1. 1. Background

 In Japan, both procedures of an opposition to a patent (Article 113 of Patent Act) and a trial for patent invalidation (Article 123 of Patent Act) have coexisted for causing a patent right to lapse since the revival of the opposition to a patent (since April 1, 2015).

 Although the opposition to a patent can be filed by any person, it must be filed within 6 months from the date of publication of the patent gazette. On the other hand, the request for the trial for patent invalidation can be filed at any time after the patent registration (even after the lapse of the patent), whereas only interested persons have the eligibility of the demandant.

 Therefore, in case of filing the request for the trial of patent invalidation in Japan, the demandant for the trial must be the interested person. If no interest is found in the demandant, such request is dismissed by the trial decision due to an unlawful request without any eligibility of the demandant (Article 135 of Patent Act).

 According to the trial manual of Japan Patent Office (JPO), the interested person is defined to be a person whose legal interest and legal status to the right will be or may be affected by existence of the patent and the like. Additionally, the trial manual also describes that whether or not the demandant is found to be the interested person is decided on case-by-case basis in relation with nature of the right, the business of the demandant and the like, and should not be decided as a general capacity such as the one to undertake procedures apart from the case.

 Thus, since the decision on whether or not the demandant falls under the interested person stated above is made on case-by-case basis, it is assumed that there may be some cases where such decision is difficult upon filing an actual request for the trial for patent invalidation.

 Under such circumstances, in this News Letter, we introduce one recent judicial precedent of Intellectual Property High Court in the case where eligibility of the demandant of the trial for patent invalidation (whether to be the interested person) has been contested for a reference to decide whether to fall under the interested person upon filing request for the trial for patent invalidation in Japan.

2. 2. Judicial precedent (Court decision of October 23, 2017, the year of 2016 [administrative litigation case, the first instance] No. 10185)

2.1. Outline

 A demandant (plaintiff) has filed in the JPO, a request for a trial for patent invalidation against Patent No. 5225248 (the subject patent), the title of the invention of which is “an underwear-type disposable diaper.”

 However, the request for the trial for the patent invalidation has been dismissed by the JPO (The request has been dismissed by the trial decision.) due to an unlawful request since the demandant (plaintiff) does not fall under the interested person stipulated in Article 123 of Patent Act and has no eligibility of the demandant for this trial.

 Meanwhile, the demandant (plaintiff) has filed an appeal to Intellectual Property High Court for seeking the revocation of the decision.

 As a result, the Intellectual Property High Court has finally made the court decision to overcome and dismiss the decision in the trial decision by JPO on the eligibility of demandant and then decided that the demandant (plaintiff) has its eligibility since the demandant falls under the interested person.

 The details are as follows:

2.2. Summary of the trial decision of the trial for patent invalidation

 The request for the trial for patent invalidation of Patent No. 5225248, the invention title of which is “an underwear-type disposable diaper” shall be dismissed due to an unlawful request since the demandant (plaintiff) does not fall under the interested person stipulated in Article 123 of Patent Act and has no eligibility of demandant in this trial.

 In order for the demandant (plaintiff) to be found as the interested person, it is required that the demandant prepares to implement something related to this patented invention and is likely to suffer disadvantages by protecting erroneously the patented invention to be invalidated. However, any acts (a patent application as part of commercialization, production of prototypes, preparation of presentation materials for existing diaper manufacturer and the like or inquiries therefor, or registration to internet site) of the demandant (plaintiff) do not fall under the preparation of implementation of (something related to) this patented invention, and it is not likely to suffer any disadvantages by granting erroneously a patent and protecting the patented invention to be invalidated, so that the demandant (plaintiff) shall not fall under the interested person stipulated in Article 123(2) of Patent Act.

 In order for the demandant (plaintiff) to be evaluated as the person preparing for implementation of this patented invention, it should be considered that, for example, companies having any manufacturing facilities, funds and distribution channels, required for the business of manufacturing and distributing paper diapers (the business accompanied with manufacturing of invention of products, transfer and the like), prepare (or plan to do) business which falls under implementation of this patented invention, as well as the demandant (plaintiff) is required to prove proactive involvement at least in a part of such business.

