This research is a partial result of a research project on comparative patent bifurcation systems conducted at Clare Hall, Cambridge University with the financial support of the Research Center for Advanced Science and Technology, The University of Tokyo. I would like to thank all the faculty and administrative staff both in RCAST and Clare Hall for being so flexible and cooperative before and throughout the research project.
I would firstly like to thank the faculty and students at Centre for Intellectual Property and Information Law, Cambridge University, including Professor Lionel Bentley, Professor Bill Cornish, Dr. Cathy Liddel, Dr,Yin Harn Lee for all the insights they have provided me throughout the research. Besides the researchers in CIPIL, my sincere thanks also goes to Prof. Sir Robin Jacob, who has also provided me a precious guidance in obtaining a more holistic view of the non-bifurcated system. At the end of this research, Ms. Carrie Bee Hao has aided me in polishing the draft and improve the legibility of the paper from a practicing lawyer’s perspective. I would therefore like to cordially thank Ms. Hao for dedicating her time and great effort in supporting this project. Last but not least, I would like to thank my doctorate thesis advisor, Professor Katsuya Tamai for his continued support in all my academic endeavors.
- Guest Researcher, Max Planck Institute for Innovation and Competition, Munich, Germany, Doctorate Student, Graduate School of Engineering, the University of Tokyo.
- For example, the following paper published by the JPO reflects the policy shift. Japan Patent Office, Tokkyo Seido Kenky kai ni Tsuite (Jan 2009) 1 <https://www.jpo.go.jp/shiryou/toushin/kenkyukai/pdf/tokkyoseidokenkyu01_haifu/ kenkyukai04.pdf> access 24 September 2015.
- Intellectual Property Strategy Headquarters, Intellectual Property Strategic Program 2012 (May 2012) at 15.
- Planning Subcommittee of the Industrial Property Council, Report of the Planning Subcommittee of the Industrial Property Council—To the better understanding of pro-patent policy— (Nov, 1998).
- The Cabinet, ‘Basic Policy Concerning Intellectual Property Policy’ (7 Jun 2003).
- Intellectual Property Committee Industrial Structure Council, Report by the Intellectual Property Committee at 9 (February 24, 2014).
- See supra note 6.
- Shigeo Takakura, ‘Innovation no Kanten kara Saikin no Tokkyo Shingai Soshō no Dōkō ni tsuite Kangaeru’ (1 Sep 2008) <http://www.rieti.go.jp/jp/columns/a01_0242.html>access 24 September 2015.
- Bifurcation of patent invalidation refers to a system where the patents can be invalidated only in the patent offices or a specialized court, and cannot be invalidated in other courts during civil court proceedings such as infringement proceedings. They have a clear distinction of jurisdiction between the courts and the patent office in the case of Japan or specialized courts in the case of Germany, the former being the forum to resolve disputes concerning infringement, and the latter being the forum to decide the validity issues of the patent.
- A non-bifurcated system allows patents to be invalidated in both the civil courts and the patent office, or only in the civil courts. Patents could be invalidated in the civil courts, not only in invalidation lawsuits but also as a consequence of infringement litigations when invalidity defence is used by the defendant. Examples of countries with this system are the United Kingdom and the United States.
- Saikō Saibansho [Supreme Court] Apr. 11, 2000 [Minshu 54 kan 4 go] p.1368.
- Unified Patent Court ‘Will both infringement and validity be determined by the same division or will they be heard separately? <http://www.unified-patent-court.org/about-the-upc/22-category-i> access 8 Sep 2015.
- Federal Trade Commission, ToPromote Innovation: The Proper Balance of Competition and Patent Law and Policy (Oct. 2003) 5 states that a “ firm’s questionable patent may lead its competitor to forgo R&D in the areas that the patent improperly covers. For example, firms in the biotech industry reported that they avoid infringing questionable patents and therefore will refrain from entering or continuing with a particular field of research that such patents appear to cover.” At 6, it also states that “[i]f a competitor chooses to pursue R&D in the area improperly covered by the questionable patent without a license to that patent, it risks expensive and time-consuming litigation with the patent holder. If the competitor chooses to negotiate a license to and pay royalties on the questionable patent, the costs of follow-on innovation and commercial development increase due to unjustified royalties.”
