Murgitroyd and Sonoda & Kobayashi present Topic 1 Topic 2 Topic 3 Topic 4 Contact Patents: opposition proceedings and nullity actions a comparison between Europe and Japan Luca Escoffier Diane Beylier moderators Dr.sc. Robert Börner Dr. Yoshitaka Sonoda Webinar, April 27, 2018 www.eubusinessinjapan.eu.
Option 1 : OPPOSITION u Filed within 6 months from publication of the patent u Oppositions were revived in Japan in 2015. u 1250 oppositions were filed in 2017 Option 2 : NULLITY ACTION u Filed any time after grant of the patent u 161 Nullity Actions were filed in Japan in 2017 q 318,028 patents were filed in 2017 in Japan q 199,577 patents were registered 1
OPPOSITION AT THE EPO / NATIONAL INVALIDATION PROCEEDINGS Number of granted patents in 2017: 105,635 Number of oppositions filed in 2017: 3900 Source: EPO Status: 22.1.2018 Invalidation proceedings at the Federal German Patent Court (2016) Filed: 284 Pending: 403 Closed: 206 Patent revoked: 43.62 % Patent upheld in amended form: 35.46 % Invalidation request rejected: 20.92 % 2
OPPOSITION AT THE EPO - ENTITLEMENT opposition open to any person (Art. 99 (1) EPC) no own legal interest required one exception: patent owner not entitled to file an opposition (however, the inventor is) opponent needs to be identifiable not possible to file an opposition anonymously use of third party as straw man allowable, unless the intent is to circumvent the law not possible to use straw man for patentee status as opponent may be transferred/assigned only as part of the opponent's business assets 3
u Any third can file an Opposition, not only interested party u An Opposition can be filed anonymously, using a straw man Advice to Opponent Ø The strawman should not be a patent attorney so as to actually hide the true identity Ø Choosing an Opposition is recommended if you want to remain anonymous 4
Reasons for which an Opposition may be made are matters of public interest: u lack of novelty or lack of inventive step u lack of support, clarity or enablement u Introduction of new matter by amendments Double patenting Non patentable subject matter Advice to Opponent Ø An Opposition is not an inter-partes procedure, the opponent must convince the board of appeals, and the board may raise its own reasons for revocation 5
OPPOSITION AT THE EPO GROUNDS (1) Art 100 EPC (a) the subject-matter of the European patent is not patentable under Art. 52 to 57 EPC lack of novelty / inventiveness excluded subject matter no industrial application (b) the European patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art ( lack of sufficiency ) (c) the subject-matter of the European patent extends beyond the content of the application as filed (Art 123 (2) EPC) No grounds: lack of unity / lack of clarity / lack of support / formal matters / inventor designation wrong / patentee not entitled to patent / 6
OPPOSITION AT THE EPO GROUNDS (2) all raised grounds need to be substantiated in the notice of opposition new grounds for opposition, i.e. grounds raised after the expiry of the opposition period only allowable, if prima facie relevant may also be raised by the opposition division grounds covered by Art 100(a) are separate grounds Amended claims need to comply with all requirements of the EPC if amendments are based on description only new grounds may be raised further objections possible (e.g. clarity, unity, ) ADVICE: Raise and substantiate all grounds for opposition in the notice of opposition! 7
OPPOSITION AT THE EPO - TIMEFRAME deadline for filing opposition is 9 months from the publication of the mention of the grant of the European patent EPO initiative early certainty for opposition lower average time to 15 months (currently > 25 months) Strict deadline regime (EoT only in exceptional cases) officially one round of submissions before summons to oral proceedings, i.e. opposition note and reply of patentee 8
OPPOSITION AT THE EPO - HEARING summons at least 6 months before hearing summons includes preliminary opinion last statements to be filed 2 month before hearing new requests / evidence only admitted if prima facie relevant possible outcome (decision at end of hearing) maintain patent as granted maintain patent in amended form revoke patent minutes and written decision will follow within some weeks after the hearing 9
