[WIPSTUDY#7] IP 4 Countries' Patent Trial and Appeal

From 7th issue of WIPSTUDY,
we're going to take a look at the contents of the trial information of IP 4 countries (US, EP, JP, KR) such as docket, decision of appeal, and show how to utilize those trial contents needed for responding to trial and procedure in IP 4 countries.

• Contents of Trial and Appeal of IP 4 countries
• Trial features of each country
• Trial and Appeal of US

< search n analysis database : WIPS Global >

  [ Chart 01 ]

   The entire process of trial is not much different for all the 4 countries but it doesn't mean that all of the trials should go through every step of the process in the same way.
We can analyze the patents and the case information of IP 4 countries and use them to practice and respond trial.

   ➤ Check and analyze patents linked to trial is essential and make it more effectively build up strategies for the future disputes. 

   PTAB has been requested a lot more than ever because of low cost and quick process for decision, which helps to save time and cost comparing to litigation.

wipsglobal.com > Trial/Appeal search

◀ Trial search shows that 9,483 cases are requested IPR as of June 2019.

wipsglobal.com > Trial/Appeal search > SmartAngle

◀ 4,795 cases out of (searched above) 9,483 are appeared 'litigation existing', which means these cases are on-going trial and litigation.

⏪ Which also means, defendant are actively responding by invalidity lawsuit.
(For IPR, the invalidity appeal needs to be filed within one year from the service date)

wipsglobal.com > Trial/Appeal search

• Petitioner: Taiwan Semiconductor Manufacturing company
• Patent owner: Godo Kaisha IP Bridge 1
• Filing: Oct. 18, 2018
• Closed: Feb. 13, 2019
• Claims challenged: 6, 7, 11, 13 and 14
• PTAB outcome: No claims invalidated/canceled

◀ PTAB outcome was released in 4 months since the case filed.  

[ Chart 02 ]

▲ Patent trial information from each 4 country is as follows;

US : PTAB (Patent Trial & Appeal Board) is explained in more detail in the Chart 03. 

EP : Confirm the issued patents. Opposition and Appeal cases released from BoA
(Board of Appeal)
JP : Objection to Decision of Rejection and Opposition etc. which mostly happens in Japanese patent court are searched and the corresponding patents.
KR : Trial cases by each trial type such as Appeal against final rejection, Invalidation from IPT (Intellectual Property Trial and Appeal Board), Patent Court of Korea, Supreme Court, also the corresponding patents.

[ Chart 03 ]

(1) After AIA, PTAB's invalidity cases of IPR (Inter Partes Review), PGR (Post Grant Review), CBMR (Covered Business Method Review) and DER (Derivation), and the corresponding patents are analyzed.

(2) Appeal cases on trial decision of FOA (Final Office Action) and Re-exam/ Re-issue cases. Corresponding patents on Appeal are analyzed.

(3) PTAB trial's docket (PDF & time history) and decision documents on appeal are reviewed.

(4) References on PTAB's invalidity decision (whether its evidences is '102 or '103) are reviewed.


US AIA Trial cases and appeal cases will be reviewed in the next issue of WIPSTUDY.

Continued...>>