Kei Iida Attorney at Law & Patent Attorney NAKAMURA & PARTNERS

1. Remedies for True Owner of Right to Obtain Patent against Usurped PatentAIPLA MWI IP Practice in Japan Committee Pre-MeetingSunday, January 22, 2012 Kei Iida Attorney at Law & Patent Attorney NAKAMURA & PARTNERS

2. Topics • General • Rejection of Usurped Patent Application • Invalidation of Usurped Patent • Work of Usurped Invention • Patent Application for Usurped Invention • Claim of Damages • Return of Usurped Patent Application or Patent • Return of Usurped Patent Application or Patent in General • Return of Usurped Patent Application under Current Act • Return of Usurped Patent under Current Act • Return of Usurped Patent Application under New Act • Return of Usurped Patent under New Act • Remaining Issues

3. General • Rejection of Usurped Patent Application • Usurpation is the reason for rejection under Article 49② & ⑦. • A true owner just may submit information to the JPO. • It is practically rare for an examiner to reject a patent application for usurpation. • Invalidation of Usurped Patent • Usurpation is the reason for invalidation under Article 123I② & ⑥. • A true owner is entitled to claim invalidation of a patent for usurpation in a trial against a patentee before the JPO. • A usurped patent will be invalidated only. • Work of Usurped Invention • Usurpation constitutes defense under Article 65VI & 104-3I against a claim by an applicant or a patentee under a usurped patent application or a usurped patent. • A true owner may work a usurped invention and is entitled to the defense in an action before the court. • The claim will be dismissed only.

4. General(cont’d) • Patent Application for Usurped Invention • A true owner may file a patent application for a usurped invention even after a usurped patent application since the usurped application is not considered as a prior application, the reason for rejection under Article 49② and the reason for invalidation under Article 123I②, against true owner’s application under Article 39VI. • A true owner shall file a patent application for a usurped invention within 6 months after laid open publication of a usurped patent application at the latest since otherwise the usurped invention loses novelty for the publication under Article 29I③ & 30II. • Claim of Damages • A true owner perhaps will be entitled to claim damages against a usurper under a tort law (Supreme Court’s decision of February 16, 1993). • The success of the claim and the sum of damages are uncertain (Tokyo High Court’s decision of November 28, 2000, Tokyo District Court’s decision of December 24, 2010, etc.). • Return of Usurped Patent Application or Patent ?

5. Return of Usurped Patent Application or Patent in General • Current Act or New Act ? • The amendment of the Patent Act will take effect on April 1, 2012. • The new Patent Act applies to a patent application on and after April 1, 2012 and a patent thereupon only, and the current Patent Act still applies to a patent application before April 1, 2012 and a patent thereupon. • The possibility and/or way of return is different between a case under the current Act and a case under the new Act. • Usurped Patent Application or Usurped Patent ? • The possibility and/or way of return is different between a case of a usurped patent application and a case of a usurped patent. • True Owner’s Original Application or Usurper’s Original Application ? • The possibility and/or way of return is different between a case where a usurped patent application was originally filed by a true owner (true owner’s original application case) and a case where a usurped patent application was originally filed by a usurper (usurper’s original application case).

6. Return of Usurped Patent Application under Current Act • In True Owner’s Original Application Case • A true owner is not entitled to claim the change of the name of an applicant of a usurped application, but rather is entitled to seek for a declaratory judgment confirming that a true owner has a right to obtain a patent for a usurped invention claimed in the usurped application, against an applicant of the usurped application before the court (Tokyo District Court’s decision of June 5, 1963, Tokyo District Court’s decision of June 27, 2007 affirmed by IP High Court’s decision of December 24, 2008, etc.), and then a true owner is entitled to claim the change of the name of the applicant of the usurped application by submitting the judgment to the JPO under Article 34IV.

7. Return of Usurped Patent Application under Current Act (cont’d) • In Usurper’s Original Application Case • Also, a true owner is entitled to seek for a declaratory judgment confirming that a true owner has a right to obtain a patent for a usurped invention claimed in the usurped application, against an applicant of the usurped application before the court (Tokyo District Court’s decision of April 16, 1979, Tokyo District Court’s decision of October 30, 1985 affirmed by Tokyo High Court’s decision of July 31, 1986 affirmed by Supreme Court’s decision of March 17, 1987, etc.), and then a true owner is entitled to claim the change of the name of the applicant of the usurped application by submitting the judgment to the JPO under Article 34IV. • Some scholars and practitioners strongly object to the above practice mainly based on the first-to-file principle.