- Poor patent quality and legal standards and procedures that inadvertently may have anticompetitive effects can cause unwarranted market power and can unjustifiably increase costs. Such effects can hamper competition that otherwise would stimulate innovation; supra note 13 at 5 also points out this problem. See also supra note 13 where the report points out the consequence of weak patents being licensed out as a result of avoiding litigation on the questionable patent.
- Hiroyuki Ito, ‘Beikoku ni okeru Tokkyo no Yūkōsei ni Kanrensutu Tetsuzuki ni tsuite’ [2009] Vol.62 No.12 Patent 64
- See supra note 13 7-8. “Litigation generally is extremely costly and lengthy, 25 and is not an option unless the patent owner has threatened the potential challenger with patent infringement litigation.”
- See supra note 13 at 8.
- See supra note 13 at 8.
- “If litigation does take place, it typically costs millions of dollars and takes years to resolve. This wastes resources.” See supra note 13 at 6.
- Ex-parte re-examination is a re-examination proceeding before the USPTO without the involvement of the requestor of the re-examination.
- USPTO, ‘2258 Scope of Ex Parte Reexamination [R- 11.2013]’ <http://www.uspto.gov/web/offices/pac/mpep/s2258.html> accessed 24 September 2015.
- See supra note 13 at 7, “Recommendation 1: As the PTO Recommends, Enact Legislation to Create A New Administrative Procedure to Allow Post-Grant Review of and Opposition to Patents.”
- Inter-partes re-examination is a re-examination proceeding before the USPTO with the involvement of the requestor of the re-examination.
- USPTO, ‘Inter Partes Review’ <http://www.uspto.gov/patents-application-process/appealing-patent-decisions/trials/inter-partes-review> accessed 24 September 2015.
- See supra note 24.
- Japan Patent Office, ‘Wagakuni ni okeru Tokkyohō no Enkaku’ (2009) <https://www.jpo.go.jp/shiryou/toushin/kenkyukai/pdf/tokkyoseidokenkyu01_haifu/kenkyukai05.pdf> accessed 24 September 2015.
- In 1996, the pre-grant opposition was reformed into a post-grant opposition system, which existed until the 2004 law reform.
- Trial and Appeal Department, Japan Patent Office, ‘Tokkyoigi no M shitate Seido No Gaiy ’ (2015) <https://www.jpo.go.jp/torikumi/ibento/text/pdf/h26_jitsumusya_txt/11_toujitsu.pdf> accessed 24 September 2015.
- German Patent and Trademark Office, ‘Procedures’<http://dpma.de/english/patent/procedures/index.html>
accessed 8 September 2015. - Korekiyo Takahashi, ‘Wagakuni Tokkyoseido no Kiin’, [1908] Vol. 32 Kōgyō Shoyūken Zasshi.
- See supra note 30.
- See supra note 30.
- The 1921 law provided the possibility for the parties to appeal the decision of the Patent Bureau to the Supreme Court. Ryuichi Murabayashi, ‘Tokkyohō 104jyō no 3 no Seitei to Sono Kaishaku’ [2010] VOL. 63 NO. 7 111-112, see also Shinichi Aihara, ‘’Tokkyo no Mukō to Shingai ni Kansuru Chōsa Kenkyū’ [2000] Institute of Intellectual Property Bulletin 87.
- Daishin’in [Great Court of Judicature] 15 September 1904 [Daihan keiroku 10 Shu p.1679].
- Dispute Resolution Committee, Industrial Property Dicision, Industrial Structure Council, JPO ‘Shingai Soshō to Mukō Tetsuzuki tono Kankei ni tsuite,’ (30 September 2002 5th meeting handout).
