Manual of Hantei (Advisory Opinion) for Essentiality. Check

Transcription

1 Manual of Hantei (Advisory Opinion) for Essentiality Check March 2018 Trial and Appeal Department Japan Patent Office

2 Table of Contents 1. Background Introduction to the Operation... 2 (1) Purpose of the Operation... 2 (2) Hantei (Advisory Opinion) system... 2 (3) Essentiality of a patented invention... 4 (4) Scope of the Operation How to write a request for an advisory opinion for essentiality check... 9 (1) Statement of purport of the request... 9 (2) Statement of demandee (3) Statement of reasons for the request (4) Statement of means of proof Written reply submitted by the demandee Example of a written request for an advisory opinion for essentiality check Examples of a written advisory opinion for essentiality check... 21

3 1. Background In recent years, the dissemination of Internet of Things ( IoT ) has led to a rapid development of so-called the Fourth Industrial Revolution at home and abroad where various infrastructures and devices can be connected through the Internet. The environment surrounding the patent strategies of private companies is undergoing a significant change. In particular, due to the advancement of IoT, it has become increasingly necessary for companies in diverse industries to comply with information and telecommunications standards. These changes greatly affected the environment surrounding standard-essential patents ( SEPs ). The nature of licensing negotiations has been changing as well mainly for the following two reasons. First, while most of the licensing negotiations used to be conducted by companies in the telecommunications industry, there is an increasing need among companies in different industries, including final product manufacturers of automobiles, service providers, etc. to take part in such negotiations. Secondly, these new entries in licensing negotiations have made it difficult to solve problems by such conventional method as a cross-licensing within the same industry. Also, opinions are increasingly divided as to essentiality of patent and reasonable license fees. A licensing negotiation between the parties concerned would be greatly influenced by a determination as to whether the patented invention subject to licensing negotiation is a SEP. If there is a dispute over the essentiality of the patented invention between the parties, it would be difficult to resolve the dispute by themselves. Therefore, if such determination is made by the Japan Patent Office ( JPO ) from a fair, neutral perspective, it would greatly contribute to facilitating the licensing negotiation and dispute resolution between those parties. In reality, the industry voiced their concerns that the parties involved in a licensing negotiation sometimes start a dispute over the essentiality of a patented invention and never reach common ground. The industry places high expectation that if the JPO conducts essentiality check based on the allegations and proofs submitted by those parties and publicizes the results of the Hantei (Advisory Opinion), it will facilitate the dispute resolution. 1

4 Under these circumstances, the report made by the Patent System Subcommittee of the Intellectual Property Committee under the Industrial Structure Council in FY2017 states that if the JPO makes and publicizes a fair, neutral determination as to whether the Virtual Object Product, etc. specified from standard documents falls within the technical scope of a patent right based on the allegations and proofs submitted by the parties concerned disputing the essentiality, it would increase the predictability and transparency with regard to whether the disputed patent is essential to the standard and would facilitate licensing negotiations conducted by any other parties. Thus, when filing a request for an advisory opinion of the JPO under Article 71 of the Patent Act, a request for an advisory opinion for essentiality check on a patented invention it should be allowed. In response, the JPO clarified how the Hantei (Advisory Opinion) system shall be operated for essentiality check (the Operation ), thereby prepared and decided to publicize the Manual of Hantei (Advisory Opinion) for Essentiality Check (the Manual ) for practitioners who seek the Operation. The Operation commences in 1 April The content of the Manual will be reviewed as appropriate. 2. Introduction to the Operation (1) Purpose of the Operation As stated in above 1., the purpose of the Operation is, when there is a dispute over the essentiality of the patented invention between the parties concerned, to facilitate licensing negotiations and dispute resolution through essentiality check utilizing the Hantei (Advisory Opinion) system by taking advantage of its specialized, technical knowledge of the JPO. (2) Hantei (Advisory Opinion) system Article 71 of the Patent Act provides the basis for the Hantei (Advisory Opinion) system. The system allows the JPO, which was involved in the establishment of a patent right, to express, upon request of any person who has an interest in a patented invention, an official opinion as to the technical scope of the patented invention from a fair, neutral perspective by utilizing its highly specialized, technical knowledge. 2

