In April 2015, the JPO implemented
a new opposition system designed to simplify and expedite the process for
revoking all or some of the claims of a granted patent. It was anticipated that this new system would
make it easier to rapidly remove weak and largely inefficient patents and
claims which hinder true technological advances from obtaining IP rights.
Below, we briefly summarize the
new Post Grant Opposition System and compare it to the Post Grant Invalidation
Trial System also employed in
A)
Post Grant Opposition System
A post-grant
opposition may be filed by anyone (including a “straw man” or a
“non-interested” third party) within 6 (six) months from date on which the
patent was issued. The official cost for filing such an opposition is ¥16,500
($153)1 plus ¥2400 ($22)1 per claim to be opposed.
Reasons
for which an Opposition may be Undertaken
1)
The scope of the description, claims,
and/or drawings of the amendment exceeds the range of the contents described in
the application.
2)
The patent violates a treaty.
3)
The translated Japanese document does not
remain within the scope of matters described in the original foreign language
application.
4)
The patent violates Article 25 (Enjoyment
of Rights by Foreign Nationals), Article 29 (Industrial Applicability, Novelty,
and Inventive Step), Article 32 (Inventions Liable to Injure Public Order,
Morality or Public Health), Article 36(4)(i)
(Enablement Requirements), Article 36(6) (Description Requirements), or Article
39 (Prior Application - First-to-file) of the Patent Law.
The
opposition will be examined by a collegial body of three to five Examiners at
the JPO and oral proceedings will not be performed. If Reasons for Revocation
are issued by the collegial body, the applicant may respond to the Reasons for
Revocation and make corrections to the patent. If the Reasons for Revocation are unovercome by the correction, the
decision to revoke the patent will be made by the collegial body, and the owner
of the patent may appeal the decision to the Intellectual Property High Court.
B)
Post Grant Invalidation Trial
An invalidation
trial against a patent may only be filed by an interested party, who may not
remain anonymous. The official cost for filing an invalidation trial is ¥49,500
($458)1 + ¥5500 ($51)1 per claim which is to be
invalidated.
1Based on ¥108 = $1 (Rate as of January
2020).
In addition to the aforementioned
reasons for which an opposition may be undertaken, the case when the patent has
been granted for the non-entitled person or granted in noncompliance with the
requirements for joint application may also be included as a reason for
initiating an invalidation trial against a granted patent.
Invalidation trials may be
presented orally or through documentary evidence.
C)
Results
In the first year and a half or so
since the adoption of the new systems, the number of patent invalidation trials
fell by approximately 40% to 140 in 2016. As anticipated, the number of post grant patent oppositions surged to almost
1,200 in 2016 and was 1,250 for 2017. An
invalidation trial also tends to take 4-5 months longer to complete than a post
grant patent opposition (5.8 months in 2016).
Success rates for
oppositions are summarized in the following table*.
|
|
Revocation of
all challenged claims |
Granted patent
maintained after correction |
Granted patent
maintained as is |
|
2015 (362 cases) |
12.6% |
45.9% |
39.8% |
|
2016 (1135 cases) |
9.4% |
47.6% |
34.3% |
|
2017 (430 cases)** |
1.8% |
10.7% |
21.7% |
*The table does not
include oppositions that were withdrawn or dismissed (0.2% and 2.6% in 2015 and
2016 respectively)
**As
of May 2018, approximately 820 post grant patent opposition cases requested in
2017 were pending at the JPO, and thus, have not been included in the above
table.
Data
obtained from the JPO.
D)
Analysis
As the initial cost for filing a
post grant opposition is relatively low compared to a request for an
invalidation trial, it is anticipated that the number of requests for post
grant opposition will see further increases in the coming years. In addition,
as the time required to complete the post grant opposition is shorter, the new
post grant opposition system is seen as a rapid means by which weak patents or
claims can be invalidated.
The above results do not seem to
suggest a bias towards the patentee or the party requesting a post grant
opposition, although the above results only cover a time frame of less than two
years since the implementation of the system.
Lastly, as it is theoretically
possible for the party requesting a post grant opposition to remain anonymous,
it is anticipated that the use of the post grant opposition system will
continue to increase in the coming years.