As for Japan, its patent law is being amended with the goals of strengthening IP, enhancing fairness, and speeding up resolution of disputes. One amendment, for example, abolishes the prohibition of double jeopardy on third parties in a patent invalidation trial. This allows third parties who have not been involved in earlier trials to file a request for another trial based on the same facts and evidence as the previous trials.
Unlike the U.S., Japan has no post-grant opposition review system, relying instead on its court system and the Japan Patent Office (JPO) for resolving disputes. Perhaps the most important provision of the amended Japanese patent act will end the current practice of allowing a defendant or plaintiff to perpetuate already lengthy litigation by requesting a retrial of an infringement case that was lost several years before.
“Ratio legis of this amendment is that if the patentee or defendant may correct or invalidate the patent now, they should have so argued in the infringement law suit years before,” Nobuhiro Takahashi, Ph.D., an attorney with the Moegi Patent Office in Tokyo, told GEN.
Dr. Takahashi cited a typical scenario the new law is intended to deter: When a patentee believes that a patent is being infringed, he/she can initiate a lawsuit at the Tokyo or Osaka District Court, while the potential infringer would file an invalidation trial at the Japan Patent Office. The JPO trial board and the Court reach their decisions independently, and “it is not rare that the JPO and the Court reach different conclusions,” noted Dr. Takahashi.
In a scenario where the patentee wins the JPO trial while the defendant wins its infringement law suit, he said, both parties will appeal to the Intellectual Property High Court, and the losing party can subsequently file an appeal with the Supreme Court. “However, the Supreme Court will dismiss the case unless it involves a very important matter of law,” Dr. Takahashi said. In one such matter, the Supreme Court ruled in 1999 that the patent held by the developer of a method of assaying inhibitory action of a kallikrein formation inhibitor was not infringed by a drug developer that used the assay during the manufacture of a product outside Japan territory.
More often, he said, patent disputes are typically remanded to the JPO, where an appeal board bound by the court decision will decide that the claims are invalid. In this case the patentee now may request a correction trial to remove the defects of the patent, usually by narrowing its patent claims. That provision will change under the new law, which will bar patentees from making correction trial requests once they ask the IP High Court to rescind the decision of the patent invalidation trial.
“Under the new system, the panel that will decide to invalidate the patent in question must disclose to the parties its determination in advance when the time is ripe for a trial decision, and then the patentee is given an opportunity to correct the patent in response to the advance notice,” according to a summary of the amendments by the JPAA.
The court scenario in Japan highlights the consequences of a lack of a streamlined postgrant review system, which was fine-tuned in the America Invents Act, the U.S.’ latest revisions to its patent system. Officials and industry in Japan might consider amending this system the next time the country’s patent law is rewritten.