5 When a request for an advisory opinion is filed, the panel consisting of three administrative judges determines whether the object product (or process) A specified by the demandant falls within the technical scope of the patented invention (Figure 1). All of the JPO s advisory opinions will be entirely publicized to the public. The documents concerning the advisory opinion will be made available for public inspection 1. Figure 1 Conventional Advisory Opinion An advisory opinion is an official opinion of the JPO (panel) with regard to the technical scope of a patented invention that functions merely as an expert opinion and does not have any legal binding force. However, since it is an opinion of the JPO, which consists of highly specialized and technical administrative officers, it is considered to be one of determinations which are respected by society and authoritative (in this Manual, a conventional advisory opinion other than any advisory opinion to determine essentiality is referred to as a Conventional Advisory Opinion 2 ). 1 A bill, which includes the amendment of the Patent Act regarding the restriction on inspection of trade secret evidence in advisory opinion proceedings, has been submitted to the Diet (as of March 2018). If this amendment is enacted in the future, it will be possible to impose a specific limitation on the inspection of undisclosed trade secret evidence presented in advisory opinion proceedings. However, it should be noted that even after such legal amendment, it would be impossible to impose an inspection limitation on the features of virtual object A itself as described in 2. (4) as a trade secret. 2 The Conventional Advisory Opinion is operated according to the Manual for Trial and Appeal Proceedings 58 Hantei (Advisory Opinion on the Technical Scope of Industrial Property Rights) (in Japanese) and JPO Advisory Opinion System (in Japanese). While the advisory opinion system is also provided in the Utility Model Act, the Design Act, and the Trademark Act as well, these rights are not subject to an advisory opinion for essentiality check, according to the Operation, since it is unlikely that a dispute arises over the essentiality of any right of those Acts. 3

6 (3) Essentiality of a patented invention Standards are a set of technical specifications that products, etc. must comply within each technical field. The standard compatible products, etc. have all of the indispensable features (technical subject matters) required by the standard documents. If such standard compatible products, etc. (the products, etc. that have all indispensable features required by the standard documents) cannot be worked (manufactured, etc.) without using a certain patented invention, in other words, if the standard compatible products, etc. falls within the technical scope of the patented invention, it can be said that the patented invention is an invention essential to the standard. The issue of whether a patented invention is essential to standard or not is called the issue of essentiality of the patented invention 3. A patent for an invention that is essential to the standard is called standard-essential patent (SEP). (4) Scope of the Operation A. Benefit of request A request for an advisory opinion may be filed irrespective of legal interests. However, the benefit of request is considered to be necessary to file a request according to the purport of the Advisory Opinion system. In a licensing negotiation between the parties concerned, if they are disputing the essentiality of a certain patented invention for a certain standard, a benefit of request for an advisory opinion can be affirmed since there exists a benefit to resolve the dispute. On the other hand, if there is no opposing party, including the case where there is no 3 In the Operation, the essentiality of a patented invention means the technical essentiality, in other words, a determination would be made as to whether the patented invention is technically unavoidable or not. A determination is not made as to the commercial essentiality, in other words, in the case of a patented invention that is technically avoidable, a determination would not be made as to whether a means of avoidance is economically reasonable or not. 4

7 dispute over the essentiality of a patented invention between the parties concerned, there will be no benefit of request for an advisory opinion for essentiality check. In this case, the request for an advisory opinion would be dismissed by a JPO decision that the request is unlawful. B. Virtual object A A request for an advisory opinion for essentiality check shall be filed for a virtual object product, etc. ( virtual object A, or virtual object product A, which complies with standard), which is specified only by indispensable features of the standard documents in such way that they corresponds to the constituent features of the patented invention for which an advisory opinion is sought (Figure 2). Figure 2 Virtual Object A Standards subject to the Operation are standards, which are established by a single entity including a standard setting organization ( SSO ), and in which standard documents were set as the technical specifications that products, etc. should comply with, and such standard documents can be submitted to the JPO as evidence (including the standard established by a group of companies in the course of a standardization project, but excluding the de facto standards or mere product specifications established by a single company). In the Operation, in the case where a SSO, etc. has not reached a consensus on the finalization of its standard documents, the case where it is unclear which version of 5

