A law partially amending the Japan Patent Law etc. (Act. 63 of June 8, 2011) was enacted and promulgated on May 31, 2011. The law will come into effect within a period of time not exceeding one year as from June 8, 2011.
The amendments are as summarized below.
1. Prohibition of demanding a Trial for Correction once a suit against a trial decision to invalidate the patent has been lodged before the Tokyo High Court (Article 126 of the Patent Law) [1]
Notes: i) Demanding a Trial for Correction after having lodged a suit against a trial decision for invalidation is prohibited while providing the patentee with an opportunity to file a “Demand for Correction” in the trial for invalidation proceedings at the Japan Patent Office. The opportunity enabling the patentee to file a “Demand for Correction” is provided by the Japan Patent Office by way of issuing a prior notice of a decision to invalidate the patent if the collegial body of trial examiners has reached the position of decision for invalidation.
ii) New course of proceedings (Trial for Invalidation ð Suit against a trial decision to invalidate the patent ð Reopening Trial for Invalidation) under Article 126 of the Patent Law as amended is illustrated as follows.
Related Articles as revised or newly established: Article 134bis, 164bis, and 181 of the Patent Law
2. Restriction on the assertion in action for a Retrial[2] (prohibition of taking up again a dispute that has been dealt with) (Article 104quarter of the Patent Law)
Notes: In the case where after a final and binding judgment in an infringement suit for a patent right has become conclusive, the infringement retroactively turns into non-infringement in the event, e.g., the decision for invalidation of the patent right, on which patent right said suit was lodged becomes final and conclusive or the decision in a trial for correction becomes final and conclusive, it is prohibited for a party who was a party in the infringement suit before the court to demand a retrial to dispute the judgment as concluded based thereon.
ï Exception to Act 338(1)(viii) of the Code of Civil Procedure
3. Assertion of invalidation of a patent right made by way of defense by a defender in a patent infringement suit when it is recognized that a patent right as used in the suit should be invalidated by a trial for invalidation of registration of extension of term (Article 104ter of the Patent Law)
Notes: In a suit for the infringement of a patent right or an exclusive license, if a defender asserts the invalidation of the patent right by way of defense and said patent is recognized as one that should be invalidated by a trial for invalidation of registration of extension of term[3], a patentee or an exclusive licensee may not exercise his/her right against the adverse party (in other word, the defender can assert the exercise of the patent right or the exclusive license to be dismissed).
4. Limitation of persons affected by “not twice for the same (ne bis in dem)” principle as the effect of a final and conclusive trial decision (Article 167 of the Patent Law)[4]
Notes: i) The persons affected by “not twice for the same” principle as the effect of a final and conclusive trial decision are limited to the parties to, and the participants in a trial for invalidation.
ii) The time when “not twice for the same” is effective, is changed from “when a final and conclusive trial decision has been registered” to “when a trial decision has been made final and conclusive”.
5. Trial for Correction / Demand for Correction by each claim or by each group of claims (Article 126 of the Patent Law)
Notes: A Trial for Correction and a Demand for Correction may be demanded and filed by each claim. As for a group of claims consisting of an independent claim and its dependent claim(s), the Trial for Correction and the Demand for Correction must be demanded and filed by each group.
6. Duly countering the parties of a non-exclusive license (Article 99 of the Patent Law)[5]
“A non-exclusive license shall also have the effect against anyone who has acquired the patent right or the exclusive license or the exclusive license on such a patent after its occurrence.”
Notes: After the amendment, it is possible for a non-exclusive licensee to counter third parties without registration of the non-exclusive license.
(However, please note there are some cases where a proof of the date of occurrence of a non-exclusive license is required.)
Before the amendment, countering third parties is not possible unless the non-exclusive license is registered.
7. Claim of a transfer of a patent right which patent has been granted contrary to the provision concerning Joint Applications or to Misappropriated Application. (Article 74 of the Patent Law)
Notes: i) A person who shall be entitled to have a right to obtain a patent may claim a transfer of all or part of the patent right to a patent rightholder (a person who plagiarized other’s invention and filed it as its inventor was he/she or a third party, and so on). (Before the amendment, a claim of a transfer was allowed on the basis of the patent rightholder’s unjust enrichment.)
ii) The transfer shall be effective retroactive to the time when the patent right was registered.
iii) Protection of a patent rightholder etc. without knowledge[6] by granting a statutory non-exclusive license (Article 79bis of the Patent Law)
iv) A person who may demand a Trial for Invalidation of a patent right which patent has been granted contrary to the provision concerning Joint Applications or to Misappropriated Application, is limited to a person who shall be entitled to have a right to obtain a patent (Article 123(2) of the Patent Law).
v) A person other than a person who shall be entitled to have a right to obtain a patent may assert the invalidation of a patent right by way of defense in a patent infringement suit even if the ground for invalidation concerns either being contrary to the provision concerning Joint Applications or Misappropriated Application (Article 104ter (3) of the Patent Law).
vi) The status of prior application is admitted to Misappropriated Application (deletion of Article 39(6) of the Patent Law[7]).
8. Expansion of a case which the exception of lack of novelty of invention shall apply to (Article 30(2) of the Patent Law)
“originating from the action of a person who has a right to obtain a patent”
Notes: Those originating from the action of a person who has a right to obtain a patent are:
Ÿ Presentation at a study meeting no matter how the presentation is made orally or in writing (which study meeting does not need the designation as being held by a scientific body, by the Commissioner of the Patent Office.);
Ÿ Distribution / sales of product etc.;
Ÿ Appearance on a press conference / TV or Radio programs;
Ÿ Publication of the contents which was explained behind closed doors, by other media
(In the case of the application claiming an internal priority right, the old law applies to the invention that refers to the basic application before the new law comes into effect.)
