Trial for Patent Invalidation in Japan: Tips for Making it a Success

1. Circumstance Surrounding Trial for Patent Invalidation

◆ Changes in the Number of Requests for Trial for Patent Invalidation

The recent changes in the number of requests for trial for patent invalidation filed in Japan are as follows:

2020: 121

2019: 113

2018: 159

2017: 161

2016: 140

(Source: The JPO, Japan Patent Office Annual Report 2021)

◆ Transition of Patent Invalidation Rate

Owing to the recent pro-patent trends in Japan, the recent patent invalidation rate is about 20 percent, whereas the rate was about 50 percent in 2005.

2. Institution for Correction in Invalidation Trial

In a trial for patent invalidation in Japan, a request for correction to correct the scope of claims, etc. can be filed only within a designated period while the trial is ongoing.

If the correction upon the request is accepted, it is deemed that the establishment of a patent right has been registered within the corrected scope of the claims. In other words, the patent right after the correction can be retroactively valid.

3. Flow of a Trial for Patent Invalidation

As shown in the flowchart of a trial for patent invalidation, first, a demandant of the trial submits a written request for trial (A), and this is when a trial for patent invalidation is commenced.

After the panel of trial examiners conducts a formality check (B), the chief trial examiner gives the demandee (patentee) an opportunity to submit a written reply (C).

In response, the demandee submits a written reply (D). The demandee is also allowed to file a request for correction where necessary, such as the scope of claims (E).

Subsequently, the panel of trial examiners conducts a documentary proceeding (consideration on the merits) based on the reasons for invalidation asserted in the request for trial, as well as the written reply, the written request for correction submitted by the demandee, and the corrected part such as the scope of claims (F).

An oral proceeding is conducted after the documentary proceeding (G).

(Another additional documentary proceeding may be conducted before proceeding to the oral proceeding. In this additional documentary proceeding, the demandee may be able to request a correction.)

Based on the oral proceeding, the panel determines whether or not the case has reached the point at which a trial decision may be rendered, and if yes, an advance notice of trial decision is delivered to both the demandant and demandee of the invalidation trial (H, H’, H’’).

The demandee having received the advance notice of trial decision can file a request for correction, as need arises, such as of the scope of claims (J).

Upon request for correction filed by the demandee, the panel of trial examiners conducts an examination based on the written request for correction and the corrected part, such as the scope of claims (K).

Based on the examination, the panel determines whether or not the case has reached the point at which a trial decision may be rendered (L), and if it is determined that the case has not yet reached the point, the demandant is given an opportunity to make a refutation (M). With this opportunity, the demandant of the invalidation trial can submit a written refutation (M’).

On the other hand, if it is determined that the case has reached the point at which a trial decision may be rendered, a notice of conclusion of the trial examination is delivered to both the demandant and demandee of the invalidation trial (N), and a trial decision is made (O).

4. Key Points for Having a Trial for Patent Invalidation Proceeded Smoothly

In a case where a request for correction is filed after the oral proceeding and the demandant of the invalidation trial is given an opportunity to make a refutation, the demandant of the invalidation trial is required to take appropriate action (to make a counter-argument) in a short period of time.

Therefore, considering the possibility that the patentee will file a request for correction after the oral proceeding, it is important for the demandant of the invalidation trial to appropriately watch whether a request for correction has been filed, and if the request has been filed, it is important to timely know when the request was filed.

If it is better to investigate additional invalid materials, it is necessary to promptly investigate additional invalid materials while taking into account the process of the trial.

In order to surely win your trial for patent invalidation even if the demandee files a request for correction, it is recommended that you have your trial handled by a patent firm that is fully familiar with not only the trial for patent invalidation but also with investigating invalid materials.

Investigation of Invalid Materials by Nagoya International Patent Firm

As described above, although there are only about a hundred and several dozen requests for trial for patent invalidation a year in Japan, Nagoya International Patent Firm has been frequently entrusted to handle trials for patent invalidation. Thus, we are resourceful and one of the Japanese patent firms that are able to manage in the most effective manner.

Regarding investigations, we have a department specialized in the investigation and an investigation team, and we have a system in place to conduct a prompt and high-level investigation of invalid materials.

◆ Advantages of Our Firm in Investigating Invalid Materials

✔ We will properly grasp the process of an ongoing examination (and trial) and check thoroughly to find if there has been any negligence or omissions in the examination at the JPO.

✔ We are skillful at narrowing down items for investigation.

✔ The extracted invalid materials are evaluated (judged) with high accuracy as to whether they are appropriate as invalid materials by analysis based on our abundant achievements and experiences.

◆ Our Stable and Reliable Services

We have a good reputation in investigating invalid materials, and have been entrusted by large companies on a regular basis.

Our firm is conversant with not only the trial procedure but also with investigation of patent invalid materials, and has abundant achievements, experience and high-level skills in the trial for patent invalidation.

Please feel free to contact us for inquiries, requests, consultations, etc. pertaining to the trial for patent invalidation and the investigation of invalid materials.

Edited by Shoichi Miyamoto

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