1. Introduction

It is possible to file an appeal before the Japanese Patent Office (JPO) against a Decision of Rejection issued on a patent application (Japanese Patent Law, Article 121, Paragraph 1), and when a patent cannot be obtained for the application in the appeal, an Appeal Decision of Rejection would be issued (Article 157, Paragraph 1).  If the applicant is dissatisfied with the Appeal Decision of Rejection, a suit can be lodged before the Intellectual Property High Court (IP High Court) to request revocation of the Appeal Decision of Rejection (Article 178, Paragraph 1).

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Hereinafter, we will introduce the process of litigation for revoking an Appeal Decision of Rejection on a patent application in Japan.

2. Trends concerning Revocation Suits against Appeal Decisions of Rejection

As shown in the figures below, the number of suits lodged and the rate of lodging suits have been on the rise since 2009.  In addition, the rate of revocation of Appeal Decisions of Rejection is about 20%.

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3. Procedures

The figure below shows a basic flowchart from lodging a suit to delivery of a Court Decision.

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  1. From Lodging a Suit until the First Preparatory Proceedings
    1. Lodging a suit

It is possible to lodge a suit within 30 days (usually 30 days + 90 days when the appellant (plaintiff) is not a resident of Japan) from the date on which the Appeal Decision of Rejection was delivered.

When lodging a suit, the following should be noted.

  • It is not possible to amend the claims (Article 17bis, Paragraph 1).
  • It is not possible to file a divisional application (Article 44, Paragraph 1).

In addition, a Power of Attorney and Certificate of Corporate Nationality should be newly submitted to the IP High Court, since litigation at the court is different from the proceedings in the appeal stage at the JPO.  They do not need to be submitted simultaneously with the lodging of the suit and may be submitted at a later date.

  1. Submission of Plaintiff's Evidence (Exhibits)

After lodging a suit, the IP High Court gives notification of the date for the First Preparatory Proceedings and the due date for submission of the Plaintiff's First Brief.  In addition, the IP High Court asks the plaintiff to submit evidence (exhibits) such as the Appeal Decision of Rejection and citations.

  1. Submission of Defendant's Written Reply

Since the specific arguments of the plaintiff have not been submitted at this time, the Defendant's Written Reply should include brief arguments to the effect that there is no error in the Appeal Decision of Rejection.

  1. Submission of Plaintiff's First Brief

The plaintiff should submit the Plaintiff's First Brief before the date of the First Preparatory Proceedings.  The Plaintiff's First Brief should include specific acceptance/rejection of the reasons in the Appeal Decision of Rejection and arguments regarding reasons for revocation.

  1. First Preparatory Proceedings

The plaintiff, the defendant (Appeal Examiners at the JPO), the Judge, and an Investigator attend the First Preparatory Proceedings.  The Investigator supports the Judge to aid in the understanding of technical matters.

During the First Preparatory Proceedings, the issues described in the Plaintiff's First Brief are clarified, and the due dates for the Defendant's First Brief and the Plaintiff's Second Brief, as well as the date for the Second Preparatory Proceedings are scheduled.

In addition, if necessary, the Judge asks the plaintiff to provide a technical explanation in the Second Preparatory Proceedings.

  1. Prior to the Second Preparatory Proceedings
    1. Defendant's First Brief

The Defendant's First Brief includes the defendant's counterarguments against the plaintiff's arguments made in the Plaintiff's First Brief.

  1. Plaintiff's Second Brief

The plaintiff submits the Plaintiff's Second Brief after receiving the Defendant's First Brief.  The Plaintiff's Second Brief includes the plaintiff's counterarguments against the defendant's arguments made in the Defendant's First Brief as well as supplementary notes for the plaintiff's arguments.

  1. Second Preparatory Proceedings

In the Second Preparatory Proceedings, consolidation of the arguments made thus far and the establishment of proof of the plaintiff and defendant as well as points of dispute are substantially completed.  In addition, the Judge asks the plaintiff and the defendant to provide further arguments and proof in the Third (or further) Preparatory Proceedings.

If a technical explanation had been requested, it will be held during the Second Preparatory Proceedings.

  1. Oral Hearings

The Oral Hearings are held at the court.  Since consolidation of the arguments of the plaintiff and the defendant were already completed in the Preparatory Proceedings, it does not take very long to complete the Oral Hearings.  The Oral Hearings will be concluded and the date for delivery of the Court Decision will be specified.

  1. Delivery of the Court Decision

The Court Decision will be delivered on the specified date.

4. After the Court Decision

  1. If the IP High Court dismissed the plaintiff's assertion, the Appeal Decision of Rejection will become final and binding upon finalization of the Court Decision.
  2. If the IP High Court has accepted the plaintiff's assertion, the Appeal Decision of Rejection will be revoked (Article 181, Paragraph 1).  Subsequently, when the Court Decision has become final and binding, the Appeal Examiners will examine the appeal case again (Article 181, Paragraph 5).  If the Court Decision revoking the Appeal Decision of Rejection has become final, although it is not possible to issue the same Appeal Decision of Rejection for the same reasons, the Appeal Examiners could reject the application for different reasons, and a new Appeal Decision of Rejection could be issued.

5. Comments

As is clear from the above, the proceedings for a suit are carried out almost entirely by documentary proceedings.

In addition, since it is not possible to amend the claims or file a divisional application when lodging a suit, and since the rate of revocation of Appeal Decisions of Rejection is only about 20%, if a Notice for Reasons for Rejection (Office Action) is issued at the appeal stage, it is recommended that a divisional application be filed at that stage in order to secure an opportunity to continue prosecution of the application.