Asia Patent Alliance
 Establishment and Publication of Revisions to the Japanese Patent Act (Part 2)
Establishment and Publication of Revisions to the Japanese Patent Act (Part 2)

-Implementation of Quicker Dispute Resolution-

This time we are continuing our discussion regarding the revisions to the Japanese Patent Act. The law will be implemented in April, 2012. The goal of this legal revision is quicker and more precise dispute resolution and improvement of user convenience.

Revisions Towards Improvement of Dispute Resolution

There are three points with the aim of revising quicker dispute resolutions, and this time we will explain one of them.

Banning Requests for Correction Trials After Presenting a Suit Against Appeal Trial Decision


In the event of a trial for invalidation, if prior notice of an appeal is given, and corresponding procedures to request correction are implemented, it is no longer possible to request correction trials after presenting a suit against appeal trial decision. The reason for this revision is to resolve the “Catch-ball Effect” and prevent extensions and useless deliberations.

The “Catch-ball Effect” refers to how correction trials could be requested at any time, except when a trial of invalidation is pending, and the steps are as follows:
(1) The patent right holder who is subject to an invalidation trial decision may present a suit against appeal trial decision. It is determined whether the situation is unfavorable (=the trial of invalidation will be settled as it is), and a correction trial is requested to make a “correction that reduces the claims of the patent.”
(2) If a correction trial is settled during a trial for invalidation, due to trial practices, the case will be returned to a trial for invalidation.
(3) The patent right holder may present a suit against appeal trial decision in response to the ruling of the repeated trial for invalidation (Returning to (1)).

The “Catch-ball Effect” is a term that describes how a case can go back and forth from the Japan Patent Office (JPO) to court, such as “Trial for Invalidation (JPO) → Suit Against Appeal Trial Decision (Court) → Correction Trial → Trial for Invalidation (JPO) → Suit Against Appeal Trial Decision (Court).”

The law revision in 2002 attempted to resolve these harmful effects. In other words, after a trail for invalidation has been requested, it was possible to request a correction trial within 90 days of the " suit against appeal trial decision " (126② amendment). It was made possible for the patent right holder to return the case to a trial for invalidation both flexibly and quickly if they hoped to amend without waiting for a correction trial and without a substantial decision (182②). This helped resolve problems associated with extended deliberation to a certain extent. However, the “Catch-ball Effect” has still not been completely resolved. This is because the case will be returned to a trial for invalidation if a correction trial is not requested within 90 days from the suit against appeal trial decision.

This is why the 2010 reforms seek to drastically resolve the “Catch-ball Effect.” Specific changes can be found below.

Article 126

2 A correction trial cannot be requested from when a trial for patent invalidation is pending with the JPO until that decision has been determined (if the request is made for each claim, than all decisions)

 

Thus, even if a suit against appeal trial decision is presented, a correction trial can no longer be requested. Although this revision may appear terrible from the perspective of the patent right holder, it means that a different opportunity to amend has been preserved.

Article 164 Section 2

For a trial for patent invalidation case that has matured into a decision, when it has been admitted that there was a reason to request the decision, the chief judge must give advanced notice of the decision to the involved party or participant.

2 When making the above mentioned advanced notice, the chief judge must determine an appropriate deadline for the demandee to submit the specifications, claims, or figures attached to the request for corrections.

Thus, after the revision, before the first decision of the trial for invalidation is ruled, the chief judge must give advanced notice that the decision will be made, and provide an opportunity to make corrections. The system from “Trial for Invalidation (JPO) → Suit Against Appeal Trial Decision (Court) → Return → Trial for Invalidation (JPO)” all ends at the “Trial for Invalidation (JPO).”