HOME > IP INFORMATION > Patent & Utility Model > Reports & Topics > Amendments to Japanese Patent Law (Effective from January 1 and April 1, 2004) > 1) Integration of Dispute Resolution Systems with Patent Validity Determination(Detailed Information)
Amendments to Japanese Patent Law
(Effective from January 1 and April 1, 2004)
New Invalidation Trial System
Prior to January 1, 2004, there existed two systems for resolving disputes concerning the validity of a patent, namely, an opposition system and an invalidation trial system. However, these two co-existing systems increased complexity with respect to dispute procedures, increased the amount of time required for resolution of disputes, and costs to the involved parties.
In view of these problems, the opposition and invalidation trial systems were integrated into a new invalidation trial system on January 1, 2004. It is no longer possible to file an opposition against a patent even if the opposition period has not expired.
Comparison of features between the old systems and the new invalidation trial system are shown in Appendix A.
Furthermore, procedures for invalidating patents were changed to reduce the time for resolution of the validity of patents and to eliminate redundant procedures.
1. Integration of the Two Systems
In the old systems, the opposition system was ex parte while the trial system was inter partes. When an opponent filed an opposition against a patent, the opponent tended to be unsatisfied with the decision because the opponent could not take further steps after filing the opposition until the JPO made a decision. Further, if the decision upheld patent validity, the opponent could not file a suit against the decision but had to file an invalidation trial for the same grounds. In the new system, the opposition system was integrated into a new invalidation trial system. A demand for trial may be filed at any time and the trial system is inter partes. Accordingly, an interested party can take further steps to invalidate the patent at an earlier stage.
2. Requirements for Filing a Demand for Trial
In the new trial system, the party who files a demand for trial is required to specify the grounds for demand concretely in a demand for trial. Specifically, the opponent must specify:
1) facts that support the grounds for demand to invalidate a patent; and
2) the relationship between the facts and evidence.
When these statements are insufficient, the demand will be rejected only if the deficiencies are serious. This requirement will reduce time and costs for dispute resolution because the patentee can prepare for fully responding to the demand at an earlier stage.
3. Amendment on Demand for Trial
In 1998, the Japanese Patent Law was amended to prohibit amending a demand for trial, thereby preventing abuse of the system by those who file a demand. While this shortened the time for dispute resolution, there occurred a problem in that those demanding a trial had to file another demand for correcting errors in the originally filed demand.
Amendments to Japanese Patent Law are effective from January 1, 2004 for allowing trial demandants to amend the originally filed demand under certain conditions. The conditions for entry of an amendment are shown below.
1) The trial Examiner determines that the amendment will not cause a significant delay in dispute resolution.
2) The amendment fulfills one of the following two conditions:
(a) where the patentee demands correction of a patent and the trial demandant needs to correct or add new grounds for invalidating the patent; and
(b) where there are reasonable grounds for omission of the new argument or evidence in the initial demand and the patentee agrees with entry of the amendment.
When condition (b) is met and the amendment is entered, the patentee may respond to the amended demand and file a new demand for correction of the patent. Further, if a demand for correction of the patent is filed more than once in a single invalidation trial, the former demand(s) for correction are deemed to be withdrawn.
4. Procedures in a Case Where an Invalidation Trial and a Lawsuit Coincide
Procedures were changed to reduce the time for resolution of the validity of a patent and to eliminate redundant procedures in a case where an invalidation trial and a lawsuit occur simultaneously. Appendix B shows the differences between the old system and the new system. Three main changes are discussed below.
i) Limitation of time for demanding patent correction
Under the previous system, patentees could demand patent correction at any time unless an invalidation trial was pending before the JPO. This sometimes caused redundant invalidation trial procedures when the patentee filed a suit against the invalidation trial decision while demanding patent correction. Under the new system, however, the patentee may only file a demand for patent correction within 90 days from the filing of the suit.
ii) Remand of the case when patent correction is demanded after filing of a suit
Under the new system, when patent correction is demanded after filing of a suit against the invalidation trial decision, the court may remand the case to the JPO if the court determines that it is appropriate to let the JPO examine the legitimacy of the demand for correction and validity of the patent.
iii) Re-trial for invalidation after remand of the case to the JPO
When the case is remanded to the JPO, the JPO shall examine both the legitimacy of the demand for patent correction filed by the patentee and arguments newly filed by the trial demandant.