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Fordham Intellectual Property Law Institute 19 th Annual Conference Intellectual Property Law & Policy April 28-29, PowerPoint Presentation
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Fordham Intellectual Property Law Institute 19 th Annual Conference Intellectual Property Law & Policy April 28-29, 2011 Eiji Katayama. ABE, IKUBO&KATAYAMA. 阿部・井窪・片山法律事務所. Patent Law Reform in Japan. ABE, IKUBO & KATAYAMA. 1. History.

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Fordham Intellectual Property Law Institute19th Annual ConferenceIntellectual Property Law & PolicyApril 28-29, 2011Eiji Katayama

ABE, IKUBO&KATAYAMA

阿部・井窪・片山法律事務所

Patent Law Reform in Japan

ABE, IKUBO & KATAYAMA

1

history
History

Commissioner Suzuki’s Leadership to form private committee for reform

2009.1

2009.12

Committee Report

2010.4

Official Committee for Reform

2011.2

Official Committee Report

2011.3

Draft Amendment of Patent Law submitted to Diet

ABE, IKUBO & KATAYAMA

major points of committee report and amendment of law

Items with * are included in the current draft amendment of law

Major Points of Committee Report and Amendment of Law

*

ⅠPromotion of Utilization of Patents

  • Reconsideration of License Registration System
  • Exclusive License System
  • Admitting Pledge on Right to Obtain Patent

ⅡEffective and Proper Resolution of Dispute

  • “Double Track” regarding Patent Validity Examination
  • How to treat Retrial based on Invalidation Judgment done through Invalidation Trial after the Final Judgment of Patent Infringement Lawsuit
  • Correction during Patent Invalidation Trial
  • Effect of Decision of Patent Invalidation Trial to the Third Parties
  • Prohibition of Plural Invalidation Trials by Same Person
  • Partial Settlement of Trial Decision and Correction

Ⅲ Proper Protection of Rightholder

  • Restriction of Injunctive Right
  • Relief for Usurped Application
  • Evidence Collection and Protective Order in Inventor’s Remuneration Suit

Ⅳ Promotion of Convenience for Applicants

  • Introduction of Relief to conform with PLT
  • Easier Application for Universities and Researchers
  • Grace Period
  • Reconsideration of Patent Fees

*

*

*

*

*

*

ABE, IKUBO & KATAYAMA

*

major points of committee report and amendment of law4
Major Points of Committee Report and Amendment of Law

Items with * are included in the current draft amendment of law

ⅠPromotion of Utilization of Patents

  • Reconsideration of License Registration System
  • Exclusive License System
  • Admitting Pledge on Right to Obtain Patent

*

ABE, IKUBO & KATAYAMA

farewell to license registration system
Farewell to “License Registration System”
  • Before Amendment
    • Licensees without registration may not assert their licenses against transferees if a patent is transferred to others.
    • However, very few licenses were registered because of confidentiality of licenses and expensive fees for registering large number of patents.
  • After Amendment
    • Registration System of Non-exclusive License is abolished.
    • Licensees will be protected without registration.
  • Issues
    • Industry wished harmonization.
    • Will the license agreement between the transferor (A) and licensee (L) be effective between the licensee (L) and the transferee (B)? Legal relationship remains unclear.

A B

L

ABE, IKUBO & KATAYAMA

effective and proper resolution of dispute

Major Points of Committee Report and Amendment of Law

ⅡEffective and Proper Resolution of Dispute

Items with * are included in the current draft amendment of law

  • “Double Track” of Patent Validity Examination
  • How to treat Retrial based on Invalidation Judgment done through Invalidation Trial after the Final Judgment of Patent Infringement Lawsuit
  • Correction during Patent Invalidation Trial
  • Effect of Decision of Patent Invalidation Trial to the Third Parties
  • Prohibition of Plural Invalidation Trials by Same Person
  • Partial Settlement of Trial Decision and Correction

*

*

*

ABE, IKUBO & KATAYAMA

double track change avoiding retrial
Double Track & Change avoiding Retrial
  • Double Track is to be maintained
    • Industry wished to maintain Double Track.
  • Contradiction
    • Contradiction between the two tracks should practically be resolved by IP High Court.
    • However, under the present law, there is a possibility that later invalidation of a patent would reverse the infringement final judgment.
    • This situation will be avoided by amendment of law.

ABE, IKUBO & KATAYAMA

correction during patent invalidation trial
Correction during Patent Invalidation Trial

IP High Court

JPO

  • Present System

Invalidation Trial Decision

Appeal to IP High Court

(90 days)

Correction Trial

Correction Trial Final Decision

Cancellation Decision of Invalidation Decision

Another Invalidation Decision

Appeal

Appeal Decision

correction during patent invalidation trial9
Correction during Patent Invalidation Trial

IP High Court

JPO

  • New Law

Invalidation Trial

Advance Notice of Trial Decision

Correction Request of Claim

Trial Decision

Appeal

Correction Trial is prohibited

Appeal Decision

correction during patent invalidation trial10
Correction during Patent Invalidation Trial
  • Issues
    • “Catch Ball” phenomenon will be avoided.
    • Patentee needs to decide whether to correct claim when “Advance Notice of Trial Decision” received.

ABE, IKUBO & KATAYAMA

proper protection of rightholder

Major Points of Committee Report and Amendment of Law

Ⅲ Proper Protection of Rightholder

Items with * are included in the current draft amendment of law

  • Restriction of Injunctive Right
  • Relief for Usurped Application
  • Evidence Collection and Protective Order in Inventor’s Remuneration Suit

*

ABE, IKUBO & KATAYAMA

restriction of injunctive right
Restriction of Injunctive Right
  • Issues
    • Whether to restrict injunction right?
    • Opinions were divided.
    • Considering low winning rate of patentees in Japan, majority does not wish to further weaken patent right.
  • Conclusion
    • Restriction was not introduced in amendment.

ABE, IKUBO & KATAYAMA

major points of committee report and amendment of law13
Major Points of Committee Report and Amendment of Law

Items with * are included in the current draft amendment of law

  • Introduction of Relief to conform with PLT
  • Easier Application for Universities and Researchers
  • Grace Period
  • Reconsideration of Patent Fees

Ⅳ Promotion of Convenience for Applicants

*

*

*

ABE, IKUBO & KATAYAMA

thank you
Thank you!

Eiji Katayama

eiji.katayama@aiklaw.co.jp

ABE, IKUBO & KATAYAMA