Patent Invalidation Procedure in Japan

This article is a general introduction to the procedure for a patent invalidation trial before the JPO.

According to the JPO website, it will take a year or less from filing a request for invalidation to obtaining the final decision by JPO. (Japanese site)

In most cases, a losing party will appeal the case to the IP high court. The appeal in the court can take about an additional year to complete, however in some cases it may take much longer.

In Japan, a patent invalidation trial is conducted in the JPO by three or five examiners. After the filing of a request for invalidation by a demandant (challenger), the demandee (patent holder) will file a written answer (a responsive pleading) to the JPO. In most cases, the patent holder will amend the claims to protect his/her rights. After receiving the responsive pleading, the challenger may have a further opportunity to submit a written answer (a re-responsive pleading) if the chief trial examiner considers it necessary.

Following the pleadings, the JPO will hold an oral hearing. Both parties have to be present at the oral hearing. Before the hearing, usually the examiners ask the challenger to prepare a brief answering several questions from the examiners or presenting arguments on specific topics that the examiners may think are important.

If you (or your client) plan to file a request for invalidation, you should confirm which claims you really want to invalidate, because it is sometimes very difficult to invalidate all of the claims. If you can specify the target claims for invalidation, we can concentrate the argument on those claims.

In any situation, evidence of invalidity is most important, and you should have strong evidence for invalidation before filing. In order to invalidate a patent, studying the patent family and their prosecution history is very important as well as conducting an invalidity search.

Therefore, if using our services to challenge a patent, we would typically ask you first if you have already obtained some evidence. Of course we can help you to conduct the invalidity search ourselves; it will take several weeks and sometimes longer. After that, we will study the result and provide you with our opinion on the possibility of invalidation.

As for cost, it depends on the case but we usually propose to conduct the invalidity search in two or three stages. In the first stage, we will conduct the search very quickly within a limited time and for a minimal cost.

Official (JPO) fees depend on the number of the claims while our fees depend on the time we spend and the actual costs including a translation cost or other petty charge, as applicable.

If there are N claims being challenged, the JPO fees are 49,500+ ( 5,500 * N ) JPY.

1 USD amounts to roughly 100JPY (fluctuating between 95-105JPY) , as of June 2013. Therefore, the official fee will be approximately the amounts below:

For N=30, 495+55* 30 = 2,145 USD
For N=10, 495+55* 10 = 1,045 USD
For N=5, 495+55* 5 = 770 USD

In a typical case the remaining work following the filing will be:

– Drafting and filing the re-responsive pleading
– Preparing the documents for the oral hearing
– Attending the oral hearing

Should you have further questions regarding this matter, please feel free to contact us.