Peruvian patent litigation on infringement and invalidation: A sui generis case of bifurcation

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Guest post by Diego F. Ortega*

The Andean Community is the result of the seeking of the balanced and harmonious development of Bolivia, Colombia, Ecuador and Peru, which in May 26, 1969 signed the Cartagena Agreement, laying the groundwork for the creation of a subregional community initially known as Andean Pact and later renamed as Andean Community. In order to achieve the said objective, the Andean Community promotes a continuous process of integration and economic and social cooperation. In particular, this process of integration involves the need of having common rules as to matters that foster the unification of the market, such as industrial property rights.

The industrial property system within the Andean Community was established by the “Decision 486”, which aims to guarantee a rigorous scrutiny as to the fulfillment of the requirements needed for the granting of a patent. Thus, Andean Community does not provide only for the mandatory performance of a substantive examination carried out by the national patent authorities of its Member Countries, but also for mechanisms which allow third parties to prove that an invention does not meet the legal requirements, seeking the denial of the patent (through a pre-grant opposition request) or, if the patent is granted, its revocation (through an invalidation request). Continue reading “Peruvian patent litigation on infringement and invalidation: A sui generis case of bifurcation”

The strategies for patent litigation under the double track system in Japan

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In my previous posting (here), I described advantages and problems in the two systems, i.e., the double track system and the bifurcation system in patent litigation. In this posting, I, as a Japanese patent litigator, would like to introduce several practical strategies for patent litigations under the double track system in Japan in the form of Q&A.

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Patent litigation – Double track system vs. bifurcation system

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Double track system 

If you are sued by a patentee for patent infringement, one of the options you often have would be to attempt to invalidate the patent on the ground that the patent lacks patentability. The issue here is whether you can assert invalidity of the patent at issue to an infringement court, or you need to initiate a separate proceeding at a national patent office or a specialized patent court in order to argue patent invalidity. As for Japan, in addition to an invalidation proceeding at the Japanese Patent Office (Track 1), Japanese patent law allows a defendant in an infringement court to assert patent invalidity within the same proceeding (invalidity defense), and the court can judge the validity on its own (Track 2). This legal system can be referred to as a “double track system”.  Examples of jurisdictions with this system besides Japan are the U.S., the U.K., France and Korea.

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