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AIPPI Journal, March 2019

“Judicial Symposium on Intellectual Property/TOKYO 2018”- Global Collaboration for IP Dispute Resolution Outline of the Results (Second Day)
Shunsuke SHIKATO*
Kenichi HASEHIRA**
Motoshi TAKADA***

1. Introduction

2. Keynote Speech

The Japan Patent Office hosted thesecond day of the “Judicial Symposiumon Intellectual Property / TOKYO 2018”
held in fall 2018. Administrative judges
of intellectual property offices fromJapan, Europe, and the United States gave
speeches. Themes for the symposium
were “the Latest Situation of Trials andAppeals of Each Office” and “Introduction of Trial and Appeal System for
Patent Invalidation of Each Office.”
Panel discussions were also held on“Trial and Appeal Procedures for Patent
Invalidation” and “Whether or Not
Claims Can Be Corrected/Amended in a
Trial for Invalidation/IPR/Opposition.”
This article makes a report of thecontent of each program on the secondday.

At the beginning, Deputy Commissioner Kunihiko Shimano of the Japan
Patent Office (JPO) gave a keynote
speech. He stated that the JPO has
recently been strengthening relationships
with the United States Patent and Trademark Office (USPTO), the European
Patent Office (EPO), and the intellectual
property offices of ASEAN countries asinternational efforts of the JPO’s trial andappeal sector, in addition to Joint Experts
Group for Trial and Appeal meetings
among Japan, China, and South Korea
which have been held in the past. In addition, he also stated that it is very important to carry forward exchange of
information through international cooperation not only for increasing predictability in users’ utilizing trial and appeal
systems overseas but also for each
office’s pursuing best practice. Then, he
explained the outline of the second day*

Deputy Director, Policy Planning Section, Trial and Appeal Division, Trial and Appeal Department,
Japan Patent Office** Deputy Director, Trial and Appeal Division, Trial and Appeal Department, Japan Patent Office*** Assistant Director, Policy Planning Section, Trial and Appeal Division, Trial and Appeal Department,
Japan Patent Office

AIPPI Journal, March 2019and expressed his expectation that users
will develop knowledge on trial andappeal proceedings not only in Japan but
also in the United States and Europe andincrease predictability in utilizing each
office’s trial and appeal system, which
will help prompt resolution of intellectual
property disputes.

3. Speeches (The Latest Situation of Trials and Appeals of
Each Office)The offices gave speeches on the latest situation of trials and appeals in Japan,
Europe, and the United States, respectively.
The outline of each office’s speech isreported below.
3-1. JPO Trial and Appeal Department(TAD)
Director-General Reeko Imamura
from the TAD gave a speech on the “latest trends and efforts in trials andappeals.”
In this speech, she explained theactual conditions of trials and appeals andefforts for timely and reliable trial andappeal decisions, as well as determinations concerning standard essential
patents and provision of information
about proceedings by J-PlatPat as the latest topics.
In the speech, she introduced the following fact: in September 2018 whenthree years passed since the launch of thesystem of opposition to grant of patent,
the Manual for Trial and Appeal Proceedings was revised in order to solve problems because there have been cases
where the pendency period is prolonged
due to multiple times of intermediate
procedures before a decision and because101users expressed opinions, including arequest for provision of an opportunity
for a person filing an opposition toexpress opinions even where the patentee
does not file a request for correction. The
major revisions are the following four
points: (i) enrichment of the content of anotice of reasons for revocation, (ii)reduction of the number of intermediate
procedures (in principle, the second
notice of reasons for revocation shall bean advance notice of a decision), (iii)
expansion of the opportunity for hearing
the opinions of the opponent (even if arequest for correction is not filed, hearing
is conducted with the opponent), and (iv)appropriate scope of ex officio proceedings (a publication submitted after theperiod for filing an opposition may be
adopted as evidence if it obviously
constitutes an appropriate reason forrevocation).
3-2. EPO Boards of Appeal (BoA)
From the BoA, President Carl
Josefsson gave a speech on the “implementation of organizational restructuring.”
In this speech, he explained about theindependence and organizational restructuring of the BoA, authority of the President of the BoA, performance evaluationof the qualified members and the chairmen, revision of the Rules of Procedureof the Boards of Appeal, current statistics
and efforts for efficiency, and relocation
to Haar in the suburbs of Munich,Germany.
Out of these topics, regarding theindependence of the BoA, he introduced
the fact that the BoA has become anorganization independent of the EPO. He
explained as follows: The post of the
President of the BoA was newly estab-102