2.3. Summary of the court decision of Intellectual Property High Court

 After examination of the demandant (plaintiff), the court decision concludes as follows:

 The demandant (plaintiff) does not file the request for the trial for patent invalidation on a mere impulse, but actually files a patent application on the plaintiff’s invention which belongs to the same technical fields as the patented invention and a subsequent request for examination of the application. Therefore, the demandant (plaintiff) thinks of the future implementation (commercialization) of the plaintiff’s invention by granting a license or entrusting its manufacture, so that the demandant thinks that it is required to eliminate in advance the possibility of conflict with (possibility of infringement of) the subject patent owned by demandee (defendant) and then files the request for the trial for patent invalidation. There are no evidence or reason to suspect the demandant to dare to make a false argument or statement on the motive or background.

 According to the circumstances stated above, it is acknowledged that the demandant (plaintiff) plans to implement the plaintiff’s invention through the method such as the entrustment of manufacturing, and for its commercialization, the demandant takes various actions for realizing plans such as filing the patent application (including the request for examination of application), manufacturing prototypes (samples) and having contact with agents through internet. Under these circumstances, since the implementation of the plaintiff’s invention has a possibility to conflict with the subject patent, the demandant should be considered to have the sufficient interest upon requesting the invalidation of the subject patent.

 Meanwhile, as stated in the trial decision above, in order for the demandant (plaintiff) to be evaluated as the person preparing for implementation of this patented invention, it should be considered that companies, for example, having any manufacturing facilities, funds and distribution channels required for the business of manufacturing and distributing paper diapers (the business accompanied with manufacturing of invention of products, transfer and so on), prepare (or plan to do) business which falls under implementation of this patented invention as well as the demandant (plaintiff) is required to have proactive involvement in a part of such business.

 However, even if the demandant (plaintiff) is trying to negotiate with any subcontractor, in a case where the company is reluctant to negotiate due to risk of conflict with the subject patent, demandant (plaintiff) could not request for the trial of patent invalidation immediately. Hence, the above-mentioned requiring of demandant’s proactive involvement is likely to bring about the consequences that the demandant (plaintiff) must make preparing actions in the beginning such as introduction of manufacturing equipment. Thus, it should be considered to be unreasonable if the request for the trial for patent invalidation to avoid economical risk is not allowed and if the trial for patent invalidation cannot be requested before the demandant (plaintiff) takes economical risk.

 As explained above, Intellectual Property High Court has made the court decision to rescind the trial decision of the trial for patent invalidation under the consideration that the demandant (plaintiff) has a sufficient interest in the request for invalidation of the subject patent and eligibility of the demandant.

2.4. Deliberation

 In this court decision, if the demandant (plaintiff) plans to implement the plaintiff’s invention by using the method such as entrustment of manufacturing and makes any action for realizing the plan, in a case where any conflict with the subject patent can be caused by implementation of the plaintiff’s invention, it is found that the demandant (plaintiff) shall have the sufficient interest on the request for invalidation of the subject patent even if the demandant (plaintiff) does not make any action such as introducing actual manufacturing equipment.

 Furthermore, the court decision does not include any detailed decisions of whether or not the plaintiff’s invention is in the technical scope of this patented invention (whether to be the subject patented invention itself and whether to have any relationship to use this patented invention), whereas it is considered, as the result of evaluating the claim of the demandant (plaintiff) and the detail of plaintiff’s invention (the detail of patent application), that the demandant has a sufficient interest on the request for invalidation of the subject patent if the plan of implementation of the plaintiff’s invention and the action to realize such plan, made by the demandant (plaintiff), can possibly conflict with the subject patent (to include the plaintiff’s invention in the technical scope of the subject patented invention).

 Accordingly, it had been considered in some cases before this court decision was made that the demandant (plaintiff) is not the interested person, even if the demandant (plaintiff) makes the plan of implementation of the plaintiff’s invention through the method such as the entrustment of manufacturing, and the action to realize such plan, unless the demandant (plaintiff) proves the plaintiff’s invention is in the technical scope of this patented invention (the conflict of the subject patent caused by such action). Whereas, this court decision can be construed that as long as the demandant (plaintiff) can show the possibility to conflict with the subject patent, the demandant (plaintiff) falls under the interested person without proactively proving that the plaintiff’s invention is in the technical scope of this patented invention (the conflict of the demandand’s action with the subject patent).

 Therefore, we think that the above judicial precedent can serve as a useful reference giving a criterion to decide whether eligibility of the demandant for a trial for patent invalidation meets requirements or not (whether to fall under the interested person).

 We hope that this News Letter helps you upon request for a trial for patent invalidation in Japan.

 Please feel free to contact us if any question or details to ask.