Ø The 6-month time period is short for non- Japanese opponents and filing a Nullity Action would be more suitable in cases in which counter-experiments must be performed, in particular Ø There is no oral hearing, therefore test data and affidavits must be detailed and self-explanatory Ø A decision can be expected within 6 months 10
Opponent Filing of Opposition JPO Publication of patent Forwarding of copy Start Examination Patentee May request acceleration Filing of Remarks (when amendments are requested) Are there reasons for revocation? Yes Notify of reasons for revocation Request comments (if amending) No Filing of Remarks and/or Amendments Continued Examination Decision by board 11
u A decision to maintain the patent cannot be appealed. In contrast, the patentee can file an appeal against a decision of revocation with the IP high court. u Filing a Nullity Action would be the next step Ø However, overturning a decision by a Nullity Action requires a higher burden of proof Ø We recommend waiting at least 6 months to allow for potential changes in board membership 12
OPPOSITION AT THE EPO APPEAL (1) appeal to be filed within two months of notification of the contested decision appeal fee to be paid grounds to be filed within four months of notification of the contested decision appeal only possible if adversely affected by decision no reformatio in peius grounds of appeal and reply should contain a party s complete case, i.e. all facts, arguments, requests and evidence later filed evidence / requests may be rejected 13
OPPOSITION AT THE EPO APPEAL (2) some boards will only review legal aspects of the first instance decision (maybe in future all boards) only requests filed in first instance will be accepted no further technical discussion possible usually one round of submissions before summons to oral proceedings (with preliminary opinion) deadline for final submissions 1 month before hearing it is possible for the board to remit case to first instance current time frame 3 4 years, to be decreased by increase of productivity 14
NATIONAL INVALIDATION PROCEEDINGS (FOCUS DE) EP patent divided into plurality of national patents no centralized invalidation possible Germany court action at Federal German Patent Court formalistic proceedings open to general public (no legal interest needed) no deadline but not possible, if opposition pending language of proceedings is German but language of EP patent relevant 15
GERMAN INVALIDATION PROCEEDINGS (1) one round of statements, i.e. grounds for invalidity and reply by patentee preliminary opinion of court indication main issues and setting date for oral proceedings one more round of statements possible in preparation of oral proceedings decision on costs (losing party bears costs) high cost risk (depending on value of case) 16
GERMAN INVALIDATION PROCEEDINGS (2) possible grounds for invalidation are the same as in EP opposition, however, additional ground of fraudulent abstraction patent court not bound to earlier decision of EPO additional prior art in form of national earlier rights possible to raise same ground for invalidation as in earlier opposition advisable to rely on additional documents if possible average time frame until decision is 25 months 17
GERMAN INVALIDATION PROCEEDINGS APPEAL appeal to Federal German High Court to be filed within one month of notification of the contested decision grounds to be filed within three months of notification of the contested decision appeal only possible if adversely affected by decision no reformatio in peius High Court reviews appeal for admissibility and summons for oral proceedings High Court may ask for further statements 18
GERMAN INVALIDATION PROCEEDINGS APPEAL new evidence, arguments and requests may be rejected as late filed in principle only a legal review of first instance decision court may call for technical expert decision taken in oral proceedings timeframe: 2 to 4 years decision on costs (losing party bears costs) high cost risk (depending on value of case) around 60 new cases per year 19
u An interested third party can file a Nullity Action any time after grant of a patent u Nullity Actions therefore cannot be filed anonymously u The cost is 2-3 times as much as for an Opposition u For a 10-claim application, the official fees are about 300 euros for an opposition but 780 for a Nullity Action u Attorney hours usually double due to preparation for and attendance of oral hearings u A decision can be expected within a year 20