lished, and the duties and authority of the
President of the EPO relating to the BoA
were transferred to the President of the
BoA; The Boards of Appeal Committee
consisting of judges of related countries
was newly established, and it has advisory and supervisory functions concerning independence and efficiency.
In addition, he also introduced efforts
for the revision of the Rules of Procedureof the Boards of Appeal for the purposeof increasing efficiency, predictability,and harmony. He also stated that therevised draft of the Rules of Procedure of
the Boards of Appeal is placed 1 on thewebsite and it is expected to be adopted
in 2019 after being discussed at the user
consultation conference 2 in December.
Furthermore, as efforts for efficiency, he
explained the five-year goal (disposing of
90% cases within 30 months and reducing the number of pending cases to 7,000
or less by 2023), improvement of theinternal workflow, increase in the flexibility of allocation of operations between
sectors, and renovation of the system offees for filing an appeal.
3-3. USPTO Patent Trial and Appeal
Board (PTAB)
From the PTAB, Vice Chief Patent
Judge Scott Weidenfeller gave a speechon the “statistics of the Patent Trial andAppeal Board.”
In this speech, he explained statistics
on ex parte appeals and the America
Invents Act (AIA) trial proceedings.
Regarding ex parte appeals, he statedthat the number of pending cases rapidly
increased in 2012 when the AIA wasenacted but that it has recently been
decreasing. He also stated that the pendency period in fiscal 2018 was shortenedcompared to fiscal 2017 in all technical

AIPPI Journal, March 2019

fields. In addition, he explained that thegoal for the pendency period is one year
and that the pendency period is balanced
among technical fields by having administrative patent judges in other technicalfields take charge of the cases in technical fields for which the pendency
period is long. Furthermore, regarding theresults of proceedings, he reported that, in
fiscal 2018, the decision was maintainedin about 60% cases, the decision was partially maintained in about 10% cases, andthe decision was rescinded in about 30%
cases.
Regarding the AIA trial proceedings,
he stated as follows: The ratio of institution of trials has recently been decreasing,and it was 60% in fiscal 2018; for theentire period after the start of the system,
9,006 petitions were filed, trials were
instituted on 4,650 cases, and 2,308 cases
reached a PTAB decision. In addition, forthe breakdown of the PTAB decisions, heexplained that those decisions that all theclaims are valid accounted for 19%, thosedecisions that part of the claims are invalid accounted for 16%, and those decisions that all the claims are invalid
accounted for 64%.

4. Speeches (Introduction of
Trial and Appeal System for
Patent Invalidation of Each
Office)Each office gave a speech on the trial
and appeal system for patent invalidationof Japan, Europe, and the United States,
respectively.
The outline of each office’s speech isreported below.
4-1. TAD
From the TAD, Executive Chief

AIPPI Journal, March 2019

Administrative Judge Toshihide Abegave a speech on “invalidation trial at theJapan Patent Office.”
In this speech, he explained the system for invalidation trial, including an
advance notice of a trial decision, which
was introduced through the legal amendment of 2011 and the outline of its operation, requirements for filing a request forcorrection (the content and time requirements), and specific case examples for arequest for correction.
An advance notice of a trial decision
is a notice to the parties that describes thesame matters as those described in thetrial decision when the panel received an
impression that the patent is invalid.
Thereby, the patentee is given an opportunity to file a request for correction.
Looking at the results of a survey on
the influence of an advance notice of atrial decision and a request for correction
with regard to trial decisions in three
years from 2015 to 2017, an advancenotice of a trial decision was given for
39% of the cases where a trial decision
was rendered. A request for correction
was not filed for 25% of the cases wherean advance notice of a trial decision wasgiven, and all of these cases led to a trial
decision that the patent is invalid. On theother hand, the remaining 75% cases
where a request for correction was filed
after an advance notice of a trial decision
are equally divided into the cases inwhich the patent was determined to bevalid and those in which the patent wasdetermined to be invalid.
For the content requirements of arequest for correction, correction is limited to those for the purpose of restrictionof the claims, correction of errors orincorrect translations, clarification of an
ambiguous description, or correction of a103

