1. Types of Trials

Trials under the Japanese Patent Law are classified broadly into two types: “Ex Parte Appeals” and “Inter Partes Trials”.  An ex parte appeal is initiated by an appellant (a demandant) against the Japanese Patent Office (JPO) and, in principle, is conducted via documentary proceedings.  An inter partes trial is lodged by an appellant (a demandant) against a patentee and, in principle, is conducted via oral proceedings.  Ex parte appeals include an appeal against a Decision of Rejection issued by a JPO Examiner and a trial for correction.  Inter partes trials include a patent invalidation trial and a trial for invalidation of the registration of an extension of duration.

  1. Ex Officio Principle

Ex parte appeals and inter partes trials are conducted under the “Ex Officio Principle” by a panel (board) consisting of three or five JPO Appeal/Trial Examiners.  (For the sake of convenience, appeals and trials may be referred to below generically as “trials”.)  Trial proceedings will be conducted regardless of the intentions of the parties involved (“Principle of Ex Officio Proceedings”).  In addition, an ex officio examination allows the JPO to examine evidence and investigate facts on its own authority (“Principle of Ex Officio Investigation”).  Moreover, an intervention system is available in inter partes trials but not in ex parte appeals.  A trial is concluded by the issuance of a Trial Decision.  The request for trial can be withdrawn before the Trial Decision becomes final and binding.

First, an explanation will be given regarding an Appeal against a Decision of Rejection, which is one type of ex parte appeal.

  1. Appeal against a Decision of Rejection

An applicant who has received a Decision of Rejection from the JPO and is dissatisfied with the Decision may file a request for appeal against the Decision of Rejection within three months (four months for a party residing outside of Japan) from the date on which a certified copy of the Examiner's Decision has been served.  It should be noted that the three-month deadline (four months for a party residing outside of Japan) cannot be extended.  Also, when amendments to the specification, claims, or drawings are desired, they must be filed at the time of the request for appeal.  Therefore, it is important for an applicant to determine, only after giving serious consideration to the appropriateness of the Decision of Rejection and the possible content of the amendments, whether or not a request for appeal should be filed.  When amendments are made to

the specification etc. at the time of filing the request for appeal, the original Examiner will consider the amendments (“Pre-Appeal Examination”) before the appeal is conducted by the appeal board.

  1. Trial for Correction

After a patent right has been registered, a patentee may file a request for a trial for correction to correct the specification etc.  For two or more claims, a request for correction may be filed for each claim in the claim set.  (On the other hand, for the case of groups of related claims, a request for correction must be filed for each group of claims.)  In addition, a request for a trial for correction may be filed even after the lapse of the patent right; however, this shall not apply after the patent has been invalidated in a trial for patent invalidation.  A request for a trial for correction cannot be filed in the period between which a related trial for patent invalidation has become pending before the JPO until the time when the Trial Decision for the patent invalidation trial has become final and binding.  When the applicant files a request for a trial for correction, the corrections are limited to the following purposes:

  1. Restriction of the scope of the claims;
  2. Correction of an error or an incorrect translation;
  3. Clarification of an unclear statement; and
  4. Elimination of a dependency relationship between claims (do not cite the statement of a claim(s) which cites the statement of another claim(s)).

As is clear from (1) to (4) above, corrections which substantially enlarge or alter the scope of the claims are not allowed in a trial for correction.  Also, a request for a trial for correction cannot be filed in the period between which an invalidation trial has become pending at the JPO until the time when the Trial Decision has become final and binding.  Instead, a request for correction may be filed during that period for one of the purposes given in (1) to (4) above.

  1. Patent Invalidation Trial

When a patent falls under any of the categories given in (1) to (8) below, a request for a trial for patent invalidation may be filed.  A patent invalidation trial is the only way to invalidate a patent; the courts and other governmental organizations do not have the authority to invalidate a patent.  Any person or party may file a request for a patent invalidation trial at the JPO.  However, in the case of a failure to satisfy the requirements for joint applications (see (2) below) or retention of rights (see (6) below), only persons who hold the right to obtain a patent may file a request for an invalidation trial.  The facts on which the invalidation of the patent is based must be specified in

concrete terms, and the relationship of each fact that must be proven by means of relevant evidence must be stated in the section of the request for a trial for invalidation entitled “Grounds for the Request”.  Also, in principle, an amendment to the request for trial which changes the gist of the request will not be allowed (for example, an amendment to add new evidence).

