handbook for trial and appeal system in japan...the trial and appeal system is a mechanism for...

Handbook for Trial and Appeal System in Japan For appropriate acquisition and exercise of industrial property rights

Trial and Appeal Department (TAD)

Japan Patent Office

Trial and Appeal Department (TAD)Japan Patent Office

With our mission to develop Japanese industry with our intellectual property users, our logo was created to further disseminate the trial and appeal system.The "profile" at the upper right represents administrative judges who are responsible for the trial and appeal system; "brainwaves" and the "magnifying glass" extending from it represent the work of administrative judges of "trial and appeal proceedings" and "ex officio investigation," respectively.The "balance" symbolizes "early resolution of disputes," whichis a role for the trial and appeal system to play.The "circular frame" that includes all these elements represents that trial and appeal decisions have "binding legal effectiveness as to third parties."

About a trial and appeal system logo

（2020.2）

The Trial and Appeal System is a mechanism for developing Japanese industry with intellectual property users

In recent years, the importance of "Intellectual property strategy" has gradually come to be known as a strategy to enhance business competitiveness.Even those who know application procedures before the Japan Patent Office (JPO) for acquisition of industrial property rights such as patents, utility models, designs, and trademarks might not generally know what should be taken if the rights fail to be acquired or what determinations or actions can be taken to avail of the benefits arising from the acquired rights.The trial and appeal system is essential for developing business activities through acquisition and exercise of the appropriate rights, and for protecting business from the rights of others.The Trial and Appeal Department (TAD) at the JPO, which is responsible for the trial and appeal system in Japan, has a mission to endeavor to use industrial property rights effectively for developing Japanese industry under the trial and appeal system.

Contents

What can be done with the trial and appeal system

What kind of organization is the Trial and Appeal Department (TAD)?

How are proceedings conducted and trial/appeal decisions rendered?

Efforts towards the improvement of reliability of trial and appeal decisions

Communications with trial and appeal system users

Dissemination of information overseas and international exchange

Access, Contact us

Appeal against examiner's decision of refusal

Trial for invalidation

Trial for rescission

Trial for correction

Hantei (Advisory opinion)

Opposition to grant of patentOpposition to registration of trademark

Part 1 Part 2

The Trial and Appeal System is a mechanism for developing Japanese industry with intellectual property users

In recent years, the importance of "Intellectual property strategy" has gradually come to be known as a strategy to enhance business competitiveness.Even those who know application procedures before the Japan Patent Office (JPO) for acquisition of industrial property rights such as patents, utility models, designs, and trademarks might not generally know what should be taken if the rights fail to be acquired or what determinations or actions can be taken to avail of the benefits arising from the acquired rights.The trial and appeal system is essential for developing businessactivities through acquisition and exercise of the appropriate rights, and for protecting business from the rights of others.The Trial and Appeal Department (TAD) at the JPO, which is responsible for the trial and appeal system in Japan, has a mission to endeavor to use industrial property rights effectively for developing Japanese industry under the trial and appeal system.

Contents






Dissemination of information overseas and international exchange

Access, Contact us






Opposition to grant of patentOpposition to registration of trademark

Part 1 Part 2


The key to success of the intellectual property strategy is to know the "trial and appeal system"The Trial and Appeal Department (TAD), one of the departments of the JPO, plays two major roles.One is a role as "Upper instance court for examination" to determine the validity of the examiner's decision of refusal. The other is a role of "Approaching an early resolution of intellectual property disputes" to contribute a review the validity of the rights and to resolve the disputes.What is aimed for, based on these roles, is that rights to be granted or protected are treated as such.The Trial and Appeal Department (TAD) makes final determinations regarding the validity of intellectual property rights to facilitate an intellectual property strategy for developing the Japanese industry.