statement of claims which cites anotherstatement of claims to a statement which
does not cite that other statement ofclaims, and it must not be one that introduces a new matter or substantiallyenlarges or alters the claims.
4-2. BoA
From the BoA, President Carl
Josefsson gave a speech on “proceedings
at the Boards of Appeal.”
In this speech, he explained about theorganization of the EPO, proceedings ofan appeal, correction of a patent in theinter partes procedures, 3 and the relationships between the BoA, each country’s
court, and the Unified Patent Court.
In addition, he explained as follows
regarding the BoA.
The EPO has unified the proceduresfor granting a patent and grants a European patent which constitutes a bundle ofpatents of up to 38 countries. In the caseof being dissatisfied with a decision at the
EPO, it is possible to file an appeal onlywith the BoA of the EPO. In principle,
the panel’s decision is final and binding,but there are cases where the panel’sdecision ceases to be final and binding
due to a review of a fundamental procedural defect by the Enlarged Board of
Appeal (EBoA) or a determination on thevalidity of a European patent at eachcountry’s court. Then, the Technical
Boards of Appeal examine appeals
against the decisions of the examining
divisions and opposition divisions, and apanel is usually composed of two technically qualified members and one legallyqualified member. In addition, the EBoA
is established to show important legal
points of view. Meanwhile, the EBoA is
composed of five legally qualified members and two technically qualified mem-

104

bers.
Moreover, he gave the following
explanation regarding appeal proceedings.
For ex parte appeals, the BoA has theauthority to examine whether an appeal
fulfills the requirements under the European Patent Convention - the Convention
on the Grant of European Patents (EPC)
and can also examine a new issue. Regarding inter partes appeals, a new
ground for opposition can be added only
where the patentee gives consent thereto.
Exchanges with the parties are conductedin writing many times as needed, and oralproceedings are concentrated on essential
matters. Oral proceedings are conductedupon request of the party or the BoA, andare usually conducted in public for up tohalf a day.
Furthermore, he gave the following
explanation about the correction procedure in an inter partes appeal.
Article 123 of the EPC provides forcorrection as follows, and both requirements (2) and (3) must be fulfilled for
permission of correction of a patent: (1)The European patent application or European patent may be amended in proceedings before the European Patent Office,in accordance with the Implementing
Regulations. In any event, the applicant
shall be given at least one opportunity toamend the application of his own volition; (2) The European patent application
or European patent may not be amended
in such a way that it contains subjectmatter which extends beyond the content
of the application as filed; (3) The European patent may not be amended in sucha way as to extend the protection it confers. In addition, Article 100 of the EPC
provides that opposition may be filed on
the grounds that “the subject-matter ofthe European patent extends beyond the

AIPPI Journal, March 2019

content of the application as filed.”
Meanwhile, there is no strict restriction
on the number of requests for correction,
but in terms of appeal practice, the number of auxiliary requests may be restricted.
A request for correction can be submitted
at any stage in the procedure, and in theappeal procedure, (1) correction requested together with the statement ofgrounds of appeal or reply, (2) correction
requested after submission of the statement of grounds of appeal or reply, and(3) amendment requested after the establishment of the date of oral proceedings
are possible. However, according to theRules of Procedure of the Boards ofAppeal, correction must be submitted as
early as possible (ideally, together withthe statement of grounds of appeal or reply). Whether to permit a correction submitted in a delayed fashion is left to thepanel’s discretion. The later a correction
is submitted, the less likely it is to be permitted.
At last, for a decision on an appeal,
the conclusion is orally rendered at theend of oral proceedings, and grounds
thereof are sent later in writing. It is
exceptional that proceedings continue inwriting after oral proceedings.
4-3. PTAB
From the PTAB, Vice Chief Patent
Judge Scott Weidenfeller gave a speechon the “outline of the AIA trial proceedings.”
In this speech, he explained about the
AIA trial proceedings and a request forcorrection (AIA trial proceedings include
inter partes review (IPR), post-grant
review (PGR), covered business method
review (CBM), etc.).
The standard for proof in the AIA
trial proceedings is “preponderance of