8 standard documents should be referred to, or the case where there is a dispute over the validity of standard documents themselves between the parties concerned, virtual object A could not be specified based on the referenced standard documents. Therefore, in such case, a request cannot be filed for an advisory opinion for essentiality check. Virtual object A cannot be specified based on multiple standards established by different SSOs. C. Purport of the request If the JPO gives an advisory opinion that virtual object A, which consists solely of the indispensable features required by the standard documents, falls within the technical scope of the patented invention, the standard compatible products, etc., which have all indispensable features required by the standard documents including the features of the virtual object A, would inevitably fall within the technical scope of the patented invention. Therefore, the patented invention can be considered to be essential to the standard (Figure 3). Figure 3 Essentiality Check Utilizing the Hantei (Advisory Opinion) System On the other hand, even if virtual object A specified by the demandant does not fall within the technical scope of the patented invention, it does not necessarily mean that the patented invention should not be essential to the standard. This is because the 6

9 standard documents usually contains a very large amount of technical subject matters. Virtual object A could be specified in many different ways depending on how the indispensable features required by the standard documents are specified. Thus, if a virtual object A is specified by the demandant in a different way, it could be found to fall within the technical scope of the patented invention, and the patented invention could be found to be essential to the standard (Figure 4). Figure 4 Relationship among standard document, a virtual object A and a patented invention Therefore, a request for an advisory opinion for essentiality check is acceptable only if the demandant asks for an opinion that virtual object A falls within the technical scope of the patented invention. On the other hand, a request for an advisory opinion for essentiality check is unacceptable if the demandant asks for an opinion that virtual object A does not fall within the technical scope of the patented invention. As described above, the scope of the Operation is summarized as follows (for a specific flowchart, please refer to Figure 5) Scope of the Operation (1) There is a dispute over the essentiality of the patented invention between the parties concerned (the demandant and the demandee). (Such dispute must be over the essentiality of a specified patented invention. Any cases where the parties concerned are conducting a licensing negotiation but have no dispute over the essentiality of a specified patented invention should be excluded.) (2) It is possible to specify a virtual object A only by the indispensable features required by the standard documents of a SSO, etc. (The standard documents should be 7

10 set by a SSO, etc. and possible to be submitted to the JPO as evidence). (3) A request for an advisory opinion is made to allege that the specified virtual object A falls within the technical scope of the patented invention (A request for an advisory opinion for essentiality check is unacceptable if the request is made to allege that a virtual object A does not fall within the technical scope of the patented invention.). Figure 5 Flowchart for the Operation While the request cannot be filed to allege that the patented invention is not essential to the standard, a person who plans to work a specific object A that complies with the standard may file a request for a conventional advisory opinion to allege that object A does not fall within the technical scope of the patented invention. In this case the person could specify a part of features of the standard compatible specific object A from the standard documents. In a case where a dispute between the parties concerned is over a worked specific object product, etc., it would be more beneficial to resolve the dispute if a request is filed for a conventional advisory opinion concerning the worked specific object product, etc.. In such case, the patentee or the company commercializing the product are to consider filing a request for an advisory opinion determining whether the worked specific object product, etc. falls within the technical scope of the patented invention. 4 4 When a request is filed for an advisory opinion to determine whether a worked specific object product, etc. falls within the technical scope of a patented invention, if the object product, etc. complies with a standard, a part of its features could be specified from the standard documents. 8

