Patent Act Article 120-5: Request for Correction in Response to Notification of Reasons for Revocation
1. Explanation of the Article
When a notification of reasons for revocation is issued, the patentee may submit a written opinion or a request for correction within a prescribed period (Patent Act Article 120-5, Paragraph 2). If the patentee were unable to do anything, it would be too disadvantageous to them, and from another perspective, it would mean that an invention that should be protected would not be protected.
In a request for correction, unlike an amendment in response to a final notice of reasons for refusal (Patent Act Article 17-2, Paragraph 5, Item 2), the scope of the patent claims can be narrowed (it is not limited to the restrictive narrowing of Article 17-2, Paragraph 5, Item 2). Note that if you have filed a request for correction with incorrect content, there is no problem if you immediately file a request for correction with the correct content (Patent Act Article 120-5, Paragraph 7).
A request for correction can be made within a reasonable period (usually 60 days) after the notification of reasons for revocation is issued (Patent Act Article 120-5, Paragraph 2). Also, after receiving a written opinion, etc., from the patentee following the notification of reasons for revocation, it may be determined again that the patent should be revoked. In this case, the fact that it is an "advance notice of a decision" will be clearly stated in the document of the notification of reasons for revocation. A request for correction can be made even after such a notification of reasons for revocation, which clearly states that it is an advance notice of a decision, has been issued (Patent Act Article 120-5, Paragraph 2).
A request for correction made in response to a notification of reasons for revocation can be withdrawn during the period for submitting a written opinion specified in the notification of reasons for revocation (including a notification of reasons for revocation issued as an advance notice of a decision) or in a notification of reasons for refusal of correction (Patent Act Article 120-5, Paragraph 8).
2. Cases where a notification of reasons for revocation is not issued (Operational exceptions)
The patent opposition system is a system that allows a person to file an opposition to the revocation of a patent within six months from the date of publication of the patent gazette, on the grounds that the registered patent does not meet the prescribed patent requirements (Patent Act Article 113).
When a notification of reasons for revocation (Patent Act Article 120-5) is issued in a patent opposition, I believe that a request for correction corresponding to the content of the notification of reasons for revocation may be made in order to maintain the patent.
When making this request for correction, if the patentee does not request an advance notice of a decision, it seems that an advance notice of a decision (notification of reasons for revocation (Patent Act Article 120-5)) stating that the patent will be revoked even if the request for correction is taken into account may not be issued (Trial and Appeal Examination Guidelines 67-05.5 Notification of Reasons for Revocation (Advance Notice of Decision)).
* Naturally, if the patent is maintained in the patent opposition (i.e., it is not revoked), no notification of reasons for revocation will be issued.
2. Cases where a notification of reasons for revocation (advance notice of decision) is unnecessary
In the following cases, a decision is made without issuing a notification of reasons for revocation (advance notice of decision).
(1) Cases where there is no response to the notification of reasons for revocation (no submission of a written opinion or request for correction)
If there is no response to the notification of reasons for revocation, there is no need to provide a further opportunity for correction, so no advance notice of a decision is issued (-> 67-05.3, 3.).
(2) Cases where the patentee requests not to receive an advance notice of a decision
If the patentee does not wish to receive an advance notice of a decision for the purpose of obtaining an early decision on the patent opposition, no advance notice of a decision is issued. The patentee shall state that they do not wish to receive an advance notice of a decision in their written opinion in response to the notification of reasons for revocation.
3. Are new citations not considered in patent oppositions?
Trial and Appeal Examination Guidelines (19th Edition) 67-05.4 describes the handling when an opponent presents "substantially new reasons and evidence" in a written opinion after the patentee has filed a request for correction in a patent opposition.
In this case, it states that "such substantially new reasons and evidence shall not be adopted," so in principle, substantially new reasons and evidence do not seem to be considered in the examination of the opposition.
However, in exceptional cases such as "when the reasons arise incidentally to the content of the request for correction, such as views on matters added by the correction, or when it is obvious at a glance that they constitute appropriate reasons for revocation," it seems that "substantially new reasons and evidence" are considered.
When I inquired with the Japan Patent Office, the purpose of this section is,
Reasons for revocation or evidence that could have been presented "within" the opposition period will not be adopted even if presented "after" the opposition period has elapsed
or so it seems.