AIPPI Journal, March 2019evidence,” and such evidence is considered to be less than “clear and convincing
evidence” that is necessary for winning alawsuit at a district court. Therefore, theAIA trial proceedings are more advantageous to petitioners. In addition, the proceedings are completed within 12 months
from the institution of a trial, and the proceedings can be extended for six months
only in the case where there are “reasonable grounds” but are basically not extended. In general, the entire pendency
period from filing of a petition to completion or final decision is within 18 months.
Regarding the types of patents subject to proceedings and the timing of proceedings, patents before the First Inventor
to File (FITF) are subject to IPR after
their granting, and patents after the FITF
are subject to IPR after the date ninemonths after their granting or the date on
which the PGR procedure is completed(whichever comes later). CBM covers
patents for which an infringement lawsuit
was filed or for which an offence of
infringement was fixed. PGR covers
patents after the FITF for which ninemonths or less have passed since their
granting.
He gave the following explanation
about the correction procedure.
In an IPR, a patentee may file amotion to correct a patent once by suggesting a reasonable number of substituteclaims for the disputed claims, etc. Here,the reasonable number is usually one, but
multiple substitute claims can be suggested through proof of their necessity. A
correction can neither enlarge the scopeof claims of the patent nor introduce new
subject matter. Then, a request for correction is denied where the correction does
not respond to a ground of invalidation
involved in the proceedings or where the105

correction enlarges the scope of claims of
the patent or introduces new subject matter. In addition, a request for correction
must include a claim listing, show thechanges clearly, and set forth the support
in the original disclosure of the patent foreach claim that is added or corrected andthe support in an earlier-filed disclosurefor each claim for which benefit of thefiling date of the earlier filed disclosure issought.
Next, he introduced “intervening
rights.” Intervening rights are based on
Section 252 of the patent law. For example, where a person makes an investmentin the manufacturing or preparation of a
product without infringing a patent rightpertaining to the original claims, even if
the product infringes the patent right pertaining to the claims after correction, thecourt permits him/her to continue the
manufacturing or preparation of the product that infringes the patent right pertaining to the claims after correction in orderto have him/her recover the investment.
In addition, he explained as follows
about the amendment to the Rules ofPractice 4 for which public comment
procedure was started.
This amendment is to ensure that apatentee files a request for correction
after the PTAB shows its preliminary
determination on patentability and that if
the patent is determined to be invalid
again, the patentee can file a request forcorrection again. The period for filing arequest for correction is shortened to six
weeks, and the schedule becomes tighter.
At last, regarding the burden of proofof patentability of the claims for which arequest for correction was filed, thePTAB presented guidance after the Aquacase in which it was ruled that not thepatentee but the person who files a106motion assumes the burden. 5 He indicatedthat although only a few requests for correction had been filed in the past, theAqua case changed the situation and thenumber of requests for correction filed in
the first half of fiscal 2018 exceeds theannual number of requests for correction
filed in the previous fiscal year.
Meanwhile, participants in the symposium addressed questions regarding
intervening rights. In particular, thefollowing questions were addressed: If a
correction can neither enlarge the scopeof claims nor introduce new subject matter, if a product infringes the claims after
the correction, has the product also infringed the claims before the correction?;
Thinking so, what is the case where theproduct does not infringe the claims before the correction? In response to thesequestions, he answered as follows: The
U.S. court introduces the idea of intervening rights based on the idea that if theclaims before a correction is determined
to be invalid (even if a product infringes
the claims before the correction), theproduct does not constitute infringementof the claims before the correction; theidea of intervening rights is based on
Section 252 that provides for reissued
patents, but it is also applicable in allprocedures in the AIA trial proceedings;
therefore, patentees do not like to make acorrection much in the correction procedure in an IPR.

5. Panel Discussion (Case Studyon Trial and Appeal Procedures for Patent Invalidation)
The trial and appeal procedures forpatent invalidation were taken up as thetheme of the panel discussion, anddiscussions were held by using a hypo-

AIPPI Journal, March 2019

thetical case.
Mr. Shoichi Okuyama, a patent attorney at Okuyama & Sasajima, served as
the moderator, and Director-General
Reeko Imamura of the TAD, Chairman
Ingo Beckedorf of the Technical Board of
Appeal of the EPO, and Vice Chief
Patent Judge Scott Weidenfeller of the
PTAB took the rostrum as panelists.
See the following (https://www.jpo.
go.jp/torikumi/kokusai/kokusai2/pdf/chizaishihou-2018/06.pdf) with regard to thecomparative table concerning correction
in a trial for patent invalidation, etc.
among the offices and the assumed casetaken up in the panel discussion.
In this panel discussion, the moderator asked each office questions about thetrial and appeal procedures for patent
invalidation. Some of the questions andeach office’s answers thereto are introduced below.
5-1. After this, through what procedureis the trial/appeal case carried forward at each office?
The TAD’s answer was as follows.
A trial for invalidation is carried forward in Japan based on the structure ofconflict between the parties. In receivinga request for a trial for invalidation, apanel of administrative judges gives aninvitation to reply to the patentee. In
response to this, the patentee submits awritten answer and may also file arequest for correction as needed. Under
the Patent Act, a trial for invalidation
shall be conducted by oral proceedings.
Oral proceedings are conducted after giving a notice of proceeding matters to bothparties. Where the panel reached a determination that the patent is to be invalid, it
gives an advance notice of a trial decisionand thereby gives the patentee an oppor-

