Policy & Issues

What is Japan's newly introduced planned interactive hearing for patent invalidation trials?

A&JPatent 2020.07.10 17:31 Views: 1,656

2020-06-24 Won Da-hye, KOTRA Tokyo Trade Office

- From April 2020, Japan begins operating the planned interactive hearing within patent invalidation trial requests -
- Growing need for advance preparation regarding patent invalidation trial requests -

The Japan Patent Office (hereinafter JPO) defines a trial as "a higher-level review of the examination, serving the role of re-examining the determination made by the examiner, or the role of promoting the early resolution of disputes surrounding the validity of industrial property rights." The JPO is implementing various measures to fully carry out these roles and to secure highly reliable trial decisions, and from April 2020 it began operating the "planned interactive hearing (oral hearing)" within patent invalidation trials. This article examines the recent changes to Japan's patent invalidation trial and considers response measures for our companies.

What is Japan's patent invalidation trial?
It is a system under which an invalidation trial can be requested to render a patent unobtainable. In Japan, the targets of a patent invalidation trial are as follows.

1. Where it involves a foreigner not granted reciprocity by an interested party or an examiner
2. Where the patent requirements are not met
3. Where it is an invention for which a patent cannot be granted
4. Where another person filed an earlier application for the same invention

In Japan, a patent invalidation trial can be requested at any time regardless of the patent publication gazette date, but only an interested party (a person who suffered direct or indirect harm from the patent, or who made a similar invention or an identical product, etc.) may request it. When the trial request document is received from the petitioner, the trial request headquarters sends a notice to the respondent. The respondent must send a response document by the deadline set by the trial request headquarters. If, based on the respondent's response document, an agreement is reached with the petitioner, the patent invalidation trial is terminated. However, if no agreement is reached, the trial decision proceeds through the planned interactive hearing. The trial decision results are divided into an invalidation decision or a maintenance decision. If a party is dissatisfied with the decision, the case is transferred to the Intellectual Property High Court, where a trial decision cancellation suit can be pursued.

The trend in the number of patent invalidation trial requests in Japan declined somewhat from 159 cases in 2018 to 112 cases in 2019, a decrease of 47 cases or about 3.38% year on year. However, there are many reasons for concern in neglecting information related to patent invalidation trial requests on the grounds of this downward trend. This is because the economic and time losses that arise from being caught up in litigation even once cannot be ignored.

In this regard, through the advice of KOTRA Tokyo Trade Office's advisory patent attorney firm (ITOH INTERNATIONAL PATENT OFFICE), we aim to examine the content and necessity of the changes to Japan's patent invalidation trial operation.

Content and necessity of the changes to Japan's patent invalidation trial operation

ITOH INTERNATIONAL PATENT OFFICE

Since last month, the Japan Patent Office (JPO) has been operating the planned interactive hearing system in patent invalidation trials.

Below, we introduce the planned interactive hearing system, which was established to strengthen focused hearings.

1. Target cases and procedural requirements
For a planned interactive hearing to be conducted, with respect to a patent invalidation trial, i) there must be a request by a party that the chief administrative judge deems necessary, or the chief administrative judge must deem it necessary on his/her own authority, and ii) both parties (the petitioner and the respondent) must consent to the planned interactive hearing.

In other words, even if the chief administrative judge recognizes the necessity of a party's request, the planned interactive hearing will not be established if the requesting party's counterpart does not consent, or even if the chief administrative judge judges it on his/her own authority, if either party does not consent.

2. Purpose and operational content
Until now, in the case of invalidation trials, even when an oral hearing was held, new arguments or evidence were often submitted by the parties afterward, so that the issues were not organized and the hearing period became inefficiently long.

This is not only a loss in terms of time and cost for all those involved in the trial, such as the parties, intervenors, and the trial panel, but it also cannot be said to be free of concern from the standpoint of IP policy and industrial policy that seeks to spur the innovative capacity of small and medium-sized enterprises and venture companies in order to establish a virtuous cycle in the industrial ecosystem of technology-based innovation.

In the planned interactive hearing introduced this time, before conducting a full-scale oral hearing, both parties and the trial panel gather privately (also possible remotely, non-face-to-face) and, for example, ① decide the hearing schedule at the time the duplicate copy of the trial request document is served on the respondent, ② organize the issues at the time the duplicate copy of the response document is served on the petitioner, and ③ thereafter make a final confirmation of the issues, thereby efficiently narrowing down the issues through planned dialogue.

In addition, the so-called non-commitment rule applies; that is, only matters that the trial panel deems necessary and that both parties have agreed upon are recorded in the hearing record, and matters not recorded in the hearing record are not regarded as having been argued by the parties, so that the organization of issues is promoted through active and proactive statements by the parties.

3. Comment
Litigation economy is a very important and practical issue for small and medium-sized enterprises and technology-based startups. Fortunately, in IP-advanced countries such as the IP5 (the five countries or regions leading the world's intellectual property), much research and effort is being devoted in various ways to resolving the parts that are inappropriately disadvantageous to the technology resources of SMEs and ventures in the protection, exercise, and utilization of rights—including this litigation economy issue—so that technological innovation can continue through human creativity and ability. In that respect, for our SMEs, startups, and ventures, an active mindset and willingness to act, catching up on and embracing the latest systems and operations of each country as much as possible and putting them to use, can be said to be important.

The fact that the operation of the planned interactive hearing has begun in Japan's patent invalidation trials this time is, we believe, meaningful as a piece of information for our companies who are considering invalidating a competitor's patent right in the Japanese market, or who hesitate to file in Japan for fear that being subjected to a trial or litigation—even after working hard to secure a patent in Japan—would become a burden in terms of time and cost.

Implications

Among invalidation trials related to intellectual property rights, the number of patent invalidation trials is not large. However, there is a point our companies must absolutely pay attention to. Even if an invalidation decision or a maintenance decision is issued through the planned interactive hearing, a trial decision cancellation suit accompanied by a cancellation/correction request can be filed. Moreover, even if the content of a correction request can be accepted by the patent court, there is always a possibility that the judgment will be overturned at the Supreme Court.

For this reason, when our companies file a patent in Japan, they must prepare not only for managing the completion of the application and the registration, but also for patent invalidation litigation and the like. At the stage of drafting the specification (the document prepared to claim a patent for a specific invention), it is necessary to thoroughly prepare the experimental conditions that can clearly prove the inventive step of the invention and the content of the invention. In addition, since Japan's patent law may undergo changes every year, it is necessary to pay attention to the latest information related to Japanese IP and to accurately familiarize oneself with the changes.

Source : Japan Patent Office, ITOH INTERNATIONAL PATENT OFFICE advisory content, and KOTRA Tokyo Trade Office compilation

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What is Japan's newly introduced planned interactive hearing for patent invalidation trials?

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