9. Others
Ÿ Expansion of the reduction or exemption system of the official fees etc.
After the amendment: Person to be applied “an individual or a corporation who is short of funds”
ï Before the amendment: “a person who is short of funds”
After the amendment: Period of reduction or exemption “1st year up to 10th year” (regarding the reduction or exemption of annuities)
ï Before the amendment: “1st year up to 3rd year”
Ÿ Reduction of design registration fee for 11th to 20th year
After the amendment: “16,900 JPY / year”
Before the amendment: “33,800 JPY / year”
Ÿ Reconsideration of remedies[8] for applicants and patentees
After the amendment: (provided that such delay was) caused by “justifiable reasons”
Before the amendment: “reasons outside his/her control”
i) Expiration of period for submitting the translation of an application in foreign language (Article 36bis (4) of the Patent Law)
ii) Restoration of patent right by late payment of annual fees (Article 112bis (1) of the Patent Law)
iii) Expiration of period concerning International Applications under the Patent Cooperation Treaty (Article 184quarter, Article 184novies and Article 184undecies of the Patent Law)
Ÿ Trademarks
Ÿ Abolishment of the provision that prohibits the registration of a new trademark for one year after the extinguishment of other person’s trademark right which trademark is identical with the new trademark (Article 4(1)(xiii) of the Trademark Law)
Ÿ Amendment of the provision that concerns a mark at the exhibition held by the Government etc. (Article 4(1)(ix) of the Trademark Law) (elimination of “(an exhibition) has been designated by the Commissioner of the Patent Office”, that is, the designation by the Commissioner of the Patent Office is not mandatory.)
(end)
by R. Enomori
[1] Under the existing Patent Law (i.e., Patent Law amended in 2003), a patentee may demand a Trial for Correction at the Japan Patent Office simultaneous with or within 90 days after a suit against a trial decision to invalidate his/her patent was lodged at the Tokyo High Court. The purpose of demanding the Trial for Correction is to correct voluntarily the specification or drawings of his/her patent which constitute the basis for the decision by the Japan Patent Office for invalidation. In a case where the patentee has demanded or intends to demand a Trial for Correction for his/her patent on which the lawsuit has been lodged, the court may reverse the trial decision by their ruling in order to remand the case to the trial procedure at the Japan Patent Office, if the court recognizes that the case should appropriately be reconsidered during the trial proceedings for invalidating the patent in question. This sending the case back from the High Court to the JPO leaves room for so-called “playing catch” between the High Court and the Japan Patent Office which is time/money-consuming. In the Amendment as enacted on May 31, 2011, to avoid such “playing catch”, demanding a Trial for Correction after having lodged a suit against a trial decision for invalidation is prohibited while providing the patentee with an opportunity to file a “Demand for Correction” in the patent invalidation trial proceedings at the Japan Patent Office.
[2] Retrial is a special method of objection where some parties etc. as concerned who are dissatisfied with the final and conclusive judgment in a patent infringement suit before the Court, may demand the revocation of that judgment and a retrial in the infringement matter before the Court.
[3] Article 104ter of the Patent Law was amended to contain a phrase “invalidated by a trial for invalidation of registration of extension of term of a paten right” in addition to “invalidated by a trial for patent invalidation”. This means that the defense can be made without a decision of a trial for invalidation of registration of extension of term of the patent right from the Japan Patent Office.
[4] The law before amendment provides “When a final and conclusive trial decision in a trial for patent invalidation or in a trial for invalidation of registration of extension of term has been registered, no one may demand a trial on the basis of the same facts and the same evidence.” The limitation of persons (“no one”) affected by “not twice for the same” as the effect of a final and conclusive trial decision holds even a person not party to the invalidation trial. This means the elimination of an opportunity for a third party to demand a trial for invalidation. To protect the rights of the third party, the law was amended to limit the effect (“not twice for the same”) of a final and conclusive trial decision so that persons other than the parties to, and participants in, the invalidation trial may demand a trial. The law after amendment reads, “When a trial decision in a trial for patent invalidation or in a trial for invalidation of registration of extension of term has been made final and conclusive, the parties thereto, and participants therein, may not demand a trial on the basis of the same facts and the same evidence”.
[5] Under Article 99(1) of the Patent Law before amendment, the registration of a non-exclusive license gives the licensee a right to claim his/her position as a non-exclusive licensee to a person who acquires a patent right subsequently after a licensee obtains a non-exclusive license for the same patent right. The licensees dislike disclosing the information to the public such as the amount of the consideration and the name of a non-exclusive licensee, although the disclosure of such information is mandatory for the entries of the registration as one of items of registration. From the legal side, to make it easy to use a system for registering a non-exclusive license, the revision was made in 2008 to the Patent Registration Order (Article 45(1)) for the limitation of items that the registration for a non-exclusive license must contain such as the elimination of the amount of the consideration from the necessary items for registration. By the revision, among the items registered in a non-exclusive license registration, the name and address of licensee, and the scope of license will be kept secret to the parties other than “certain persons concerned”. Therefore, the third party may look at such limited matters and assume “some license has been set” at most.
[6] A person who has already acquired the patent right or the exclusive license on such a patent, or the non-exclusive license on such a patent or on such an exclusive license without knowledge of a fact that the patent falls under the requirements for claiming the transfer before the registration of a patent transfer
[7] Article 39(6) (deleted) “A patent application or a utility model application filed by a person who is neither the inventor nor the creator nor the successor in title to the right to obtain a patent or utility model registration shall, for the purposes of Subsections (1) to (4), be deemed not to be a patent application or a utility model application.”
[8] Remedies for failure to comply with the formalities or deadlines in procedures for patents and patent applications
