Statistical Information on Japanese Patent Trends andPatent Infringement Litigations in District Court in Japan

Presented by Tomoyuki Serizawa
JP patent attorney

Statistical Information on Japanese Patent Trends*This statistics information is supported by the patent administrative annual
report: https://www.jpo.go.jp/shiryou/toushin/nenji/nenpou2017_index.htm

1. Newly-filed patent applications
450000400000350000NUMBER

300000250000200000150000100000
50000
0
2007

2008

Filing Numbers (A)

2009

2010

2011
2012
2013
2014
2015
2016
YEAR
Number of requests for examination (B)
Number of decisions to grant (D) The number of newly filed patent applications have gradually decreased year by year. Meanwhile, in recent periods(FY2015 and 2016), the number of newly-filed patent applications has been stable at around 320,000.

NUMBER

2. Grant rate of patent applications
45000090%40000080%

35000070%

30000060%

25000050%20000040%15000030%

100000

20%

50000

10%

00%
2007

2008

2009

2010

2011
2012
YEAR

2013

2014

2015

2016

Filing Numbers (A)Number of decisions to grant (D)Number of first actions* (C)Rate of number of decisions to grant with respect to number of first actions (%) (=D/C)

 The rate of the number of decisions to grant with respect to the number of first actions have increased year by year. In FY2016,
the rate of the number of decisions to grant reached about 77%, while the rate of the number of decisions to grant was about
48% in FY2007. *First action indicates all first actions from the JPO, including a first office action and a notice of allowance.

3. Number of decisions to grant in pre-trial examination
35000

60%

30000

50%

NUMBER

25000

40%

20000
30%
15000
20%

10000
5000

10%

00%
20072008

2009

2010

2011
2012
YEAR

2013

2014

2015

2016

Number of requests for appeal (A)
Number of decisions to grant in pre-trial examination (B)Rate of number of decisions to grant in pre-trial examination with respect to number of requests for appeal (%) (= B/A)

 With the decrease in the number of newly-filed patent applications, the number of requests for appeal against the decision ofrejection has decreased year by year. On the other hand, the rate of the number of decisions to grant in pre-trial examination withrespect to the number of requests for appeal has increased (For example, the rate was 56% in FY2016, while the rate was 37% inFY2007).

3-1. Typical flow of appeal against the decision of rejection (FYI)

Decision of rejection
made by Examiner

Appeal against thedecision

Decision to grant

Amendment follows?
YES

Pre-trial Examination
made by ExaminerNO

Appeal decision

Office action issued
by the board ofappeal

YES

New reason of rejection
found?

NODecision to grant Decision of rejection

Appeal to IP high court

Trial4. Number of decisions to grant in final appeal decisions
10000

70%

9000

60%

8000
7000

50%

6000

40%

5000

4000

30%

3000

20%

2000

10%

1000
00%
2007200820092010

2011

2012

2013

2014

2015

2016

Number of appeal decisions to grant (D)Number of appeal decisions of rejection (E)Number of withdrawals/abandonments (F)Rate of number of appeal decisions to grant with respect to final appeal decisions including number ofwithdrawals/abandonments (%) (= D/(D+E+F))

 The rate of the number of decisions to grant with respect to the total number of final appeal decisions has increased (Forexample, the rate was 61% in FY2016, while the rate was 38% in FY2007).

NUMBER

5.Trial for invalidation (invalidation trial)
35070%

30060%

25050%

20040%

15030%

10020%

50

10%

00%
2007

2008

2009

Number of requests for trial invalidation (A)

2010

2011
2012
YEAR

2013

2014

2015

2016

Number of trial decisions of invalidation (including partial invalidation) (B)
Number of trial decisions to maintain patent (including dismissal decisions) (C)Ratio of number of trial decisions of invalidation with respect to number of final trial decisions including number of withdrawals (%) (=B/(B+C+D))

 The number of invalidation trials were stable in a range of 200 to 300 during the periods of FY2007 to FY2015, but the number
was decreased in FY2016. It is considered that the decrease in the number of requests in FY2016 might be affected by new
opposition effective from April 2015. The success rate of the invalidation trial is around 20%, while it was around 60% in FY2008.
This indicates that it has become considerably more difficult to invalidate a patent in an invalidation trial.

6. Number of newly-filed Oppositions
1400
1200

NUMBER

1000
Number of newly-filed
oppositonsdecision to revoke patent

800
600

decision to maintain patent
without any correction
decision to maintain patent withcorrection

40020002015

2016
YEAR2017

 New opposition system came into effect from April 2015. The number of newly-filed oppositions were around 1200 in FY2016 and2017. It is expected that this trend of the number of oppositions (about 1200) will continue in the future.

7. The breakdown of decisions in Oppositions (FY2015 to FY2017)
Dismisssal/Withdrawal,
2% (32)decision to
revoke patent,
9% (183)

decision tomaintain patent
with correction,
46% (879)

decision tomaintain patent
without anycorrection,
43% (833)

 In the periods from FY2015 to FY2017, The number ofdecisions to revoke patent was 183 (about 9%); thenumber of decisions to maintain patent without anycorrection was 833 (about 43%); the number ofdecisions to maintain patent with correction was 879(about 46%); and the number of dismissals orwithdrawals was 32 (about 2%).
 This result shows that it has become considerably moredifficult to revoke a patent in new opposition system.
Meanwhile, this result shows that a patentee neededto amend patented claim(s) in order to overcome
revocation reason in 55% (= 46% + 9%) of the total
number of decisions. That is, it can be said that it has
become considerably more difficult to revoke a patent,
while this new opposition system may be beneficial to
make the technical scope of patented claim(s)narrower than the original one. As a result, requester’s
products may not fall within the technical scope of thepatented claim(s).