11 3. How to write a request for an advisory opinion for essentiality check Based on the explanation above, this section explains how the demandant should write a request for an advisory opinion for essentiality check 5 (The following section 4. will explain a written reply on the demandee s side and section 5. will present examples of the written reply.). (1) Statement of purport of the request If you file a request for an advisory opinion for essentiality check, in order to make it clear that you are asking for essentiality check, it is required to state in the section titled purport of the request on the request form that for the purpose of essentiality check. In addition, in order to make it clear which standard you are asking for the advisory opinion about, it is required to specify the name, etc. of the standard as well as the version of the standard. Any amendment to the purport of the request would be considered to be a change of the gist and would therefore be unacceptable. So, please carefully state the purport of the request. (Example of statement of the purport of the request) For the purpose of essentiality check, we would like to request an advisory opinion that virtual object product A 6, which complies with the XXX standard, falls within the technical scope of the patented invention of the patent No. XXX. When an advisory opinion is issued in response to a request for an advisory opinion filed for such purport, the conclusion presented in an advisory opinion would state solely about whether the virtual object A falls within the technical scope of the patented invention or not. If the conclusion states that the virtual object A falls within the technical scope, the section of reasons would mention the determination as to the essentiality of the patented invention as well. 5 This section gives tips for those who file a request for an advisory opinion for essentiality check. Regarding the general matters about the form of a written request for an advisory opinion, please refer to the example, etc. of a written request for an advisory opinion in JPO Advisory Opinion System (in Japanese). 6 While the term virtual object A is used here, the term item A or process A could be used instead. 9

12 (2) Statement of demandee In order to request an advisory opinion for essentiality check, it is required to state, on the written request for an advisory opinion, the opposing party as the demandee with whom you have a dispute over the essentiality of the patented invention. As mentioned in 2. (4) above, if there is no opposing party, a dispute cannot be found to exist between the parties concerned over the essentiality of a patented invention, in this case, there would be no benefit to request an advisory opinion for essentiality check (such request would be dismissed by a JPO decision as unlawful). If the counterargument, etc. presented in a written reply reveals that the alleged demandee is not a party involved in the dispute, the request for an advisory opinion could be dismissed at that time by a decision that the request is unlawful. (3) Statement of reasons for the request A. Statement of necessity for the request for an advisory opinion If you file a request for an advisory opinion for essentiality check, it is required to clearly explain, in the section titled necessity for the request for an advisory opinion on the written request for an advisory opinion, the situation where a dispute has arisen between the parties concerned conducting a licensing negotiation over the essentiality of a specific patented invention based on specific standard. This is because, as mentioned in 2. (4) above, it would be considered that there is no benefit of request in such advisory opinion for essentiality check if there is no dispute over the essentiality of a patented invention between the parties concerned, for instance, if there is no opposing party. Please note that a dispute in this context means a dispute over the essentiality of a specific patented invention and that any cases where the parties concerned are conducting a licensing negotiation but have no dispute over the essentiality of a specific patented invention should be excluded. (Example of statement of the necessity of the request for an advisory opinion) The demandant and the demandee have been conducting a licensing negotiation 10

13 concerning the patent related to the XXX standard. While the two parties have been discussing whether the patented invention is essential to the standard are not, they have failed to reach a consensus. For the essentiality check on the said patented invention related to the XXX standard, we filed this request for the JPO's advisory opinion from a fair, neutral perspective with regard to whether the virtual object product A, which complies with the XXX standard, falls within the technical scope of the patented invention. B. Statement of explanation of virtual object A In the section concerning the explanation of virtual object A, it is required to specify and explain one virtual object A consisting solely of the indispensable features required by the standard documents in such a way that those features correspond to the constituent features of the patented invention for which an advisory opinion is sought. As is the case with a request for a conventional advisory opinion, you may submit, as attached documents, the drawings or specification document in order to explain the virtual object A. More specifically, it is required to describe the specified features of virtual object A by explaining which statement contained in the standard documents provides a basis for each feature, what the content of the statement is, and specifically why said feature can be considered to be indispensable to the standard. If you fail to explain which statement contained in the standard documents provides a basis for the feature, but simply state that the general technical knowledge provides such basis, or if you fail to present the reasons why the feature can be considered to be indispensable to the standard, the feature would not be found to be a feature of the virtual object A that should be taken into consideration when making a determination as to whether the virtual object A falls within the technical scope of the patented invention. Also, it is required to specify the features of virtual object A according to the statements contained in the standard documents. When specifying the features of virtual object A, please be careful not to make a substantive change in any feature specified by the statements contained in the standard documents and not to make any feature conceptually higher or lower. It would be unacceptable to change the virtual object A by making an amendment to 11