AIPPI Journal, March 2019tunity to make a correction. Where thedetermination that the patent is to beinvalid is not reversed as a result of further proceedings, the panel renders a trial
decision to invalidate the patent. On theother hand, where the panel reached adetermination that the patent is to be
maintained after oral proceedings, it renders a trial decision to the effect that thepatent is valid without giving an advancenotice of a trial decision.
The BoA’s answer was as follows.
Where the appellant submits new
evidence and the evidence was not
submitted to the opposition division, theBoA determines whether to take the new
evidence into consideration. In addition,
the patentee can file a request for correction as the main and auxiliary requests ina written answer. The rapporteur of thepanel prepares a written opinion on thecase, and the panel takes counsel together
and considers whether to take the new
evidence into consideration and also discusses the patentability of the main andauxiliary requests. Then, the panel composed of two technically qualified members and one legally qualified member
issues a preliminary opinion. In order tofairly carry forward the procedure, where
the new evidence is taken into consideration, the patentee can make a correction
through the main and auxiliary requests.
In this case, the appellant can make acounterargument and can also make a
new assertion.
The PTAB’s answer was as follows.
Where the petitioner submits new
evidence, he/she explains the reason why
this new evidence denies patentability.
The petitioner submits a petition to the
PTAB by means of the USPTO’s “PTAB
End-to-End” system that is for submission of electronic documents and also

107

pays fees for filing the petition. The
patentee is granted a three-month period
for preparing a preliminary response to
the petition. The PTAB must decide
whether to conduct an IPR after thepatentee submits a preliminary response.
In deciding whether to conduct an IPR,
the PTAB must determine whether thepetitioner has proven the “existence ofthe reasonable possibility that at least oneof the claims subject to the petition will
be invalidated.” Even if such possibility
has been proven, the PTAB has discretion
to refuse to conduct an IPR. In addition,
the PTAB can also refuse to conduct an
IPR where “a petition has been filed forthe same or substantially same prior art or
discussion in the past.”
A three-month discovery period isavailable after the institution of a trial,
and after that, the patentee is granted an
opportunity to correct, and oral hearing is
conducted. Then, a decision is renderedwithin 12 months from the date of institution of a trial.
5-2. [Question] Although Company A is
not completely confident in thevalidity of the right, it wonders if it
is possible to deal with the casewithout making any correction/
amendment or by making only
slight correction/amendment. What
are the possible options that
Company A can choose?
The TAD’s answer was as follows.
Two opportunities for correction areavailable for the respondent (Company
A), specifically, (i) the period for submitting a written answer and (ii) the period
for giving a response to an advancenotice of a trial decision (which is givenin the case that is expected to lead to atrial decision to invalidate the patent).

108

Therefore, Company A can file norequest for correction or make slightcorrection when submitting a written
answer and file a request for correction
after receiving an advance notice of atrial decision that is given in the casewhere the panel determines that thepatent is invalid. However, proceedings
are prolonged if Company A makes acorrection after receiving an advancenotice of a trial decision.
The BoA’s answer was as follows.
There is no restriction on the numberof corrections, but there are procedural
constraints. The patentee should filemultiple requests for correction as auxiliary requests based on the main request
and thereby ensure that the right can beprotected whichever direction proceedings proceed. As a correction by an auxiliary request at a late phase is hard to bepermitted, a patentee should strategically
file a request for correction at an earlystage. Then, an auxiliary request can beconsidered as an effective means.
The PTAB’s answer was as follows.
In the new correction process (which
is now under the public comment procedure), it is possible to avoid applicationof intervening rights by making a slightcorrection. It is possible to confirm thepanel’s response concerning whether thecontent of the correction is sufficient andfile the second request for correction if
the content is not sufficient. The PTAB istrying to make a repetitive process within
the time limit of one year. Company A
can take action to maintain the patent bymaking as slight correction as possible.
The moderator asked the PTAB
whether correction will be more easily
permitted in the AIA trial proceedings in
the future. The PTAB answered that it isjust the purpose of this change of the cor-