7-1. Comparison between trial for invalidation and opposition (FYI)
Opposition

Trial for invalidation

EPO Opposition

WHEN?

within 6 months from the publication date ofthe patent

At any timewithin 9 months of the publication of themention that the patent has been grantedWHO?

Any person (straw man admissible)

Only interested person

Any person¥16,500 + ¥2,400/each claim¥49,500 + ¥5,500/each claim

EUR 775

GROUNDS?

Novelty, Inventive step, clarity, newmatter amendment and so on…

In addition to the grounds for opposition,
usurped application, ex-post ground and soon…

Novelty, Inventive step, new matter
amendment and sufficient
disclosure, and so on…

AMENDMENT?

Possible, but must not extend thePossible, but must not extend the technicalPossible, but cannot extend the scope

technical scope of patented claim.

scope of patented claim.

of claim (Art. 123(3).

OFFICIAL FEES?

ORAL PROCEEDING?

NoYESYESDuration?

About 5.8 months in FY2016

About 10.5 months in FY2016

about 24 months in FY2012

APPEAL?

Possible in case the patent is revoked.
Appeal to IP high court.

Possible in both cases of decision tomaintain and decision to revoke.
Appeal to IP high court.

Possible in both cases of decision tomaintain and decision to revoke

Statistical Information on Court Decisions and Settlementsof Patent infringement Litigations in Tokyo District Court
and Osaka District Court (FY2014 to 2016)*Litigation data are supported by the web page of IP high court
http://www.ip.courts.go.jp/documents/statistics/index.html

1. Court decisions and settlements (FY2014 to FY2016)
without injunction
and monetary
benefit provision,7%（21）with monetary
benefit provision,15%（44）With injunction
benefit provision, 3%（9）Settlement

 According to the final results of patent infringement
litigations in Tokyo and Osaka district courts during theperiods of FY2014 to FY2016, 66% of all cases wereconcluded with court decision, while 34% of all cases wereRejected(nonconcluded with settlement.

infringement decision),
46%（134）

Court decision
With injunction andmonetary benefit
provision
9%（27）

Approved(infringementdecision), 16%（47）

Dismissal 2%（7）Approval of non-infringement
in DJ action, 2%（5） It is difficult for the Plaintiff to obtain a positive
infringement decision (approval decision)(16%) in Japan asa final result of a patent infringement litigation, but thewinning rate of plaintiffs is substantially higher at about
43% in consideration of the number of settlements thatare also advantageous to plaintiff.

2. Trend of Court decisions (FY2014 to FY2016)

3. Trend of Settlements (FY2014 to FY2016)

21%

24%

27%

3%
4%
9%

69%
43%

rejected

dismissal

approval of obligation absence

approvalwith injunction and monetary benefit provision

with injunction benefit provision

with monetary benefit provision

without injunction and monetary benefit provision According to the contents of court decisions, the rate of rejected According to the contents of settlement agreements, the rate ofdecisions (non-infringement decisions) is about 69% while the rate ofsettlements advantageous to plaintiff is about 79%, which indicatesapproved decisions (infringement decisions) is about 24%.
that the case is likely to be concluded with settlement if the caseproceeds in favor of plaintiff.

4. Distribution of damages awarded by Courtdecision (FY2014 to FY2016)

5. Distribution of damages awarded bySettlement (FY2014 to FY2016)

1440
121235111030

825

66
4

5

NumberNumber3020
1715

51010

250
1 to 10K USD 10K to 100K 100K to 500KUSDUSD500K to 1M
USDover 1M USD

860
1 to 10K USD 10K to 100K 100K to 500K 500K to 1M over 1M USD
USD
USD
USD

 An award of damages in a range of 1 to 10K USD is the most common outcome in a court decision, while damages ina range of 10K to 100K USD is the most common outcome in a settlement agreement. More than 1M USD indamages has been awarded 6 time in court decision, and 10 times in settlement agreements.

6. Patent Invalidity Defense (FY2014 to FY2016)
Infringement judgement (whetheraccused products fall within thetechnical scope of patented invention)

Non infringement
NOYES

Pantent invalidity defense
accepted, 17% (56)
No patent invalidity
defense, 27% (88)Patent invalidity judgement (whether
patented invention is invalid)

Non infringement
YES

Pantent invalidity defense
rejected, 13% (44)NONo judgement on pantent
invalidity defense, 43% (143)

Damage calculation

 Defendants usually assert the invalidity of patent in patent infringement litigations (about 72%).
 However, the success rate of this patent invalidity defense is not so high. In this regard, normally, the judges decide
whether a patent is invalid or not only if accused products fall within the technical scope of the patented invention.
Accordingly, no judgement on patent invalidation defense is done (about 43%) unless the accused products fall within thetechnical scope of the patented invention.

SummaryIn Japan,
 The grant rate of patent applications is high (about 77% in FY2016).
 The success rates of trials for invalidation and oppositions are very low(about 20% in trials for invalidation and about 9% in oppositions) That is, itis very difficult to revoke a patent.
 It is difficult to obtain a positive decision in patent infringement litigations,but the winning rate of plaintiffs is substantially higher at about 43% in
consideration of advantageous settlements.