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The Relationship between Correction to Patent and Trial for Invalidation

The Relationship between Correction to Patent and Trial for Invalidation. Saegusa Int ’ l Patent Law Firm Kenji Tachibana Mail to: tachibana@saegusa-pat.co.jp January 23, 2007 2007 AIPLA MWI IP Practice in Japan Committee Pre-meeting. Post-Grant Procedures in the JPO. Third Party

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The Relationship between Correction to Patent and Trial for Invalidation

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  1. The Relationship between Correctionto Patent and Trial for Invalidation Saegusa Int’l Patent Law Firm Kenji Tachibana Mail to: tachibana@saegusa-pat.co.jp January 23, 2007 2007 AIPLA MWI IP Practice in Japan Committee Pre-meeting

  2. Post-Grant Procedures in the JPO Third Party A trial for patent invalidation Patentee (1) Demand for correction in a trial for patent invalidation. (2) A trial for correction

  3. Trial for Patent Invalidation • Any person can file a request for the trial. - Novelty - Inventive Step - Indefiniteness • The request can be filed for each claim.

  4. Trial for Invalidation -Cont’d- Original Claims Claim 1 Claim 2 Claim 3 Trial for Invalidation Claim 1 Claim 2 Claim 3 Claim 1 Survive Claim 2 Claim 3 Invalid New Claims Claim 1 Claim 2 Claim 3

  5. Correction The purpose of Correction is limited as follows: 1. Limit claims 2. Correct errors or mistranslation 3. Clarify an ambiguous description

  6. Correction -Cont’d- If all corrections are not allowed, the request /demand for correction is rejected. Ex.) Claim 1 (amended) →Allowed Claim 2 (amended) →Not Allowed ↓ Demand for correction is rejected.

  7. Correction -Cont’d- Original Claims Claim 1 A+B Claim 2 A+C Corrected Claims Claim 1 A+B1 Claim 2 A+C1 Allowed Not Allowed Original Claims Claim 1 A+B Claim 2 A+C

  8. Correction -Cont’d- If a demand / request of correction is rejected, another demand / request of correction can be filed. ↓ Before 2004, patentee can file request of correction as long as the patent is alive.

  9. Correction -Cont’d- Trial 2 Corrected Claims Claim 1 A+B1 Claim 2 A+C2 Original Claims Claim 1 A+B Claim 2 A+C Allowed Allowed Trial 1 Corrected Claims Claim 1 A+B1 Claim 2 A+C1 Original Claims Claim 1 A+B Claim 2 A+C Allowed Not Allowed

  10. Correction -Cont’d- Amendment: Basis for amendment is the original disclosure Original Specification discloses A, B, and C. amended amended Original Claim 1 (A) Claim 1 (A+B) Claim 1 (A+C) Correction: Basis for second correction is the corrected patent corrected corrected Original Claim 1 (A) Claim 1 (A+B) Claim 1 (A+C) corrected Claim 1 (A+B1)

  11. Practice before 2004 Suit against appeal Reverse and Remand Tokyo High Court Appeal to High Court Trial for Invalidation Trial for Correction Trial for Invalidation Correction is allowed A →A1 Decision of Invalidation JPO

  12. 1995, Gyo-Tsu, No. 204 (Supreme Court) During the suit against appeal of patent invalidation before the Tokyo High Court, when the limitation of claims is allowed in JPO trial for correction, the decision of patent invalidation in the JPO trial should be reversed.

  13. Issue If a request for correction is filed at the late stage of the lawsuit, the decision of a trial for invalidation is automatically reversed and the case is remanded to the JPO. ↓ Argument in the High Courtis wasted !

  14. 2004 Patent Reform 1. A request for a trial for correction can be filed within 90days after filing a complaint in the High Court. 2. If a request for a trial for correction is filed, even before the decision of correction, the High Court may remand the case to the JPO. 3. The JPO examine the patent correction and invalidation. ↓ Prevent the waste of argument in the High Court

  15. After 2004 90 days Tokyo High Court Remand Appeal to High Court Trial for Invalidation Trial for Correction Trial for Invalidation Decision of Invalidation JPO

  16. New Issue Trial for Correction can be filed within 90 days after filing a complaint in the High Court. ↓ Trial for Correction may be filed only once. ↓ If correction is rejected, no more chance for trial for correction !

  17. Conclusion • Chance for Correction is limited. • Once Correction is allowed, Basis for Second Correction is the corrected patent.

  18. Thank you for your attention. Saegusa Int’l Patent Law Firm Kenji Tachibana Please contact me with any questions at: tachibana@saegusa-pat.co.jp

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