AIPPI Journal, March 2019

rection process to make it easier forpatentees to make corrections.
5-3. [Question] At what phase in proceedings is the substantial result of
determination (valid or invalid)
indicated? (for example, by participating in oral proceedings/
hearing, can Company A obtain
the result of determination that thepatent is valid as the result of
permission of the correction orinvalid, etc.?)
The TAD’s answer was as follows.
The final result of determination thatthe patent is valid or invalid is indicatedin a written trial decision after a notice ofconclusion of proceedings is given.
Where the panel reached a determination
to invalidate the patent, it does not
immediately render a trial decision toinvalidate but gives an advance notice ofa trial decision in writing to give thepatentee an opportunity to make a correction. Then it concludes proceedings after
further proceedings, and renders a trial
decision that the patent is valid or invalid.
A provisional opinion concerning thefinding of the patented invention, citedinvention, identical features and different
features between them, etc. is sometimes
indicated in a written notice of matterssubject to proceedings before oral proceedings, but the panel never indicates adetermination that the patent is valid orinvalid in oral proceedings. The TAD
makes it an internal goal to give the next
office action within three months after
oral proceedings in a trial for invalidation.
The BoA’s answer was as follows.
The BoA indicates the final conclusion that the patent is valid or invalid at
the time of completion of oral proceedings. Before then, there is also an oppor-

AIPPI Journal, March 2019tunity for the panel to communicate apreliminary opinion concerning whether
the content of an opposition concerning
novelty and an inventive step was valid.
In addition, even after the commencement of oral proceedings, the chairman
expresses the panel’s preliminary opinion
as of the previous day of oral proceedings
at the beginning of oral proceedings as
the summary of the procedure taken prior
to oral proceedings. After that, in light oforal proceedings, the panel communicatesthe conclusion, including new requests
and new evidence. Finally, the details areunderstood in a decision notified about
one month after oral proceedings.
The PTAB’s answer was as follows.
The only decision concerning patentability is made by a final document of the
PTAB at the time of completion of an
IPR. The parties can understand thepossibility of existence of any reason forinvalidation at the time of institution of atrial.
5-4. [Question] The reason for invalidation/revocation alleged by Company B was dissolved by Company
A’s correction/amendment. In suchsituation, Company A came to feelcertain that Product α which Company B manufactures falls within
the scope of the patent right after
the correction/amendment. In suchcase, can Company A file a claim
for damages in the past with regard to Product α of Company B?
The TAD’s answer was as follows.
In Japan, where a correction ispermitted, it is deemed that the establishment of a patent right was registeredbased on the description, claims, drawings, etc. after the correction. Therefore,
Company A can file a claim for damages

109

in the past with the court.
The BoA’s answer was as follows.
Where a patent is lawfully corrected,
the correction has retroactive effect.
Therefore, the patentee can file a lawsuitwith each country’s infringement court.
Needless to say, Company A can retroactively file a claim for damages in the past.
The PTAB’s answer was as follows.
As already explained, there are intervening rights. Therefore, the court
considers the case within the scope ofequity between the parties. In doing so,
the court also considers whether thepatent right before the correction is
infringed. Therefore, in this regard, theUnited States cannot give a clear answer.
5-5. If a patentee requests permissionof the content of a correction/amendment on the grounds
that the correction was permitted
at another office and the patentright was also determined to bevalid, can your office deal with thecase?
The TAD’s answer was as follows.
A patentee can allege the fact that acorrection was permitted at another officeand the patent right was determined to bevalid, but whether the correction ispermitted and whether the patent is valid
are to be determined based on the Patent
Act in Japan.
The BoA’s answer was as follows.
The parties or their representatives
can request the panel to consider acorrection as information related to the
opposition if the correction has been permitted at another office. However, indoing so, it is necessary to state the reason for requesting permission of the content of the correction, the reason for
doing so now, and whether all grounds