・Trial and Appeal Examination Guidelines (19th Edition) 67-05.4 Submission of written opinions by patent opponents
(1) When a lawful request for correction is made against a notified reason for revocation, the trial board must, unless the patent opponent does not wish to do so (Note) or there are special circumstances where it is recognized that there is no need to provide such an opportunity (Patent Act Article 120-5(5) proviso), send a copy of the written statement stating the reasons for revocation (containing the same content as the reasons for revocation notified to the patentee), the written opinion, the written request for correction, and the attached corrected description, scope of claims, or drawings (referred to as "corrected description, etc." in 67-05.4 of this section) to the patent opponent, and must provide an opportunity to submit a written opinion by specifying a reasonable period (standard 30 days (50 days for overseas residents) → 25-01.4) (Patent Act Article 120-5(5)).
(Note) A case where the patent opponent does not wish to submit a written opinion is when the patent opponent has stated in the written opposition to the patent that they do not wish to submit a written opinion (see Patent Act Enforcement Regulations Article 45-2, Form 61-2, Note 4).
(2) The panel shall deliberate by taking into consideration the content of the written opinion submitted by the patent opponent. However, if the content of the opinion presents substantially new reasons or evidence, such substantially new reasons and evidence shall not be adopted, except in cases where they are reasons arising incidentally to the content of the request for correction, such as views on matters added by the correction, or where it is obvious at a glance that they constitute appropriate reasons for revocation, in light of the impact on the public interest and the purpose that the period for filing a patent opposition is limited to six months from the date of publication of the patent gazette.
・Patent Act Article 120-5
(Submission of Written Opinion, etc.)
Article 120-5 (1) When the chief trial examiner intends to make a decision of revocation, they must notify the patentee and the intervenor of the reasons for the revocation of the patent and provide them with an opportunity to submit a written opinion by specifying a reasonable period.
(2) The patentee may request a correction of the description, scope of claims, or drawings attached to the application only within the period specified pursuant to the provisions of the preceding paragraph. However, such correction is limited to the purpose of the following items:
i. Reduction of the scope of claims
ii. Correction of errors or incorrect translations
iii. Clarification of ambiguous statements
iv. Changing the statement of a claim that cites the statement of another claim to one that does not cite the statement of said other claim.
(3) In the case of correcting the scope of claims attached to the application pertaining to two or more claims, the request for correction under the preceding paragraph may be made for each claim. However, if the patent opposition is filed for each claim, the request for correction under the same paragraph must be made for each claim.
(4) In the case of the preceding paragraph, if there is a group of claims (hereinafter referred to as a "group of claims") in which one claim cites the statement of another claim or has other relationships specified by Ordinance of the Ministry of Economy, Trade and Industry, the request must be made for each such group of claims.
(5) When a request for correction under paragraph (2) is made within the period specified pursuant to the provisions of paragraph (1), the chief trial examiner must send a copy of the document stating the reasons for the revocation of the patent notified pursuant to the provisions of paragraph (1), as well as the written request for correction and the attached corrected description, scope of claims, or drawings, to the patent opponent, and must provide an opportunity to submit a written opinion by specifying a reasonable period. However, this does not apply when the patent opponent has stated that they do not wish to submit a written opinion, or when there are special circumstances where it is recognized that there is no need to provide the patent opponent with an opportunity to submit a written opinion.
(6) When the request for correction under paragraph (2) does not have the purpose of the items listed in the proviso of the same paragraph, or does not conform to the provisions of Article 126, paragraphs (5) through (7) as applied mutatis mutandis by replacing the terms in paragraph (9), the chief trial examiner must notify the patentee and the intervenor of the reasons and provide them with an opportunity to submit a written opinion by specifying a reasonable period.
(7) In the case where a request for correction under paragraph (2) is made, if there is a prior request for correction in the same patent opposition case, the prior request is deemed to have been withdrawn.
(8) A request for correction under paragraph (2) may be withdrawn only within the period during which an amendment under Article 17-5, paragraph (1) can be made with respect to the corrected description, scope of claims, or drawings attached to the written request for correction under the same paragraph. In this case, if the request for correction under paragraph (2) was made for each claim or each group of claims pursuant to the provisions of paragraph (3) or (4), all such requests must be withdrawn.
(9) The provisions of Article 126, paragraphs (4) through (7), Article 127, Article 128, Article 131, paragraphs (1), (3), and (4), Article 131-2, paragraph (1), Article 132, paragraphs (3) and (4), and Article 133, paragraphs (1), (3), and (4) apply mutatis mutandis to the case of paragraph (2). In this case, the phrase "item (i) or (ii) of the proviso to paragraph (1)" in Article 126, paragraph (7) is deemed to be replaced with "item (i) or (ii) of the proviso to paragraph (1) pertaining to a claim for which no patent opposition has been filed."
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