- Institute of Intellectual Property ‘Shingai Soshō tō ni okeru Tokkyo no Anteisei ni Shisuru Tokkyo Seido Un’you ni kansuru Ch sa Kenkyū Hōkokusho’ (February 2014) <http://www.jpo.go.jp/shiryou/toushin/chousa/pdf/zaisanken/2013_12.pdf > 34 accessed 24 September 2015.
- The data is collected from the following materials.
JPO, Tokkyo no Yūkōsei Handan ni tsuite no “Double Track” no Arikata nit tsuite (Handout,28th Patent System Subcommittee, Intellectual Property Policy Division, Industrial Structure Council, 11 June 2010) 5 <https://www.jpo.go.jp/shiryou/toushin/shingikai/pdf/tokkyo_shiryou028/01.pdf> accessed 24 September 2015.
Intellectual Property High Court, ‘Chiteki Zaisan Kankei Minji Jiken no Shinjyu Kisai Kensū oyobi Heikin Shinri Kikan’
<http://www.ip.courts.go.jp/documents/statistics/stat_03/index.html> accessed 24 September 2015.
The average length of first instance trial of patents and utility models were unavailable after the year 2008. The data for all IP rights are used instead. - JPO, ‘Shingai Soshō tō ni okeru Tokkyo no Anteisei ni Shisuru Tokkyo Seido no Arikata no Kentō Jyōkyō’ <https://www.kantei.go.jp/jp/singi/titeki2/tyousakai/kensho_hyoka_kikaku/2015/dai2/siryou2.pdf> accessed 24 September 2015.
- Patent Act Art. 168 (2) Where an action is instituted or
a motion for order of provisional seizure or order of provisional disposition is filed, the court may, if it considers it necessary, suspend the court proceedings until the trial decision becomes final and binding. - See Jay P. Kesan, ‘A Comparative Appraisal of Patent Invalidation Processes in Japan’ [2004] Institute of Intellectual Property Bulletin 103.
- Tomoyasu Sato Shimpan Seido no Gaiyō to Saikin no Dōkō [2010] Vol. 63 No. 3 Patent 101.
- JPO, Tokkyo Gyōsei Nenji Hōkokusho 2004 Ban (Japan Institute for Promoting Invention and Innovation).
- See supra note 37 (JPO 2010) 6.
- Ryuichi Murabayashi, Tokkyohō Dai104jyō no 3 no Kaishakuron [2004] Vol. 57 No. 11 Patent.
- See supra note 44 49-50.
- See supra note 44 51.
- Akio Konno,Heisei 15nen Kaisei Tokkyo Mukōshimpan Seido no Gaiyō to Jitsumu ni Ataeru Eikyō nitsuite [April 2004] Vol 2 Kigyō to Hōsōzō 152.
- Supra note 47 152 states that from 1996 to 2000, 55% of all the oppositions were filed under a name of a natural person, compared to 4% of invalidation trials. It was assumed that a vast number of the cases were filed by persons of interest, but who wishes to conceal their true identity for one reason or the other.
- See supra note 47 151, see also, Seido Shingi Shitsu, General Affairs Department, General Affairs Division, JPO (ed) Heisei 26nenndo Tokkyohō tō no Ichibu Kaisei Sangyō zaisankenhō no Kaisetsu (Japan Institute for Promoting Invention and Innovation 2014) 74.
- See supra note 51 (JPO 2014) 73-74.
- See supra note 47 151.
- The Patent Office had discouraged filing oppositions under the name of persons without true intentions to oppose, as it resulted in the obstruction of swift and adequate proceedings. See supra note 49.
- JPO, ‘Tokkyo Fuyogo no Johō Teikyō Seido ni tsuite,’(20 October 2004) <http://www.jpo.go.jp/torikumi/t_torikumi/20041020.htm> accessed 24 September 2015.
- See supra note 27.
- Toshiaki Iimura, ‘Nihon ni okeru Chitekizaisanken Soshō no Genjyō to Kadai’ (Conference ‘Chiteki Zaisan Soshō no Arikata wo Kaeru’, Tokyo, 24 February 2004) <http://www. jipa.or.jp/jyohou_hasin/sympo/pdf/iimura_5.pdf> accessed 24 September 2015.