14 add a feature to the virtual object A based on different statement from the statements that are referred to in the written request for an advisory opinion as the basis for the features of virtual object A. Since such amendment would be considered to be unacceptable as a change of the gist, please be careful when specifying virtual object A. (Example of statement of the explanation of virtual object A Virtual object product A is a data transmission device having the feature a, as follows. a. By using the RLC (Radio Link Control) protocol for the UE-UTRAN radio interface, the transmitting UM-RLC entity receives RLC SDUs from upper layers through the UM- SAP Explanation of a Evidence No. A-x (standard document 7 ) states as follows. The present document specifies the Radio Link Control protocol for the UE-UTRAN radio interface. (Page 8, 1 Scope ) (Japanese translation: ) The transmitting UM-RLC entity receives RLC SDUs from upper layers through the UM-SAP. (Page 14, Transmitting UM RLC entity ) (Japanese translation: ) These statements specify the most basic communications protocol for data transmission devices that comply with the standard. And since it is stated in page XX, lines XX to XX of Evidence No. A-x that, the features are indispensable to the standard. C. Statement of technical comparison between the patented invention and virtual object A 7 The following example statement is made based on the information presented in / The same can be said about all of the example statements below. 12

15 In the section technical comparison between the patented invention and virtual object A, it is required to explain specifically the relationships between the constituent features of the patented invention and the specified features of virtual object A by using a comparison table. As is the case with a written request for a conventional advisory opinion, it is required to state whether the features of virtual object A fulfill the constituent features of the patented invention. Even in the case where a certain feature cannot be considered to fulfill a constituent feature superficially, if the feature can be interpreted to fulfill the constituent feature substantially, please describe in detail such interpretation for each feature. If the issue lies in the interpretation of a term used in the standard document, it is required to provide the reason along with the grounds (evidence, etc.) for the demandant s interpretation thereof as well. In this section, it is required to describe as specifically as possible the issues already identified in the course of the licensing negotiation and the demandee s submitted or expected allegations with respect to the essentiality. You may attach documents, etc. presented in the course of the negotiation conducted before making a request for an advisory opinion. (Example of statement of the technical comparison between the patented invention and virtual object A ) The following table shows the relationships between constituent feature A, of the patented invention and feature a, of the virtual object product A. Patented invention Virtual Object Product A Fulfilled or not A. A device that transmits data of a a. By using the RLC (Radio Link mobile communication system and Control) protocol for the UE - receives the service data unit (SDU) UTRAN radio interface, the from upper layers transmitting UM -RLC entity receives RLC SDUs from upper layers through the UM-SAP B.. b.. 13

16 (Explanation) (i) UE is the acronym of User Equipment (Japanese translation: ). UTRAN is the acronym of Universal Terrestrial Radio Network (Japanese translation: ). They refer to a user s terminal of a mobile communication system and the network to which the user s terminal accesses. RLC (Radio Link Control) (Japanese translation: ) is one of the communications protocols. UM is the acronym of Unacknowledged Mode (Japanese translation: ), which is one of the operating modes. SAP is the acronym of Service Access Point (Japanese translation: ), which means the point where network processing services are provided. Therefore, the data transmitting device, upper layers, and Service Data Unit (SDU) of the patented invention correspond to the UE, upper layers, and RLC SDU of Virtual object product A respectively. The feature a of virtual object product A fulfills fully constituent feature A of the patented invention. D. Statement of explanation that virtual object A falls within the technical scope of the patented invention and that the patented invention is essential to the standard Based on the technical comparison described in C. above, it is required to explain that virtual object A falls within the technical scope of the patented invention and that the patented invention is essential to the standard. (Example of statement of the explanation that virtual object A falls within the technical scope of the patented invention and that the patented invention is essential to the standard) Features a, of virtual object product A fulfill all of the constituent features A, of the patented invention respectively. Thus, the virtual object product A, which has features a,, falls within the technical scope of the patented invention. Since the virtual object product A falls within the technical scope of the patented invention, the patented invention is essential to the XXX standard. (4) Statement of means of proof 14