Reasons to invalidate a patent are similar to those for an Opposition: u Lack of novelty or lack of inventive step u Lack of support, clarity or enablement u Introduction of new matter by amendments Double patenting Non-patentable subject matter u Additionally, the ownership of the patent may be raised u The board of appeals is bound by the reasons and arguments and cannot raise any additional reasons to invalidate the patent 21
u In contrast with oppositions, an opponent may appeal the decision to maintain the patent to the IP High court u The patentee can also appeal a decision of invalidation Ø Nullity Actions had a 60% success rate in 2006, however, among the 345 decisions issued last year, only 30.9% were to invalidate 22
Opposition Nullity Action Comments Term for filing 6 months from publication of patent Any time after grant Only a Nullity Action is available after 6 months have passed Eligibility for filing Any third party Interested parties A strawman may be used for an Opposition Possible reasons for filing Reasons for rejection Reasons for rejection + rights ownership Only a Nullity Action is available for ownership Style of proceedings Initiative by the board Inter-partes An Opposition is more difficult to invalidate a patent? Presentation of arguments Documentary Documentary + oral examination No disadvantage for foreign party in an Opposition 23
Opposition Nullity Action Comments Withdrawal Not possible after a Notice of Reasons for Revocation is issued Anytime before finalization of the decision Official fees JPY 16,500 (124 euros) + JPY 2,400 (18 euros) x Nc JPY 49,500 (373 euros) + JPY 5,500 (41 euros) x Nc The total cost tends to be higher for Nullity Actions Speed 5.8 months on average One year Difference insubstantial if appealed Appeals Revocation may be appealed by patentee at the IP High Court All decisions may be appealed to the IP High Court Once an Opposition is rejected, new evidence will likely be needed to invalidate the same patent with a Nullity Action 24
EPO OPPOSITION VS. INVALIDATION EPO opposition Centralized proceedings Each party bears own costs cheap Only EP earlier rights Only possible within 9 month after grant EPO may continue opposition after withdrawal Invalidation Plurality of national proceedings Losing party bears costs High cost risk Additional national earlier rights No deadline for filing court action Possible in addition to EP opposition Ends if action withdrawn EPO opposition seems advisable 25
Year Total Decisions Revoked Maintained (Amendments) Maintained (No Amendments) Withdrawn or Dismissed Pending* 2015 362 46 (12.7%) 167 (46.1%) 145 (40.1%) 4 (1.1%) 1 } Low success rate for opponents who seek the revocation of a patent } Recent pro-patent trend at the JPO } The success rate for Oppositions is low (12.7%) compared to that for Nullity Actions (30%) 26
In decisions to maintain a patent, the claims were amended in 51.3% of the cases, however u Amendments are made by the patentee and the resulting patentability is examined by the board of appeals; u The opponent cannot directly influence the amendments and the claims. 27
Choose Opposition for: v Lower costs v Speed v Anonymity Ø An Opposition can be seen as a continuation of Observations Choose Nullity Action if: ² Invalidation is of the utmost importance ² 6 months is too short to prepare evidence ² Ownership of the invention is to be raised ² To be used as a tool for negotiation (license against withdrawal) 28
INVALIDATION PROCEEDINGS FOR UNITARY PATENTS invalidation action for unitary patent to be filed at Central Division of Unified Patent Court centralized proceedings with one decision for full territorial scope of unitary patent language of proceedings is language of patent very strict time frame (12 15 months) high court fees and cost risk (based on value of case) appeal possible no case law unknown territory 29
UPC AND UNITARY PATENT - STATUS court action pending against UPC scheme at German Constitutional Court decision expected during this year (?) if positive decision, a fast ratification by DE and UK is possible UPC system may enter into force within months effect of BREXIT??? 30
Topic 1 Topic 2 Topic 3 Topic 4 Contact Thanks to the audience! Dr. Yoshitaka Sonoda Sonoda & Kobayashi Dr.sc. Robert Börner Murgitroyd, Munich Office www.eubusinessinjapan.eu