2009 MWI_Takamura

1/28/2009
Effective Use
of Correction Trial
after Patent Invalidation
Trial/Opposition Decision
Masaharu Takamura
Patent Attorney
Kyowa Patent and Law Office
AIPPI Japan
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Measures After Patent Being
Invalidated in Invalidation
Trial/Opposition Proceedings
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File an Appeal with the IP High Court
against the invalidation trial/opposition
decision.
Optionally, in order to amend claim(s), file a
Demand for Correction Trial with the JPO
within 90 days of the filing date of the
appeal.
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Co-pending of Appeal Proceedings
and Correction Trial
Within 90 days
of the date of
filing an Appeal
IP High Court
Filing an Appeal
with IP High Court
Co-pending of
Appeal Proceedings
and Correction Trial
JPO
JPO Trial Decision
Invalidating Patent
Filing a Demand
for Correction Trial
with the JPO
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Correction Trial before the JPO
Correction Trial is trial proceedings before the
JPO for amending specification, patented claim(s)
or drawing(s) (Art. 126)
Amendment (correction) shall be limited to the
following:
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–
–
–
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Restriction of scope of claim(s);
Correction of a typo or mistranslation; or
Clarification of an ambiguous description.
Shall be within the scope of the disclosure in the
specification, patented claim(s) and drawing(s).
Shall not substantially enlarge or change the
scope of the claim(s).
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Correction Trial before the JPO
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Advantages
– May improve patentability by narrowing scope of claim(s)
or eliminating a defect.
– Obtain time for assessing chance of success in comparison
with the co-pending appeal proceedings.

Drawbacks
– Rigid requirements are imposed on claim amendment.
– Increase time, cost, workload and complexity for coping
with both the correction trial and the appeal proceedings.

This drawback has been alleviated to some extent under
2003 Revision to the Patent Law (explained later), but still
exists.
– May cause inconsistency in argumentation between the
correction trial and the appeal proceedings (see the
following).
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Possible Inconsistency between
Co-Pending Correction Trial and
Appeal Proceedings
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If a patent is invalidated for lack of clarity in claims,
you may face the following dilemma:
– In the Appeal Proceedings before the IP High Court, you
would assert that expression “X” is clear.
– In the Correction Trial before the JPO, you would assert
that the expression “X” is unclear, in order to indicate
satisfaction of one of the requirements, “clarification of
ambiguous description” of Art. 126(1)(iii).

It might be worth considering relying upon another
requirement, such as “restriction of scope of
claim(s)”, in order to obviate such inconsistency
(see the following case).
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Basell’s Case in which a Patent Survived
through Correction Trial after the Patent
was Once Revoked in Opposition
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Japanese Patent No. 3385274 was granted to Basell North
America Inc. on December 27, 2002.
An Opposition was lodged by Mitsubishi Chemical Corporation
(Opposition No. 2003-72227)
– The patent was revoked for lack of clarity in claims

An Appeal against JPO’s Opposition Decision (1st Appeal) was
filed with the IP High Court (Case No. 2006-Gyo-Ke-10304).

A Demand for Correction Trial was filed with the JPO.

An Appeal against Correction Trial Decision (2nd Appeal) was
filed with the IP High Court (Case No. 2007-Gyo-Ke-10237).

The JPO reinstated the correction trial and then finally
granted a patent with amended claims.
– A statement not to dispute was later filed with the IP High Court.
– However, Basell’s amendments were not granted.
– The JPO’s Correction Trial Decision was successfully revoked.
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Co-pending of Appeals and
Correction Trial
IP High Court
(2nd Appeal)
IP High Court
(1st Appeal)
JPO
Filing an Appeal against
invalidating Decision
Filing an Appeal against
Correction Trial Decision
Filing a Statement not to dispute
in this appeal proceedings
JPO Trial Decision Filing a Demand
Correction Trial
invalidating patent for Correction Trial Decision not granting
with the JPO
amendments
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Patent Claim 1 that was Revoked
for Lack of Clarity in Opposition
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Claim 1: A polyolefin composition comprising:
A) 10–50 parts by weight of copolymer being a homopolymer
of propylene with isotactic index greater than 80, or a
copolymer of propylene with ethylene, a CH2=CHR α-olefin,
wherein R is a 2–8 carbon alkyl radical or a combination
thereof, wherein the copolymer contains over 85 wt% of
propylene;
B) 5-20 parts by weight of a copolymer fraction containing
ethylene, insoluble in xylene at ambient temperature;
C) 40-80 parts by weight of a copolymer fraction of ethylene
and propylene or another CH2=CHR α-olefin, wherein R is a
2-8 carbon alkyl radical, or a combination thereof, and
optionally, minor portions of a diene, said fraction containing
20-38 wt% of ethylene, being soluble in xylene at ambient
temperature, and having an intrinsic viscosity of 1.5-4 dl/g;
the percent by weight of the sum of the (B) and (C) fractions
with respect to the total polyolefin composition being 50-90%
and the (B)/(C) weight ratio lower than 0.4.
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Reason for Patent Revocation in
Opposition Decision: Lack of Clarity
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In the Opposition Decision, the patent was revoked for lack of
clarity in claims (Art. 36) due to the “Component X issue”.
Specifically, the JPO Appeal Board concluded that a part of
component A which is insoluble in xylene (hereinafter,
component X) is indistinguishable from component B.
In the opposition proceedings, Basell argued that component
A can be distinguished from component B because component
A is produced in the first step whereas components B+C are
differently produced in the second step, submitting an
explanation as to how to quantitatively identify each of
components A, B and C from the final product.
However, the JPO Appeal Board concluded that the claim
language per se is unclear.  Correction Trial may be useful
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because it is a matter of claim language.
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Appeal against Opposition Decision
(1st Appeal) and Demand for
Correction Trial
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Basell filed an Appeal against JPO’s Opposition
Decision (1st Appeal) with the IP High Court (Case
No. 2006-Gyo-Ke-10304) mainly for the purpose of
having an opportunity to file a Demand for
Correction Trial.
Within 90 days of the date of filing an Appeal,
Basell filed with the JPO a Demand for Correction
Trial with amended claim 1.
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Amended Claim 1
for Correction Trial
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Claim 1 (Amended): A polyolefin composition comprising:
A) 10–50 parts by weight of a homopolymer of propylene with
isotactic index greater than 80, or a first copolymer …(omitted);
and
B+C) 45-100 parts by weight of a second copolymer obtainable by
polymerizing a mixture of ethylene-propylene, a mixture of
ethylene and another α-olefin, or a mixture of ethylene-propyleneanother α-olefin, in a polymerization step different from the step
for producing component (A), which consists of:
– B) 5-20 parts by weight of …(omitted)…;
– C) 40-80 parts by weight of …(omitted)…
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said polyolefin composition being obtainable by using a
polymerization catalyst comprising the product of the reaction of a
solid catalyst component containing a titanium compound and an
electron-donor compound on magnesium chloride, with an Altrialkyl compound and an electron-donor compound.
Object of Correction: Restriction of scope of claims (Art.126(1)(iii))
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Pressure from the Defendant (JPO)
and an IP High Court Judge
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In the appeal proceedings before the IP High Court,
a court judge and the JPO (defendant) urged us to
promptly determine which course of action Basell
would like to proceed with, the correction trial or
the present appeal proceedings.
The JPO implied that it would not grant Basell’s
amendments for the correction trial.
However, the plaintiff resisted against such request,
and decided to wait and see a Decision of
Correction Trial for assessing chance of success.
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Unfavorable Correction Trial
Decision was Handed Down
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JPO Board of Appeal handed down a Correction
Trial Decision dismissing Basell’s amendments.
Reason: Amended claim 1 contains a number of
expressions that are unclear in meaning as
Japanese language, resulting in new matter not
disclosed by the specification .
– This reasoning is very superficial and seemed
unreasonable.