110

for opposition can be avoided by the correction. There is no established rule.
The PTAB’s answer was as follows.
A patentee can file a motion toamend the patent with the PTAB by thesame method as the method for anotheroffice and communicate said otheroffice’s decision. The PTAB carefully
considers the other office’s decision but
assumes the obligation to determine
patentability under the law of the UnitedStates of America.
Last, the moderator asked the question of whether the USPTO or the EPO
has something to tell users in Japan given
the change of Under Secretary of Commerce for Intellectual Property and Director of the USPTO and the President of the
EPO.
The PTAB’s answer was as follows.
There are two matters to which the
new Director of the USPTO gives priority.
One is relating to Section 101 andanother is relating to the PTAB. Therefore, as revisions to standard operatingprocedures, 6 the USPTO revised thestandard procedures for designating panels 7 and the AIA Trial Practice Guide.8 In
addition, the USPTO also changed theclaim construction standard. The USPTO
wishes to make the system fair to peti-

AIPPI Journal, March 2019tioners and has intensively taken actions
during the past few months.
The BoA’s answer was as follows.
The EPO recognizes that approachfor correction at the EPO is very strict,
and we also wish to improve the procedure in order to offer better services.

6. Panel Discussion (Case Study
Related to Whether or Not
Claims Can Be Corrected/
Amended in a Trial for Invalidation/IPR/Opposition)
The issue of whether or not claims
can be corrected/amended in a trial forinvalidation/IPR/opposition was taken up
as a theme of the panel discussion, anddiscussions were held by using ahypothetical case.
Ms. Shimako Kato, a patent attorneyat Abe, Ikubo & Katayama, served as themoderator, and Executive Chief Administrative Judge Toshihide Abe of the TAD,
Mr. Marco Alvazzi Delfrate, a member ofthe BoA, and Vice Chief Patent Judge
Scott Weidenfeller of the PTAB took therostrum as panelists.
See the following regarding the
hypothetical case taken up in the panel
discussion.

AIPPI Journal, March 2019(https://www.jpo.go.jp/torikumi/kok
usai/kokusai2/pdf/chizaishihou-2018/06.
pdf)
Regarding this hypothetical case, discussions were held on each proposed correction (proposal) in descending order(from proposals 5 to 1). Each office gave
the following answer.
6-1. TAD
Proposal 5 is expected to be permitted based on stated item of the description C.
Compared to proposal 5, proposal 4
is not restricted in relation to the pointthat a frame “extends from the one side to
the other side of the conveyor belt above
the conveyor belt” and the point that theside that holds the scanning device hanging from the frame is the “other side of
the conveyor belt.” This restriction is theconfiguration of the scanning device in
response to the case where there are“design constraints” in the description.
Proposal 4 is considered to be onethat responds to the case where there areno such “design constraints.” However,according to stated item C in the description, it can be said that the statement ismade on the premise of the case where
there are no such design constraints.
Therefore, proposal 4 is also considered
as a correction that is within the scope ofthe matters indicated in the description inlight of the decision of the Grand Panel ofthe Intellectual Property High Court in2008 holding that “when a correction is
one that does not introduce any new technical matter in relation to the technicalmatters which a person ordinarily skilledin the art can draw by putting all statements in the description or drawings
together, the correction can be considered
as one that is made ‘within the scope of111

the matters indicated in the description or
drawings.” In addition, the correction isrecognized as one for the purpose ofrestriction of the claims as it restricts theconfiguration of the moving device.
Therefore, proposal 4 is expected to bepermitted.
As the term “holding” is used in proposal 3, other forms of attachment, suchas “embedding” in a frame, are included,
in addition to “hanging” as stated in thedescription. Therefore, it is questioned
whether inclusion of such forms ofattachment falls under an addition of a
new matter in relation to the description.
This hypothetical case was preparedin reference to an actual case. Although it
is nothing more than one case, venturing
to generalize determinations on corrections based on this actual case, it isconsidered possible to extract the following points: (1) A generalized feature is
not related to the essential feature of thisinvention from the perspective of technical meaning of this invention; (2) not
only the means stated in this description,
but also other means covered by thegeneralized feature had been known tothe public before the filing date of thepatent.
In light of the previously introduced
decision of the Grand Panel and thedetermination in this actual case, proposal
3 seems to be determined not to be onethat introduces a new technical mattereven if the term “holding” includes otherforms of attachment in addition to “hanging.” Therefore, proposal 3 is also expected to be permitted.
Proposals 2 and 1 do not include therestriction that the frame moves along theguide. Therefore, whether proposals 2
and 1 introduce a new technical matter
depends on whether the form wherein a