17 As in the case with a request for a conventional advisory opinion, the language used in proceedings is Japanese. If the standard document submitted as evidence is written in a foreign language, it is required to attach a Japanese translation of the relevant part of the document (Article 61 applied mutatis mutandis under Article 40 of the Regulations under the Patent Act). 4. Written reply submitted by the demandee In the section purport of the reply, it is required to state that the demandee seeks an advisory opinion to that virtual object product (process) A does not fall within the technical scope of the patented invention. In the section reasons for the reply, it is required to state, among other things, the reasons and the grounds for the demandee s allegation that the it does not fall within the technical scope and the counterargument against the demandant s allegation for each of the features decomposed by the demandant. The demandee may also submit evidence as Evidence No. B-x, if it is necessary. For instance, it is possible for the demandee to present such counterargument that there is a mistake in the interpretation of the statements contained in the standard documents that were used to specify virtual object A or that virtual object A is not as same that is specified in the standard documents, or that the features that correspond to the constituent features of the patented invention are not indispensable to the standard, but merely some options made available by the standard. Concerning the issues about which the demandee did not submit any counterargument, the JPO would make a determination based on the allegations and proof of the demandant. Thus, in such case, please note that the JPO s determination could be disadvantageous to the demandee. If the demandee thinks that the demandee should not be considered to be involved in the dispute over the essentiality, the demandee may give the specific reasons why the demandee thinks in that way. For instance, the demandee could explain that, while the demandee received a request for a licensing negotiation from the demandant with regard to the patent for which an advisory opinion is sought, the demandee has no dispute with the demandant over the essentiality of the patented invention. Under this advisory opinion system, the demandee could allege with regard to the technical scope of the patented invention but could not allege with regard to the validity of the patent right. It would be meaningless to state reasons for invalidation as a patent 15

18 invalidity defense. The demandee can file a separate request for a trial for invalidation, etc., if necessary. (Example of statement of the purport of the reply) We would like to request an advisory opinion to the effect that virtual object product A does not fall within the technical scope of the patented invention of the patent No. XXX. (Example of statement of the reasons for the reply) Concerning feature of virtual object product A, while the demandant interprets the statement contained in the standard document as, the statement concerning the said feature should be interpreted as based on the statement presented in lines XX to XX on page XX of the evidence No. A-x and the statement presented in lines XX to XX on page XX of the Evidence No.B-x. If the statements contained in the standard document are interpreted in this way, the feature of virtual object product A does not fulfill the constituent feature of the patented invention. Furthermore, On these grounds, virtual object product A does not fall within the technical scope of the patented invention of the patent No. XXX. 16

19 5. Example of a written request for an advisory opinion for essentiality check An example of a written request for an advisory opinion for essentiality check is presented below. 1. Indication of the case of advisory opinion request Case of advisory opinion request concerning the patent No. XXX 2. Demandant 3. Attorney of the demandant 4. Demandee 5. Purport of the request For the purpose of essentiality check, we would like to request an advisory opinion that virtual object product A, which complies with the XXX standard, falls within the technical scope of the patented invention of the patent No. XXX. 6. Reasons for the request (1) Necessity for the request for an advisory opinion The demandant and the demandee have been conducting a licensing negotiation concerning the patent related to the XXX standard. While the two parties have been discussing whether the patented invention is essential to the standard are not, they have failed to reach a consensus. For the essentiality check on the said patented invention related to the XXX standard, we filed this request for the JPO s advisory opinion from a fair, neutral perspective with regard to whether the virtual object product A, which complies with the XXX standard, falls within the technical scope of the patented invention. (2) Procedures before the JPO related to the patented invention 17

20 (3) Explanation of the patented invention Based on the description and drawings, it can be found that the XXX of the patent is described in Claim 1 as follows. The feature is decomposed into each constituent feature and called A A. A device that transmits data of a mobile communication system and receives the service data units (SDUs) from upper layers (4) Explanation of Virtual object A A. Virtual object product A is a data transmission device having the feature a, as follows. a. By using the RLC (Radio Link Control) protocol for the UE-UTRAN radio interface, the transmitting UM-RLC entity receives RLC SDUs from upper layers through the UM- SAP B. Explanation of a Evidence No. A-x (standard document) states as follows. The present document specifies the Radio Link Control protocol for the UE-UTRAN radio interface. (Page 8, 1 Scope ) (Japanese translation: ) The transmitting UM-RLC entity receives RLC SDUs from upper layers through the UM-SAP. (Page 14, Transmitting UM RLC entity ) (Japanese translation: ) These statements specify the most basic communications protocol for data transmission devices that comply with the standard. And since it is stated in page XX, lines XX to XX of Evidence No. A-x that, the features are indispensable to the standard. (5) Technical comparison between the patented invention and virtual object A The following table shows the relationships between constituent feature A, of the patented invention and feature a, of the virtual object product A. 18