The Correction Trial Decision was totally silent on
component-X issue.
– The main reason for patent revocation in the opposition
decision might have been overcome, although unsure.
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Thus, worth disputing this Correction Trial Decision.
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Appeal against Correction Trial
Decision (2nd Appeal)
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Basell filed an Appeal against Correction Trial
Decision, arguing that objected expressions are
clear in meaning as Japanese language.
In response to the judge’s request, Basell submitted
a statement that it will not dispute in the present
appeal proceedings.
Although it might have been possible not to submit
such a statement, the submission of this statement
enabled Basell to focus on the correction trial with
seemingly more chance of success.
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Proceedings in the Appeal against
Correction Trial Decision
(2nd Appeal)
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1st Plaintiff’s Brief: Basell explained why each objected
expression is clear in meaning.
1st Defendant’s Brief: The JPO has introduced “component-X
issue” as a reason for new matter rejection although it is not
at all mentioned in the Correction Trial Decision.
2nd Plaintiff’s Brief: Basell argued that component-X issue is
irrelevant to the disputed Decision, but cautiously argued that
component-X issue no longer exists in amended claim 1,
which recites that component B+C is obtained in a
polymerization step different from the step for producing
component A.
IP High Court Decision: The Correction Trial Decision be
revoked (The plaintiff won).
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IP High Court Decision on
Correction Trial
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Reasoning:
– Each objected expression is clear in meaning.
– Component-X issue is irrelevant to new matter issue.
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The case was then remitted to the JPO Board of
Appeal for further proceedings based on the IP
High Court Decision.
Finally, the JPO handed down a Correction Trial
Decision granting claim amendments and
patentability of the amended claims.
Accordingly, Basell’s patent has survived with
amendments.
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Summary
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Correction Trial may be useful when a patent is
invalidated in invalidation trial for improving
patentablity or eliminating a defect, although it
causes co-pending proceedings before the JPO and
the IP High Court.
If you have difficulty assessing chance of success
between the Correction Trial and the Appeal
Proceedings, wait and see developments of
Correction Trial and choose a better course of
action with more chance of success, if possible.
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Summary
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It would be beneficial if you could amend claims in
Correction Trial without admitting that claims
before amendment has unclear expression, not to
badly affect the appeal proceedings.
Generally speaking, the JPO’s Appeal Board tends
to be relatively rigid on amendment requirements
for Correction Trial, whereas the IP High Court
tends to be relatively lenient.
Thus, consider filing an Appeal against the
Correction Trial Decision, if amendments are
dismissed in Correction Trial.
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2003 Revision to Patent Law
- Passing-Back Decision 
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Passing-Back Decision (Art. 181(2)) has been introduced in
2003 revision to Patent Law, in order to reduce unnecessary
workload and time of the co-pending cases between
correction trial and appeal proceedings.
When a Demand for Correction Trial was or is about to be
filed with the JPO after filing an Appeal with the IP High Court,
the IP High Court may make a decision to cancel the trial
decision and remit this case to the JPO Appeal Board, if the
Court recognizes probability that the Demand for Correction
Trial would be granted by the JPO Appeal Board.
With passing-back decision, the patentee can focus on the
proceedings before the JPO, without wasting time and
workload for the less hopeful appeal proceedings before the
IP High Court.
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Thank you.
Masaharu Takamura
Patent Attorney
Kyowa Patent and Law Office
[email protected]
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