112

guide is not included in the moving
device can be assumed based on common
general technical knowledge as of the filing.
6-2. BoAAt the BoA, proposals 4 and 5 are
permitted, but proposals 1 to 3 are notpermitted.
According to the BoA’s case law, “acorrection is permitted if it is within thescope which a person ordinarily killed in
the art can directly and unambiguously
draw from application documents as awhole based on common general technical knowledge through objective andrelative observation as of the filing date,”and “where features in a specificcombination do not have any clearlyrecognized functional or structural relationship or where extracted features are
not related in an inseparable manner,intermediate generalization is admitted.”
Proposal 5 is permitted based onstated item C in the description.
In addition, proposal 4 is also permitted because a ground for omitting to statethat the side on which the scanningdevice is hung is the “other side” isrecognized based on stated item C in thedescription, “If attempts are made to havethe scanning device move during scanning, due to design constraints, a guidemeans for moving the scanning device
cannot be placed on either side of theconveyor belt.”
However, proposal 3 is not permitted
for the following reasons. Consideringintermediate generalization, the “frame”
and “hanging” are recognized as having a
structural and functional relationship, and
it is not permitted not to stipulate “hanging” that has a structural relationship withthe “frame.” In addition, it is considered

AIPPI Journal, March 2019that a person ordinarily skilled in the art
cannot clearly find another method forrealizing the invention based on a
generalized form that does not stipulate“hanging.”
Moreover, regarding proposal 2, the“frame” is stipulated but the “guide” isnot stipulated, and it is difficult to realize
the invention without the “guide.” Therefore, proposal 2 is not permitted.
Then, proposal 1 is not permitted forthe same reasons as those for proposals 2
and 3.
Incidentally, the BoA makes determinations on the permission of a correction and patentability at the same time,
but in this case, the BoA gave the aforementioned answer on the premise that all
proposals 1 to 5 are patentable based on
the hypothesis that “no prior art document has been or will be found for theconfiguration in the corrected or amended
portion.”
6-3. PTAB
At the PTAB, only proposal 5 is permitted.
As permission of a correction is notdetermined independently of a determination on patentability, a correction is not
permitted without patentability. As proposals 1 to 4 are considered not to bepatentable, the corrections are considered
not to be permitted. On the other hand,
proposal 5 is recognized as patentable as
it is considered not to be obvious (involvean inventive step). Therefore, the correction is also considered to be permitted.
In considering whether the corrections add a new matter separate from adetermination on patentability, all the
proposals are permitted because it is permitted to add a term stated in the originaldescription to the claims. A correction is

AIPPI Journal, March 2019considered to be permitted because it
does not fall under an addition of a newmatter unless it enlarges the claims.

7. Closing Remarks
In closing the symposium, President
Yutaro Kikuchi of the Japan Federationof Bar Association gave an address andmentioned the importance of collaboration with intellectual property judiciaryrelated persons not only in Japan but alsoabroad and efforts for international development of intellectual property judiciaryin response to a growing need of international dispute resolution.

8. Conclusion
A total of about 900 persons participated in this symposium for two days,
and the symposium provided an opportunity to recognize the high level ofusers’ interest in intellectual property
judiciary again.
The JPO wishes to carry forward
sharing of information to users and support for the development of intellectual
property systems in each country and region by deepening discussions on intel-

113

lectual property judiciary and trial andappeal systems in each country andregion through continuous holding ofinternational symposiums on resolutionof intellectual property disputes in the
future.
(Notes)1

http://documents.epo.org/projects/babylon/
eponet.nsf/0/A6E82330B5DC1C8BC12583320
044C6D4/$File/RPBA_for_user_conference_e
n.pdf
2
https://www.epo.org/learning-events/events/
conferences/rpba-conference.html
3
The term “amendment” is used in the Convention on the Grant of European Patents (EPC),
but in this article, amendment after granting ofa patent is sometimes called “correction.”
4
https://www.federalregister.gov/documents/
2018/10/29/2018-23187/request-for-commentson-motion-to-amend-practice-and-proceduresin-trial-proceedings-under-the
https://www.uspto.gov/sites/default/files/docu
ments/guidance_on_motions_to_amend_11_20
17.pdf5
https://www.uspto.gov/sites/default/files/docu
ments/guidance_on_motions_to_amend_11_20
17.pdf6
https://www.uspto.gov/patents-application-proc
ess/patent-trial-and-appeal-board/procedures/revisions-standard-operating
7
https://www.uspto.gov/sites/default/files/docu
ments/SOP%201%20R15%20FINAL.pdf
8
https://www.uspto.gov/sites/default/files/docu
ments/2018_Revised_Trial_Practice_Guide.pdf