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Post Grant Review and Other Third Party Review in JP -Who Moved JP Opposition???

Post Grant Review and Other Third Party Review in JP -Who Moved JP Opposition???. Kay KONISHI NICHI-EI Patent and Trademark Attorneys, P.C. AIPLA MWI, Japan Practice Committee Meeting, Jan. 22, 2012, Las Vegas. 1.1. Rationale for Third Party Review.

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Post Grant Review and Other Third Party Review in JP -Who Moved JP Opposition???

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  1. Post Grant Review and Other Third Party Review in JP-Who Moved JP Opposition??? Kay KONISHI NICHI-EI Patent and Trademark Attorneys, P.C. AIPLA MWI, Japan Practice Committee Meeting, Jan. 22, 2012, Las Vegas

  2. 1.1.Rationale for Third Party Review • Actual/ potential Dispute resolution between parties • Public participation in patenting

  3. 1.2.Comparable Procedures in Different Jurisdictions • US present • Ex Parte Reexamination and Inter Partes Reexamination only on the grounds of prior art publication • US AIA • Post-Grant Review within 9 months after grant on wider grounds • Inter Partes Review • EP • EPO Opposition with broad range of grounds • Invalidation procedures before national authorities • JP used to have opposition…

  4. 2.1.Long History of Third Party Review… 1921-1993 Pub. of Examined Appl. FD Pub. Grant Third Party Observation Pre-Grant Opposition 3M Invalidation Trial at JPO

  5. 2.2.Long History of Third Party Review… 1994-2002 FD Pub. Grant Third Party Observation Post-Grant Opposition 6M Invalidation Trial at JPO 2000 (Kilby Sup. Ct. case)- Invalidation Defense in Ct.

  6. 2.3.Long History of Third Party Review 2003-Present FD Pub. Grant Third Party Observation Post-Grant Third Party Observation Invalidation Trial at JPO Invalidation Defense in Ct.

  7. 3.1.1994 Change-From Pre-Grant to Post-Grant • Changed in aiming fast grant • Pressure came from overseas • 1989 US Senate Resolution on problematic JP patent system • 1993 US-JP Framework for new Econimic Partnership • 1994 US-JP Agreement • Pre-Grant Opposition was found as impediment to fast grant • High burden on Examiners involved in Opposition was another pressure • ...The biginning of the end

  8. 3.2. 2003 Change-Post-Grant Opposition Abandoned... • Abandoned « to be merged into Invalidation Trial » in the course of dispute resolution reform within Dispute Resolution sub-committee in METI Industrial Structure Council • Treble tracks after grant was found complicated and duplicated • NO Estoppel between Post-Grant Opposition and Invalidation Trial, thus one party can freely demand Invalidation Trial again after he lost in the opposition or even simultaneously on an identical ground • NO joinder between Opposition and Invalidation Trial

  9. 3.2.2003 Change-Post-Grant Opposition Abandoned • Post-Grant Opposition was less popular than Pre-Grant one and criticized as unfriendly for third party requester • Post-Grant Opposition was no more the same one as Pre-Grant Opposition • Post-Grant Opposition was highly ex parte, while Pre-Grant Opposition was closer to inter partes • Once the requester filed opposition, he was no more notified of patentee’s amendment/brief • Post-Grant Opposition was designed to be differentiated from Invalidation Trial

  10. 3.3. Comparison in Third Party Reviews before JPO

  11. 3.4.What Was Expected in 2003 Change • In 2003 change, Invalidation Trial System was enhanced to cover public participation function of opposition • Real interest has been no more required • Average trial duration shortened (about 12 months or less) • Users preferred more participation to proceedings • Accordingly, Post-Grant Opposition was assumed no more necessary and replaceable by enhanced Invalidation Trial • ...Really??

  12. 3.5. What Happened after 2003 Change

  13. 3.5. What Happened after 2003 Change

  14. 4.1.Present Measures Available for Third Party Review • Enhanced Third Party Observation • Broad range of grounds (eligibility, novelty, inventive-step, description requirement, new matter introduction...) (Ordinance Rule 13) • Can be filed anonymously • Patent/non-patent document submission • With reasons/arguments on unpatentability • When to be examined is publicly accessible so that third party can submit document in due course (http://www.deux.jpo.go.jp/ssearch/search.htm) • After 18 month Laid-open Publication; or • Post-Grant: Submitted documents are just to be docketed for public inspection

  15. 4.1.Present Measures Available for Third Party Review • Long- and well-established Invalidation Trial • Anyone can demand, not necessarily by real party in interest • NO limitation to grounds for demand • No threshold to commence proceeding • Fast and scheduled proceeding (ave. 12 months) • Decision by collegial body of BOA Examiners is credible • Inter partes proceeding assures a chance of demandant’s subsequent argument after demand • Oral proceeding after both parties’ assertions • Inexpensive official fee (JPY49,500+@JPY5,500/claim) • No Estoppel, only subsequent demand by same party on identical ground + ref. is prohibited (Amended Art.167) • Reliable tool for third party validity review in terms of dispute resolution...

  16. 4.2.Revisiting Another Aspect of Third Party Review… • Public participation in patenting • For Quality Patent • Users need something inbetween • Less burden • More preventive • Before actual controversy • For certain time of period • Anonymous demand • Good for training for practitioners • Enhanced Invalidation Trial is not yet a full replacement of old opposition in terms of public participation...

  17. 5.1.Ongoing Discussions on Public Participation in Patenting… • Report from JPO Commissioner’s private Patent System Study Group (2009.Dec.) • Enhancement of Third Party Review was discussed • Pros and cons • Post-/Pre-Grant Review should be introduced • Current examination quality is satisfactory, no need to introduce public participation • Discussing adequacy of abandonment of opposition should be sensitive • Proposals from secretariat • A: « ex parte Invalidation Trial for certain period of time » • B: « JPO Commissioner’s discretionary Reexamination »

  18. 5.1.Ongoing Discussions on Public Participation in Patenting • Report from JPO Commissioner’s private Patent System Study Group (2009.Dec.) • No consensus • « Discussion carried over » • Not addressed by 2011 Amendment to Patent Act • JPAA submitted and published affirmative proposal on third party review (2010.Feb.) http://www.jpaa.or.jp/activity/appeal/2010/pdf/iken_tokkyoseidokenkyukai.pdf • « Pre-Grant Cooperating Examination system » • Publication of allowable application on the Internet • 2-3 months for third party submission • Examination resumes and to be finished within 6 months

  19. 5.2.Wrap-up • In order to achieve Quality Patent and to keep examination system sustainable, enhancing third party review is practical solution in light of time constraints and limited examination resources • Applications/patents that are drawing public attention may be allowed to draw certain extra work by the Office • In order to eliminate excessive burden on Examiners/patentees, threshold to commence, Estoppel or prohibition of double jeopardy may work

  20. Kay KONISHI NICHI-EI Patent and Trademark Attorneys, P.C. Konishi@p-nic.com

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