, ownership, ex-post reasons Citation of Prior Art Public interest, (novelty, inventive step, description, new matter etc.) Allowed Allowed Not Available Proceeding Documents only 20 Oral & Documents Documents only

21 Three Tools for PGR - Comparison of Three PGRs - Item Opposition Invalidation Trial Citation of Prior Art Opponent s Rebuttal Possible Possible Not Available Double Jeopardy Not applicable Applicable Not Available Appeal Possible Possible Not Available Official Fee /claim /claim Free of charge 21

22 Three Tools for PGR - Comparison of Three PGRs - Item Opposition Invalidation Trial Average Period Likelihood of success 5.8 months 10.5 months 9% revoked (49% narrowed) 18% (including invalidated in part) 22

23 Post-Grant Review in Japan Three Tools for PGR in Japan Comparison of PGR JP vs US How to Use PGR Tools Summary 23

24 Comparison Oppositi on (JP) vs. Ex Parte Reexam (US) 24

25 Comparison - Opposition (JP) vs Ex Parte Reexam (US) - Item Opposition JP Ex Parte Reexam US Character Ex-parte Ex-parte When 6 Ms from patent publication Who Anyone Anyone Anonymous Not Allowed Allowed Anytime after grant Use of other s name Possible Not Applicable 25

26 Comparison - Opposition (JP) vs Ex Parte Reexam (US) - Item Opposition JP Ex Parte Reexam US Issuance of Preliminary Decision Grounds Patentee s Arguments/ Correction Not Available Novelty, inventive step, description, etc. Allowed Reexam order Novelty, obviousness, double patenting only based on publication Allowed 26

27 Comparison - Opposition (JP) vs Ex Parte Reexam (US) - Item Opposition JP Ex Parte Reexam US Discovery Not Available Not Available Oral Hearing Not Available Interview Double Jeopardy Not Applicable Not Applicable Appeal Possible Possible, first PTAB Official Fee /claim $12000/$6000/$3000 Large/Small/Micro 27

28 Comparison - Opposition (JP) vs Ex Parte Reexam (US) - Item Opposition JP Ex Parte Reexam US Ave. Period 5.8 months ~24 months Likelihood of success 9% revoked, 49% 12% revoked, 67% narrowed *1 narrowed *2 *1: JPO statistics as of end of November 2017 *2: from USPTO statistics fiscal year 2017 at 28

29 Comparison Invalidation Trial (JP) Post Grant vs. Review (US) Inter Partes Review (US) 29

30 Comparison - Invalidation Trial (JP) vs Post-Grant Review / Inter Partes Review (US) - Item Invalidation Trial (JP) Post-Grant Review (US) Inter Partes Review (US) Character Inter-partes Inter-partes Inter-partes When Who Anytime after registration Interest person 9 months from grant Anyone? Anytime after grant* Anyone? Anonymous Not Allowed Not Allowed Not Allowed Use of other s name Possible Impossible (Real interest person) Impossible (Real interest person) 30

31 Comparison - Invalidation Trial (JP) vs Post-Grant Review / Inter Partes Review (US) - Item Grounds Patentee s Arguments/ Correction Invalidatio n Trial (JP) Patentability, Ownership, Ex-post reasons Allowed Post-Grant Review (US) Any patentability ground Allowed but amendments extremely rare Inter Partes Review (US) Novelty, obviousness, publications only Allowed but amendments extremely rare Discovery Not Available Limited Limited 31

32 Comparison - Invalidation Trial (JP) vs Post-Grant Review / Inter Partes Review (US) - Item Issuance of Preliminary Decision Opponent s Rebuttal Invalidation Trial (JP) Not Available Post-Grant Review (US) Institution Decision Inter Partes Review (US) Institution Decision Possible Possible Possible Double Jeopardy Applied Applied Applied Appeal Possible Possible Possible 32

33 33 Comparison - Invalidation Trial (JP) vs Post-Grant Review / Inter Partes Review (US) - Item Invalidation Trial (JP) Official Fee /claim Post-Grant Review (US) $38000+$1200/ excess claim Ave. Period 10.5 months Must completed within 12 months Likelihood of success 18% (including invalidated in part) Inter Partes Review (US) $30500+$900/ excess claim Must completed within 12 months 56% *3 (for all IPR/PGR/CBM ) Flexibility Interactive less interactive less interactive *3: from USPTO statistics as of 09/30/2017 at 30.pdf

34 Post-Grant Review in Japan Three Tools for PGR in Japan Comparison of PGR JP vs US How to Use PGR Tools Summary 34

35 How to Use PGR Tools - Citation of Prior Art - Use Pre-Grant Citation of Prior Art before first Office Action Use Post-Grant Citation of Prior Art when to have correction trial examiners notice documents Use Citation of Prior Art when to submit non-patent documents 35

36 How to Use PGR Tools - Opposition - Use Opposition when offending claims has been finally granted Use Opposition if you want to conceal your identification 36 Use Opposition if you have documents (including non-patent ones) not used during examination

37 How to Use PGR Tools - Invalidation Trial - Use Invalidation Trial if failed to revoke offending patent in Opposition Use Invalidation Trial if you are involved in infringement lawsuit 37 If you have an important application, file a divisional just in case

38 Post-Grant Review in Japan Three Tools for PGR in Japan Comparison of PGR JP vs US How to Use PGR Tools Summary 38

39 Summary If you have any offending patent or application to remove If you are a patentee 39

40 40 If you have any offending patent or application to remove Want to remove any offending patent / application? YES Patented? YES Opposition possible? NO Involved in litigation? NO Want to conceal your name? NO YES YES YES NO NO Examination requested? Want to conceal your name? Consider invalidation trial as option YES NO File invalidation trial by someone s name File invalidation trial by your name YES NO Submit prior art Keep monitoring File Opposition by someone s name File Opposition by your name

41 If you are a patentee Just got Decision to Grant? NO Want to file lawsuit? YES NO YES Important? YES File divisional Knowing strong prior art? NO YES Submit the prior art File correction trial File infringement lawsuit 41

42 Thank you for your attention TOSHIFUMI ONUKI TMI Associates 42