- Harhoff, Von Graevenitz and Wagner point out that the patent applicants can eliminate errors against their favor throughout the application process but the errors in their favor are less likely to be corrected. Therefore the errors occurring during the prosecution are likely to be asymmetric. See Harhoff, Dietmar and von Graevenitz, Georg and Wagner, Stefan, Conflict Resolution, Public Goods and Patent Thickets (March 25, 2013). ESMT Working Paper No. 12-04 (R1). Available at SSRN: http://ssrn.com/abstract=2145590.
- Intellectual Property Committee Industrial Structure Council, Japan Patent Office, Tsuyoku Anteishita Kenrino Sōkisettei oyobi User no Ribensei Kōjyōni mukete (September 2013) 4-5 <http://www. jpo.go.jp/shiryou/toushin/toushintou/pdf/tokkyo_bukai_houkoku1/ houkoku.pdf> accessed 24 September 2015.
- The data is from supra note 28 at 2.
- See supra note 57 at 5.
- This negative effect may be somehow mitigated due to the increased use of the pre-grant information provision system Institute of Intellectual Property, Heisei 24nendo Wagakuni ni okeru Sangyōzaisanken no Shutugankōdōtou ni Kiinsuru Keizaiseichō ni kansuru Bunseki Chōsa Hōkokusho, in Institute of Intellectual Property (ed), Heisei 24nendo Sangyō Zaisanken Chōsa Kenkyū Hōkokusho, (March 2013) 127.
- JPO ‘Heisei 26nen Tokkyohō no Ichibu wo Kaisei suru Hōritu ni tsuite’ (Handout for Heisei 26nendo Tokkyohō tō Kaisei Setsumeikai (Briefing Session on the 2014 Law Revision held by the JPO for multiple times during 2014)), 6. See also supra note 57 at 5.
- See ‘Anteiteki na Kenri Fuyo ni Muketa Seido ni Kansuru Chōsa Hōkokusho’ 22.
- Supranote 62 22 introduces a result of a survey conducted by the Institute of Intellectual Property on the reasons why companies hesitate or decide not to start an invalidation trial. The reasons the companies chosen were as follows. 1. Decided to wait until they receive a warning e.t.c. (292 companies) 2. Decided to wait until a conflict arises (254) 3. Did not wish to be investigated the relationship between their technology or product and the patented technology by the patent owner (194) 4. The risk of being asserted the patent right was low because invalidity is obvious (162) 5. Prosecuting as a participating party was too burdensome (147) 6. Did not wish to pose a negative influence on the relationship with the patent holder (104) 7. Wished to keep the possibility of future invalidation trials, as repeated invalidation trials based on the same grounds and same proofs are prohibited under Japanese Patent Act Article 167 (86) 8. The oral proceedings were too burdensome (78).
- See supra note 36 69.
- See supra note 64. See also supra note 37 (JPO 2010) Statistics show that, the inconsistency rate of the result of the two decisions are 21 percent, but in roughly half the cases among all the cases which reached inconsistent results, different claim(s) and proof(s) were handled in the two forums.
- Fumitada Takahashi, Tomohisa Takei, Uttaeru to Tokkyo ga Kieru, Nikkei Electronics (Tokyo, 8 March 2010) 34-36.
- See supra note 36 70.
- See supranote 8. See also See supranote 57 10. But see also supranote 60 128 which points out that the use of pre-grant information provision system increased instead of opposition. The increased numbers of information provided may have had a positive effect on the quality of the patents granted.
- See supra note 60 2 which states that in fear of not being able to retrieve the investment in R&D and the application of the technology, the incentive of the proprietors to assert their rights against infringers will decrease.
- See supra note 57 9.
- Kenta Nakamura, ‘Wagakuni Tokkyoseido ni kansuru Jisshō Bunseki: Jōhō Teikyō Seido ni Shōten wo atete’ (2010) 202(5) Kokumin Keizai Zasshi 109 112.
- See supra note 57 9.
