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[12] Patent Law Revised Regarding Infringement
Litigations
(effective as from April 1, 2005) |
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A revision of
the Patent Law pertinent to patent infringement litigation is taking effect as
from April 1, 2005. Summarized below are points to note of the
revision.
1. In patent infringement litigation, enforcement of the
patent is now denied where the patent is expected to be invalidated in an
invalidation trial held by the JPO [104-3(1)]. The court, with this regard, may
decline a party's argument asserting such an expectation of invalidation if the
argument is deemed to have been filed simply for the purpose of delaying the
proceeding of the trial [(2)]. Where the patent infringement court has been
notified from the JPO that an invalidation trial has been filed of the patent at
issue, the court must notify the JPO of the fact that the argument over
invalidation of the patent has been filed with the court [168(5)], and the JPO
may then request a necessary copy of the record of the infringement litigation
[(6)].
2. When, in patent infringement litigation, the court, upon a
party's demand, orders a holder of a document to submit it because the document
is necessary for finding infringement or calculation of damages but the holder
resists the order asserting a justifiable cause to resist, the court can
disclose the document, presented in camera, to the opponent, his agent and his
legally admitted assistant provided that it is necessary for the court to do so
to get their opinion in order to decide whether the alleged cause of resisting
the order is justified [105(3)].
3. Secrecy Order:
(1) Where, in
patent infringement litigation, a party has moved for a Secrecy Order producing
prima facie evidence that preparatory pleadings or evidences he is about to file
contain a trade secret, that their disclosure to a third party could cause his
business activities a disadvantage, and that their disclosure and use to and by
a third party should therefore be restricted to prevent such a disadvantage from
occurring, the court may decide to order the other party, his agent or legally
admitted assistant to keep the trade secret insofar as it is disclosed after the
filing of the motion. The order takes effect upon the notification of the
decision. An Immediate Complaint may be filed (within one week) against a
decision declining such a motion [105-4]. Disobedience to a Secrecy Order will
open a criminal case based on other party’s filing of complaint and could result
in a penalty of imprisonment of up to three years or a fine of up to JPY
3,000,000 [(4)].
(2) A motion for countermand of a Secrecy Order may be
filed by a party who has received, or moved for, the Secrecy Order on a ground
that the requirements for issuing the order are not met [105-5(1)]. An Immediate
Complaint may be filed against a decision on the motion for countermand of a
Secrecy Order [(3)]. A decision countermanding a Secrecy Order takes effect when
the order becomes final and conclusive [(4)].
(3) When access to a record
of the litigation for which record a Secrecy Order has been issued is requested
by a party to the litigation who is not the addressee of the Secrecy Order, and
access to which record is restricted to the parties of the litigation under
Section 92(1) of the Code of Civil Procedure, the request of access to the
record is promptly notified to the party or parties who moved for the Secrecy
Order [105-6(1)] unless he or all of them have given their consent on the access
to the record, and the access is not permitted until (a) the lapse of two weeks
from the request or, if applicable, (b) a decision on a motion filed for a
Secrecy Order addressed to that party seeking the access becomes final and
conclusive [(2)].
4. Closed-door Interrogatory of a party: Ｗhere, in
patent infringement litigation, a party, because of his trade secret, would not
be able to give a sufficient statement in an open-court interrogatory concerning
a fact that could provide a basis for judgment of whether or not the alleged
infringement was committed and therefore proper judgment would be impossible in
the open court, a closed-door interrogatory may be held by consent of all the
judges [105-7(1)]. In this case, the court can invite the party to present a
paper outlining what is to be stated in the interrogatory [(3)]. While no other
party may request disclosure of the content of the paper [(3)], the court, where
it considers it is necessary to have an opinion of the other party, can disclose
the content to the other party [(4)].
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| [7] Patent Application May Be Filed Based on Utility
Model Registration (as from April 1, 2005) |
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Under the
revised law, it is possible to file a patent application based on an already
registered utility model. The revision is applied to a utility model
registration having a filing date on or after April 1, 2005. Points to note are
as follows:
(1) Provided that all the following requirements (a)-(e)
are met, the holder of a utility model right can file an application for patent
based on his utility model registration while holding the benefit of its filing
date:
(a) that the application is filed within three (3) years after the
filing date of the application for the utility model registration,
(b)
that the holder of the utility model registration has not requested a Technical
Evaluation (a procedure to provide JPO’s opinion on novelty/unobviousness) of
his utility model,
(c) that, where the holder of the utility model
registration has been notified by the JPO of a request for Technical Evaluation
filed by a third party against his utility model, the filing date of the patent
application is no later than thirty (30) days after the date on which the holder
received the notice,
(d) that where a request for an Invalidation Trial
has been filed against his utility model registration and the term for filing a
first response is set and notified, the filing of the patent application is done
no later than the due date of fling such a response, and
(e) that, where
applicable, the holder of the utility model registration has received a consent
on filing such a patent application from any interested party concerning the
utility model right, i.e., a contract-based exclusive or non-exclusive licensee,
a pledgee, or an employee as a holder of a statutory non-exclusive license for
the utility model right (where the holder of the utility model right was an
employee and was granted the right based on his activity as an
employee).
(2) Upon filing a patent application according to the above,
the holder of the utility model right is required to abandon the right.