8. Return of Usurped Patent Application under Current Act (cont’d) • Cure of Reason for Rejection by Return • The majority of scholars and practitioners consider that the reason for rejection of usurpation under Article 49② & ⑦ does not matter or is cured by the above return of a usurped patent application. • Suspension of Examination of Usurped Application for Return • If a patent is granted and issued to a usurped patent application, the above declaratory judgment action, even filed before the grant and issue of the patent, shall be dismissed (Tokyo District Court’s decision of January 31, 2001). • In order to secure the chance of the above return, a true owner just may request an examiner to suspend an examination of a usurped patent application for the above declaratory judgment action at his/her discretion under Article 54I. • Provisional Injunction to Prohibit Disposition of Usurped Application • The majority of scholars and practitioners consider that, in order to secure the chance of the above return, a true owner is not entitle to seek for a provisional injunction to prohibit the disposition of a usurped patent application against an applicant before the court .

9. Return of Usurped Patent under Current Act • In True Owner’s Original Application Case • A few lower courts’decisions (Tokyo District Court’s decision of June 5, 1963, etc.) used to decide and the majority of scholars and practitioners used to consider that a true owner of a right to obtain a patent was not entitled to claim the return of a usurped patent against the patentee mainly based on the reason that a patent right is different from a right to obtain a patent and a patent is granted and issued to an applicant of a patent application. • In the case where (i) one true owner filed a patent application jointly with another true owner, (ii) a usurper changed applicant’s name of the application from the one true owner to the usurper by submitting a forged certification of assignment of one true owner’s right to obtain a patent to the usurper, and (iii) the one true owner filed the above declaratory judgment action before the grant and issue of the patent, but the patent was granted and issued before the above declaratory judgment, the Supreme Court decided that a true owner of a right to obtain a patent was entitled to claim the return of a usurped patent against the patentee under the unjust enrichment principle (Supreme Court’ decision of June 12, 2001). • Although the above decision by the Supreme Court is supported by the majority of scholars and practitioners, the scope thereof is uncertain even for true owner’s original application case.

10. Return of Usurped Patent under Current Act (cont’d) • In Usurper’s Original Application Case • Although there had been no case law, the majority of scholars and practitioners used to consider that a true owner of a right to obtain a patent was not entitled to claim the return of a usurped patent against the patentee mainly based on the reason that a patent right is different from a right to obtain a patent and a patent is granted and issued to an applicant of a patent application. • Several lower courts’decisions (Tokyo District Court’s decision of July 17, 2002, Tokyo District Court’s decision of September 26, 2003 affirmed by Tokyo High Court’s decision of January 21, 2004, etc.) decided and the majority of scholars and practitioners consider that the above decision by the Supreme Court is not applicable to usurper’s original application case mainly because the unjust enrichment principle in the above decision by the Supreme Court is applicable only to true owner’s original application case. • The above lower courts decided that a true owner of a right to obtain a patent was not entitled to claim the return of a usurped patent against the patentee, and those lower courts’decisions are supported by the majority of scholars and practitioners.

11. Return of Usurped Patent under Current Act (cont’d) • Cure of Reason for Invalidation by Return • The majority of scholars and practitioners consider that the reason for invalidation of usurpation is not cured by the above return, although some scholars and practitioners strongly object thereto mainly because usurpation is the reason for invalidation just for the protection of a true owner. • Infringer’s Standing for Invalidation Trial after Return • In the practice before the JPO, an infringer, as “a person having interest” under Article 123II, is allowed to claim invalidation of a patent for usurpation in a trial against a patentee, although some scholars and practitioners strongly object to the practice mainly because usurpation is the reason for invalidation just for the protection of a true owner. The practice perhaps will be the same even after the above return. • Infringer’s Standing for Defense in Infringement Action after Return • The majority of scholars and practitioners consider that an infringer is allowed to the defense of usurpation against a claim by a patentee under a patent in an infringement action before the court. This perhaps will be the same even after the above return.

12. Return of Usurped Patent under Current Act (cont’d) • Provisional Injunction to Prohibit Disposition of Usurped Patent • It is uncertain whether or not a true owner is entitle to seek for a provisional injunction to prohibit the disposition of a usurped patent against a patentee before the court in order to secure the chance of the above return.