  1. Where the patent has been granted on a patent application (excluding a foreign language application) which had been amended by an unlawful amendment that adds new matter;
  2. Where the patent has been granted in violation of the stipulations concerning: the enjoyment of rights by foreign nationals, patentability requirements, the category of unpatentable inventions, joint applications (excluding where a patent right has been transferred under Japanese Patent Law, Article 74, Paragraph 1), or prior applications;
  3. Where the patent has been granted in violation of a treaty;
  4. Where the patent has been granted on a patent application not complying with the description requirements in relation to the Detailed Description of the Invention in the specification or in relation to the claims (excluding Article 36, Paragraph 6, Number 4);
  5. Where the matters stated in the specification etc. (i.e., the Japanese translation of the specification) attached to the application request concerning a foreign language application are not within the scope of the matters stated in the foreign language documents (original application);
  6. Where the patent has been granted on a patent application filed by a person who is not the inventor and has not succeeded to the right to obtain a patent for the said invention (excluding patent rights transferred in accordance with Article 74, Paragraph 1);
  7. Where, after the grant of a patent, the patentee has become unable to hold a patent right due to breach of a treaty, or the patent has come to violate a treaty; and
  8. Where a correction made in a patent invalidation trial or a trial for correction to the specification etc. attached to the application request has become unlawful.

The category of “Patentability” (novelty and inventive step, etc.) in (2) above is considered to be the most frequent ground for invalidation.  In particular, sufficient attention should be given regarding

the ground for invalidation in category (5) above when an applicant from a foreign country is planning to file a patent application at the JPO.  Where a trial decision to the effect that a patent is to be invalidated has become final and binding, the patent right shall be deemed never to have existed.  However, in the case of a later ground for invalidation in category (7) above, the patent right shall be deemed never to have existed starting from the time when the condition in (7) had become applicable.  When a Trial Decision is issued which finds that the request should be dismissed, the concerned parties and any intervenors in the trial cannot file another request for a patent invalidation trial for the same reason.

  1. Trial for Invalidation of a Registration of Extension of Duration

The duration of a patent right expires after a period of 20 years from the filing date of the patent application.  However, in the case where a patented invention is related to medical drugs or agrichemicals, in order to obtain approval under the Pharmaceutical Affairs Law and Agricultural Chemicals Regulation Law, extensive time is required for carrying out necessary experiments and examination.  Therefore, even if a patent were granted, the time required for the experiments and examination would eat into the term of the patent right.  For this reason, under Japanese Patent Law, when there is a period of time during which the patented invention cannot be worked as stated above, it is possible to apply for registration of an extension of patent duration to extend the period by up to five years.

If a registration of an extension falls under any of the conditions given in (1) to (5) below, a request for a trial to invalidate the registration of extension can be filed (Trial for Invalidation of a Registration of Extension of Duration).

  1. Where the registration of extension has been made for an application for which it was found that there is no need to receive the disposition as provided in a Cabinet Order;
  2. Where the registration of extension has been made for an application of which the patentee or an exclusive licensee or registered non-exclusive licensee of the patent did not receive the disposition as provided in a Cabinet Order;
  3. Where the duration extended by the registration of extension exceeds the period during which the patented invention could not be worked;
  4. Where the registration of extension has been made for an application filed by a person who is not the patentee; and
  5. Where, in relation to a jointly-owned patent right, a registration of extension has been made for an application not filed jointly.

When a Trial Decision finding that a registration of extension is to be invalidated has become final and binding, the duration extended by the registration of extension shall be deemed as never have been established from the beginning.  However, when a Trial Decision becomes final and binding on the ground of (3) above, only the interval that exceeds the period during which the patent could not be worked shall be deemed to have been extended.  On the other hand, where a Trial Decision is issued finding that the request is to be dismissed, the concerned parties and any intervenors in the trial cannot file another request for a trial for invalidation of a registration of extension for the same reason.

  1. Retrial

Under certain conditions, a concerned party or an intervenor may file a request for a retrial against the final and binding decisions for the above four types of trials: “Appeal against Decision of Rejection”, “Trial for Correction”, “Patent Invalidation Trial”, and “Trial for Invalidation of a Registration of Extension of Duration”.  In principle, a request for a retrial must be filed within 30 days from the date on which the demandant became aware of the grounds for the retrial after the Trial Decision became final and binding.