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AIPLA MWI Pre-Meeting January 22, 2012 Fujiko Shibata

Prohibition of Correction Trial before JPO after Action or cancelation of Trial Decision by JPO before IP High Court & Introduction of Advance Notice of Trial Decision by JPO and Request for Correction thereupon. AIPLA MWI Pre-Meeting January 22, 2012 Fujiko Shibata.

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AIPLA MWI Pre-Meeting January 22, 2012 Fujiko Shibata

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  1. Prohibition of Correction Trial before JPO after Action or cancelation of Trial Decision by JPO before IP High Court & Introduction of Advance Notice of Trial Decision by JPO and Request for Correction thereupon AIPLA MWI Pre-Meeting January 22, 2012 Fujiko Shibata Ayafune International Patents & Trademarks

  2. Correction Trial before JPO (1) Article 126 (1) The patentee may file a request for a trial for correction with regard to the correction of the description, scope of claims or drawings attached to the application; provided, however, that such correction shall be limited to the following: • (i) restriction of the scope of claims; • (ii) correction of errors or incorrect translations; • (iii) clarification of an ambiguous statement; & • (iv) change dependent claim to independent claim. Ayafune International Patents & Trademarks

  3. Correction Trial before JPO(2) • Article 126 (2) A request for a trial for correction may not be filed from the time the relevant trial for patent invalidation has become pending before the Patent Office to the time the trial decision has become final and binding; if the trial is filed for each claim, until all of the trial decision has become final and binding. Ayafune International Patents & Trademarks

  4. Correction Trial before JPO(3) Patent Issue Trial for Correction A Request for a trial of correction may not be filed Trial Invalidation of Patent Pending Final & Binding Trial Decision Ayafune International Patents & Trademarks

  5. Request of Correction in Trial for Invalidation of a Patent Before Revision Patent Issue A Request for a trial of correction may not be filed Trial Invalidation of Patent Pending Request for Correction Request for Correction Final & Binding Trial Decision Trial Decision Ayafune International Patents & Trademarks

  6. Catch Ball Phenomenon ! Before Revision Actions Against Trial Decision ATD Trial Decision Trial Decision Trial for Correction TIP TIP 30day 90day Ayafune International Patents & Trademarks

  7. Prohibition of Request for Trial of Correction before IP High Court Decision Actions Against Trial Decision Advance Notice of Trial Decision Trial Decision Request for Trial for Correction TIP Request for Correction 30day Ayafune International Patents & Trademarks

  8. Correction Trial before JPO(3) • Article 126 (3) When the claims attached to the request are corrected, a request for correction under paragraph (1) may be filed for each claim. In such a case, when the claims contain a group of inventions having a relationship as provided by Ordinance of the Ministry of Economy, Trade and Industry, the request shall be filed for each group of inventions. Ayafune International Patents & Trademarks

  9. Correction Trial before JPO(4) • What is the “group of inventions”? • (a) Independent claim & dependent claims • (b) Independent claim & multi-dependent claims • (c) Independent claims & dependent claim • (d) Combination of (a) to (c) • Unit of request for trial for correction or request for correction! Ayafune International Patents & Trademarks

  10. Correction Trial before JPO(4) Claims 1 1 1 (c) (b) (a) 2 2 2 3 3 3 Ayafune International Patents & Trademarks

  11. Summary-1 • 1. After pending of the action against trial decision, the request for trial of correction was prohibited. • 2. In the trial of invalidation of patent, announcement of decision is made before the decision and patentee may file the request for correction. Ayafune International Patents & Trademarks

  12. Summary-2 • If the claims include the group of inventions, the patentee should correct the claims for each group of inventions. • If the request for trial of correction is filed, it shall be withdrawn for any of the groups. Ayafune International Patents & Trademarks

  13. Thank you for your attention! Fujiko Shibata dania@ayafune.com Ayafune International Patents & Trademarks

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