13. Return of Usurped Patent Application under New Act • In True Owner’s Original Application Case • No change. • In Usurper’s Original Application Case • No change. • Cure of Reason for Rejection by Return • No change. • Suspension of Examination of Usurped Application for Return • No change. • Provisional Injunction to Prohibit Disposition of Usurped Application • No change.

14. Return of Usurped Patent under New Act • In Both of True Owner’s Original Application Case and Usurper’s Original Application Case • A true owner of a right to obtain a patent for a usurped invention claimed in a usurped patent becomes entitled to claim the return of the patent against the patentee before the court under new Article 74I. • If the name of the patentee of the registration of the usurped patent is changed for the true owner based on the claim under new Article 74I, the patent right is deemed to have been owned by the true owner retroactively from the issue of the patent under new Article 74II.

15. Return of Usurped Patent under New Act (cont’d) • Cure of Reason for Invalidation by Return • The reason for invalidation of usurpation becomes cured by the above return under new Article 123I② & ⑥. • Infringer’s Standing for Invalidation Trial • In order to secure the chance of the above return, only a true owner becomes allowed to claim invalidation of a patent for usurpation in a trial against a patentee before the JPO under new Article 123II. • Infringer’s Standing for Defense in Infringement Action • Not only a true owner but also an infringer becomes explicitly allowed to the defense of usurpation against a claim by a patentee under a patent in an infringement action before the court under new Article 104-3III but just untill the cure of the reason for invalidation of usurpation for the above return under new Article 123I② & ⑥.

16. Return of Usurped Patent under New Act (cont’d) • Provisional Injunction to Prohibit Disposition of Usurped Patent • A true owner becomes entitled to seek for a provisional injunction to prohibit the disposition of a usurped patent against a patentee before the court in order to secure the chance of the above return.

17. Return of Usurped Patent under New Act (cont’d) • Protection of Party with Interest on Usurped Patent • A “patentee” and/or licensee of a usurped patent at the time of the above return, who works or prepares to work as business in Japan a usurped invention claimed in the usurped patent “without the knowledge of and the reason to know usurpation” before the above return, becomes entitled to work the invention within the scope of the invention worked or prepared to be worked and the business under new Article 79-2I. It is uncertain whether or not a usurper is considered to be included in a “patentee” “without the knowledge of and the reason to know usurpation” under new Article 79-2I. • A true owner is entitled to reasonable compensation to the above patentee and/or licensee under Article 79-2II.

18. Remaining Issues • Way of Return of Usurped Application or Patent with Plural Usurped and Non-Usurped Claims • In the case of a usurped application with single or plural usurped claim(s), the name of an applicant for the application is changed from the applicant to a true owner. In the case of a usurped patent with single or plural usurped claim(s), the name of a patentee on the registration of the patent is changed from the patentee to a true owner. • In the case of a usurped application with single or plural usurped claim(s) by the violation of joint application requirement, the name of an applicant for the application is changed from the applicant only to the applicant and a true owner. In the case of a usurped patent with single or plural usurped claim(s) by the violation of joint application requirement, the name of a patentee on the registration of the patent is changed from the patentee only to the patentee and a true owner.

19. Remaining Issues (cont’d) • Way of Return of Usurped Application or Patent with Plural Usurped and Non-Usurped Claims (cont’d) • How to return a usurped application or patent with plural usurped and non-usurped claims such as the case 1 with claim 1 (A: prior art + B: true owner) and claim 2(A: prior art + B’: usurper), and the case 2 with claim 1 (A: prior art + B: true owner and usurper) and claim 2 (A: prior art + B’: usurper) ? • The name of an applicant for the application perhaps will have to be changed from the applicant only to the applicant and a true owner. Also, the name of a patentee on the registration of the patent perhaps will have to be changed from the patentee only to the patentee and a true owner. • It is uncertain whether or not, as a result thereof, the applicant and the true owner will jointly own a right to obtain a patent for plural usurped and non-usurped claimed inventions. Also, it is uncertain whether or not, as a result thereof, the patentee and the true owner will jointly own a patent right for plural usurped and non-usurped claimed inventions.

20. Thank you! Kei Iida Attorney at Law & Patent Attorney NAKAMURA & PARTNERS Shin-Tokyo Bldg., 6F, 3-1, Marunouchi 3-Chome, Chiyoda-ku, Tokyo 100-8355 Japan Tel: 81-3-3211-8741 Fax: 81-3-3214-6367 E-mail: k_iida@nakapat.gr.jp