(3) The patent application filed above is deemed to have been filed on the
filing date of the utility model application with regard to the content that
falls within the scope of disclosure in the utility model application as filed,
(4) In the patent application filed above, a request for examination
may be filed within thirty (30) days after the filing date of the patent
application, even after the lapse of the three (3)-year statutory term for
filing such a request.
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| [5] Utility Model Term Extended to 10 Years (as from
April 1, 2005) |
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_ (1) The
duration of utility model right is extended to 10 years calculated from the
filing date of the application upon which the right is granted.
_ (2) The
upper limit of the term during which a patent or design application can be
converted to a utility model application is extended to 9 years plus 6 months
calculated from the filing date of the parent application.
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| [3] Restriction Eased on Correction of Registered Utility
Model (as from April 1, 2005) |
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_ (1) Though
only once, the holder of a utility model registration may now correct its
“specification/claims/drawings”, provided that a demand for correction is filed
no later than 2 months after he first receives a Technical Evaluation Report on
his utility model registration, and not after the lapse of a term notified for
the first response in an Invalidation Trial.
_ (2) A correction is now
also allowed that is aimed to narrow the claims, amend obvious clerical errors
or clarify the descriptions in a registered utility model.
_ (3) In
connection with the widened range of correction, a new set of grounds of
invalidation of a utility model registration are added, which includes violation
of the limitation of the aim of correction, introduction of a new matter, and
substantial expansion or alteration of the claims.
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| [1] Structure Altered of Patent Invalidation/Correction
Trials (effective as from January 1, 2004) |
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A revision of
sections of the Patent Law relating to procedures for invalidation and
correction of issued patents has been in effect since January 1, 2004. The
revision, aimed to greatly improve the process of reviewing the validity of a
patent, is accelerating the proceedings in the Japanese Patent Office (JPO) and
the Court.
Important points to note of the revision are:
_ _ (a)
Abolition of the ex parte patent opposition procedure for reviewing the validity
of a newly issued patent,
_ _ (b) Prohibition as a general rule of filing a
demand for a Correction Trial (an ex parte procedure in the JPO for correction
of the claims and/or specification of a patent) after the JPO’s decision of an
Invalidation Trial of the patent is rendered and until it becomes final and
conclusive, and introduction of a newly set exceptional 90-day window-period for
allowing filing of such a demand, which window-period starts on the date on
which an appeal is filed with the Tokyo High Court against the JPO’s decision of
the Invalidation Trial,
_ _ (c) Grant of discretion for the Tokyo High Court
to vacate a JPO’s decision invalidating a patent and remand the case to the JPO,
on the ground of patent holder’s “filing” of a demand for a Correction Trial of
the patent at issue,
_ _ (d) Unification of the trial for correction thus
demanded and the resumed Invalidation Trial on remand, and
_ _ (e)
Introduction of a supplementary occasion endowed by the JPO for requesting
correction in a resumed Invalidation Trial. Where JPO’s original decision
maintaining the validity of the patent was vacated by the Tokyo High Court, such
an occasion is endowed only if it is requested by the patent holder within one
(1) week after the court’s decision becomes final and
conclusive.
Transitional measures: The above revision is applied to
Invalidation Trials filed on or after January 1, 2004 as well as to Correction
Trials linked to such Invalidation trials. The pre-revision Patent Law continues
to be applied to those Invalidation Trials filed before that date until the
decision of the trials becomes final and conclusive.
As a result of the
abolition of the Patent Opposition system, Invalidation Trial is now the sole
means in the JPO to attack a competitor’s patent. (For trademarks, the
opposition system remains intact.)
On the part of a patent holder, it is
highly important to keep it in mind that the period for demanding a Correction
Trial after a decision of an Invalidation Trial is now very limited (i.e., 90
days), and that if he overlooked the period after appealing the JPO’s
invalidation decision, he will, therefore, not have a chance for correction of
his patent any more and all that he can do will be to provide arguments against
the JPO’s decision. Should the court find no substantial ground in such
arguments for vacating the JPO’s decision, it would maintain the decision, thus
putting an end to the patent.
Thus, in an Invalidation Trial, it has
become highly important for a patent holder and his agent to clearly analyze the
issue from all directions while the Trial is pending in the JPO for predicting,
as far as possible, its likely decision that would come on the basis of the
current claims, and, at the same time, to estimate the possibility and effect of
every candidate of seemingly allowable correction of the claims and/or the
specification, thereby working out in advance a second strategy in preparation
for any adverse decision by the JPO, in order for never missing the chance for
making the most proper correction of the patent within the 90-day window-period
in the case where some correction is at least inevitable.
Meanwhile, in
another situation where a JPO’s decision maintaining the validity of a patent is
later vacated by the court, and there thus arises a substantial probability for
the patent be invalidated in a resumed Invalidation Trial, it should be noted
that the patent holder may correct his patent only if he immediately requests
the JPO a time frame during which to file a demand for correction in the resumed
Invalidation Trial. If no such a request for a time frame is filed within “one
(1) week” after the court’s decision becomes final and conclusive, the patent
holder will not have any more chance to correct his patent during the pendency
of the case in the JPO. Thus, in this situation, too, it is very important for
the patent holder and his agent to establishe, before the decision is rendered
by the court, a strategy to be followed in case the favorable decision by the
JPO maintaining the validity is
vacated.
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