21 Patented invention Virtual Object Product A Fulfilled or not A. A device that transmits data of a a. By using the RLC (Radio Link mobile communication system and Control) protocol for the UE - receives the service data unit (SDU) UTRAN radio interface, the from upper layers transmitting UM -RLC entity receives RLC SDUs from upper layers through the UM-SAP B.. b.. (Explanation) (i) UE is the acronym of User Equipment (Japanese translation: ). UTRAN is the acronym of Universal Terrestrial Radio Network (Japanese translation: ). They refer to a user s terminal of a mobile communication system and the network to which the user s terminal accesses. RLC (Radio Link Control) (Japanese translation: ) is one of the communications protocols. UM is the acronym of Unacknowledged Mode (Japanese translation: ), which is one of the operating modes. SAP is the acronym of Service Access Point (Japanese translation: ), which means the point where network processing services are provided. Therefore, the data transmitting device, upper layers, and Service Data Unit (SDU) of the patented invention correspond to the UE, upper layers, and RLC SDU of Virtual object product A respectively. The feature a of virtual object product A fulfills fully constituent feature A of the patented invention. (6) Explanation that virtual object A falls within the technical scope of the patented invention and that the patented invention is essential to the standard Features a, of virtual object product A fulfill fully the constituent features A, of the patented invention respectively. Thus, the virtual object product A, which has features a,, falls within the technical scope of the patented invention. Since the virtual object product A falls within the technical scope of the patented 19

22 invention, the patented invention is essential to the XXX standard. (7) Conclusion Since the virtual object A, which complies with the XXX standard, fulfills all of the constituent features of the patented invention, the virtual object A falls within the technical scope of the patented invention. 7. Means of proof (1) Evidence No. A-1: Patent Gazette No. XXX (2) Evidence No. A-2: Standard document XXX 8. List of the attached documents and attached items (1) Request for an advisory opinion 2 (copies) (2) Explanation of virtual object A 1 (original) 2 (copies) (3) Certified copy of the patent register 1 (original) 1 (copy) (4) Power of attorney 1 20

23 6. Examples of a written advisory opinion for essentiality check The JPO s advisory opinion is publicized to the public. The following examples shows a written advisory opinion for essentiality check. (Example of a written advisory opinion containing comment to essentiality) [Indication of the case] The following advisory opinion is given concerning the case between the aforementioned parties concerned over the patent No. XXX for which an advisory opinion is sought. [Conclusion] The virtual object A, which complies with the XXX standard, falls within the technical scope of the patented invention of the patent No. XXX. [Reasons] 1. Purport of the request The stated purport of the request for an advisory opinion is that, for the purpose of essentiality check, the demandant seeks the advisory opinion that virtual object A, which complies with the XXX standard, falls within the technical scope of the patented invention of the patent No. XXX. 2. Procedures before the JPO related to the patented invention 3. Patented invention 4. Virtual object A 5. Comparison and determination On these grounds, the virtual object A fulfills all of the constituent features of the patented invention. 21

24 6. Determination As described above, the virtual object A, which complies with the XXX standard, falls within the technical scope of the patented invention. Thus, an advisory opinion is given as stated in the section Conclusion above. The following comment is added with regard to the patented invention. Based on the allegations and evidence submitted by the parties concerned, the virtual object A, which complies with the XXX standard, falls within the technical scope of the patented invention. Therefore, the patented invention can be considered to be essential to the XXX standard. (Example of an advisory opinion that does not contain comment to essentiality) [Conclusion] The virtual object A, which complies with the XXX standard, does not fall within the technical scope of the patented invention. 5. Comparison and determination Thus, the virtual object A does not fulfill the constituent features of the patented invention. 6. Determination As described above, the virtual object A, which complies with the XXX standard, does not fall within the technical scope of the patented invention. Therefore, an advisory opinion is given as stated in the section Conclusion above. 22