- Kenta Nakamura, ‘Wagakuni Tokkyoseido ni kansuru Jisshō Bunseki: Jōhō Teikyō Seido ni Shōten wo atete’ (2010) 202(5) Kokumin Keizai Zasshi 109 111.
- Taro Ushio, Hirohisa Ezaki, Junko Masai, Naohiro Yoshida, Kōichi Minami’ ‘Tokkyo no Anteisei ni tsuite’, No 267 Tokugikon 67 69.
- See supra note 60 127.
- Japan Federation of Bar Associations, ‘Opinion Paper on Patent System Subcommittee, Intellectual Property Committee Industrial Structure Council, Japan Patent Office, Tsuyoku Anteishita Kenrino Sōkisettei oyobi User no Ribensei Kōjyōni mukete (Draft)’ 2 (JFBA,16 January 2013) http://www.nichibenren.or.jp/activity/document/opinion/year/2013/130116_2.html accessed 24 September 2015.
- See supra note 27. The total number of cases in which abuse of rights defense was used during the period were 96. Among them the number of cases which had parallel invalidation trials in the patent office were 71.
- The system is similar to the previous case law in the United States in Triplett v. Lowell, 297 U.S. 638 (U.S. 1936), until the decision was reversed in University of Illinois Foundation v. Blonder-Tongue Laboratories, Inc., 409 U.S. 1061 (U.S. 1972) which stated that “Triplett should be overruled to the extent it forecloses a plea of estoppel by one facing a charge of infringement of a patent that has once been declared invalid.” Although theoretically the problem of repeated infringement litigations based on patents which was deemed to be invalid in a previous proceeding exists in Japan, considering that patents could be also invalidated in the JPO, unlike the United States at the time of this decision, the limited scope of court decisions could be complemented by invalidation proceedings in the JPO.
- Makiko Takabe, ‘Functioning of the Trial Concerning the Validity of a Patent after the Amendment of the Patent Act’ [2011] No.52 Patent Studies 8.
- See supra note 79 9.
- In the opposite case, where the decision of the JPO is finalized earlier than the courts, this problem concerning does not occur. See Makiko Takabe, ‘Tokkyo no Mukō to Teisei wo meguru Shomondai’ [2009] Vol.24 Chiteki Zaisan Hōseisakugaku Kenkyū 1 7 When the patents are invalidated, the effect is retroactive.
- See supra note 49 (Seido Shingi Shitsu, General Affairs Department, General Affairs Division, JPO 2014) 91.
- See supra note 49 81.
- See Trial and Appeal Department, JPO, Tokkyo Igimoushitate Seido no Jitsumu no Tebiki (25 February 2015), <https://www.jpo.go.jp/shiryou/kijun/kijun2/pdf/igi-tebiki/tebiki.pdf> accessed 24 September 2015 11.
- See supra note 41.
- See supra note 28 at 18.
- However, it must be pointed out that the effect may be less dramatic than it seems-80 percent of all the patents challenged through the invalidation trials are still challenged within 5 years. See supra note 60 128.
- Chie Yakura, Yuichi Inase, Yuka Teraguchi, ‘Patent Opposition System’ [July 2015] The Asian Lawyer Magazine 44.
- The data and information comes from the following sources.
The cost of litigation: Christof Rademacher, ‘Patent Assertion in Japan’ [2011] Vol. 20 Institute of Intellectual Property Bulletin 9-1.
The bearer of litigation cost: Rademacher [2011]at 9-2 and Hiroshi Miyauchi, ‘Ichi Kigyō no Shiten kara Mita Tokkyo Shingai Soshō’ [2015] Vol. 102 Institute of Intellectual Property Forum 4.
The attorney fees: Japan Patent Attorneys Association‘Benrishi no Hiyō (Hōshū)’ <http://www.jpaa.or.jp/consultation/commission/charge-sub.html> accessed 24 September 2015 Note that for the opposition proceedings, pre-2004 data is used. - The aforementioned reforms, namely the limitations on invalidity defense in invalidation trials and the elimination of invalidation proceedings should be separately considered. The two combined would cause a problematic result of some questionable patents no longer challengeable after the opposition period.