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A Comprehensive Analysis of the Patent Invalidation System in Japan: Administrative Trial, Judicial Review, and Practical Strategies
As a leading country in the global innovation index, Japan's patent invalidation system is dominated by administrative trials and protected by judicial review, forming an efficient and rigorous "two-level system". Unlike Germany's divisional system, the final decision on the invalidity of Japanese patents belongs to the Japan Patent Office (JPO), and the court only conducts a legality review. This article systematically analyzes the operational logic and practical points of Japan's patent invalidation system from the perspectives of legal basis, procedural flow, and evidence rules.
PART .01
Legal Basis: Legal Reasons for Patent Invalidity
(Article 123 of the Japanese Patent Law)
According to Article 123 of the Japanese Patent Law (Patent Law), the statutory circumstances in which a patent may be declared invalid include:
Special provisions:
Utility model patent:The reasons for invalidity are limited to novelty, utility, and repeated authorization (Article 37 of the Utility Model Law).
Supplementary Protection Certificate (SPC):If the basic patent is invalid, SPC will automatically become invalid (Article 14-3 of the Pharmaceutical Law).
PART .02
Invalid Procedure: Dual stage System of Administrative Trial and Judicial Review
Jurisdiction: The Trial Division of the Japan Patent Office (Trial Division), which includes technical divisions in the fields of chemistry, mechanics, and electronics.
core process
Program features:
Composition of the panel: 3 or 5 judges (with both technical background and legal qualifications).
Trial cycle: On average, it takes 12-18 months, and complex cases can be extended to 2 years.
Correction trial linkage: Patent holders may request correction of claims in invalidation trials (Article 134).
Jurisdiction Court:
First instance: Exclusive jurisdiction of the Intellectual Property High Court (Intellectual Property High Court).
Final appeal: Supreme Court (Supreme Court).
Scope of review:Only review the legality of JPO's ruling (evidence adoption, legal application, etc.), without re examining technical facts.
Key precedents:
In the 20th year of the Heisei era (No. 10010), the Supreme Court clarified that courts cannot directly determine the validity of patents and must respect JPO's technical judgment.
PART .03
The linkage between invalid procedures and infringement lawsuits
plea of nullityInfringing defendants can claim patent invalidity in litigation, but the court usually suspends the trial and waits for the result of the JPO invalidation trial (Article 148 of the Civil Procedure Law).
Exception:If the court considers the patent to be clearly invalid, it may directly reject the original claim (as of April 11, 2012).
Reverse payment strategy:In the pharmaceutical field, it is common for original drug companies and generic drug companies to reach agreements to delay the invalidation trial process and extend the market monopoly period.
PART .04
Rules of Evidence and Burden of Proof
Burden of proof:The burden on the invalid requester (Article 179 of the Civil Procedure Law) must meet the standard of "high probability".
Core evidence type:
Evidence submission deadline: The requester must submit all evidence within 3 months from the date of request (Article 13 of the Trial Rules).
PART .05
Revised Trial System: A Defense Weapon for Patent Owners
Program linkage: In invalidation trials, patent owners can simultaneously request correction of their claims (Article 134).
Correction restrictions:
The scope of the claims shall not be expanded or substantially changed;
No new unrecorded technical features shall be added (as of February 8, Heisei 23).
Strategic value: By narrowing the scope of claims, avoiding the risk of invalidity, and maintaining some rights.
PART .06
Practical Strategies and Industry Applications
Quick decision priority: For high-risk patents, priority should be given to initiating JPO invalidation trials (faster than infringement lawsuits).
Infringement countermeasures: Upon receiving an infringement warning letter, immediately file an invalid request to gain bargaining chips.
Drug re examination system: Generic drug companies can challenge the original drug patent through Article 14-4 of the Drug Administration Law, triggering JPO priority review.
Linkage of data protection period: Patent invalidity may affect the data exclusivity period (the latest ruling is July 17, Heisei 30).
JPO review file utilization:Obtain examination opinions for patents of the same family and identify novelty/inventive defects.
Mandatory requirement for notarized documents:Sales records and webpage evidence must be authenticated by a Japanese notary public.