Eligible person(s)

Who received a decision of refusal in

the examinationAnyone can oppose. Interested parties

Patent Patent

Utility model

Examples of interested parties

Examples of a person who needs an opinion of the JPO

Design

Trademark

Patent

Utility model

Design

TrademarkTrademark

Patent

Trademark

Patent

Design

Trademark

Anyone can demand. Patentee Who needs the opinion of the JPO

Dissatisfaction with examiner’s decision

of refusal

Oppose to patent and trademark

registrationsWant to invalidate the

rightWant to rescind the

trademark registrationWant to correct

deficiencies of the patent right

Want to obtain opinions of the JPO regarding the scope

of the right

Appeal against examiner's decision

of refusal

Opposition to grant of patent/Opposition

to registration of trademark

Trial for invalidation Trial for rescission

Trial and Appeal Department (TAD), the Japan Patent Office

Trial for correction Hantei (Advisory opinion)

When

Types in the system

Applicable IP law

For details, check the

corresponding page.

※ The trial and appeal system other than those described above include an appealagainst examiner's decision to dismiss amendment and an expert opinion by thecommission of the court

• Who received a warning letter related to infringement of the right• Who accused of infringement

of the right• Who has a similar right• Who implements or plans the

business related to the right

＊ For Design, anyone can demand because it does not involve the opposition system

• Who wants to know if a product, etc. of others would infringe on the own right

• Who wants to know if the own product, etc. in implementing or in planning would not infringe on the right of others (Who wants to implement it without any worry.)


The key to success of the intellectual property strategy is to know the "trial and appeal system"The Trial and Appeal Department (TAD), one of the departments of the JPO, plays two major roles.One is a role as "Upper instance court for examination" to determine the validity of the examiner's decision of refusal. The other is a role of "Approaching an early resolution of intellectual property disputes" to contribute a review the validity of the rights and to resolve the disputes.What is aimed for, based on these roles, is that rights to be granted or protected are treated as such.The Trial and Appeal Department (TAD) makes final determinations regarding the validity of intellectual property rights to facilitate an intellectual property strategy for developing the Japanese industry.

Eligible person(s)

Who received a decision of refusal in

the examinationAnyone can oppose. Interested parties

Patent Patent

Utility model

Examples of interested parties

Examples of a person who needs an opinion of the JPO

Design

Trademark

Patent

Utility model

Design

TrademarkTrademark

Patent

Trademark

Patent

Design

Trademark

Anyone can demand. Patentee Who needs the opinion of the JPO

Dissatisfaction with examiner’s decision

of refusal

Oppose to patent and trademark

registrationsWant to invalidate the

rightWant to rescind the

trademark registrationWant to correct

deficiencies of the patent right

Want to obtain opinions of the JPO regarding the scope

of the right

Appeal against examiner's decision

of refusal

Opposition to grant of patent/Opposition

to registration of trademark

Trial for invalidation Trial for rescission

Trial and Appeal Department (TAD), the Japan Patent Office

Trial for correction Hantei (Advisory opinion)

When

Types in the system

Applicable IP law

For details, check the

corresponding page.

※ The trial and appeal system other than those described above include an appeal against examiner's decision to dismiss amendment and an expert opinion by the commission of the court

• Who received a warning letterrelated to infringement of theright• Who accused of infringement

of the right• Who has a similar right• Who implements or plans the

business related to the right

＊ For Design, anyone can demand because it does not involve the opposition system

• Who wants to know if aproduct, etc. of others wouldinfringe on the own right

• Who wants to know if the ownproduct, etc. in implementingor in planning would notinfringe on the right of others(Who wants to implement itwithout any worry.)


Determine validity of the decision of refusal and possibility of granting the right

For dissatisfaction with the decision of refusal by the examiner, "Appeal against examiner's decision of refusal" can be requested.A panel consisting of administrative judges examines whether the decision of refusal is valid.If it is determined invalid, an examination is conducted by the Trial and Appeal Department (TAD) ex officio with regard to presence or absence of other reasons for refusal, and the department determines whether the right can be granted.

The rate of the request approval is about 70%

Rate of request approval

Patent Design Trademark



The rate of the request approval for patents (the rate at which the decision of refusal was cancelled) has moderately increased since 2009 and was 70.4% in 2018. The rate of the request approval for Design was 66.8% and that for Trademark was 70.9%.All these rates are about 70% and can be said to be high rates of approval.

Patent

Applicable IP law

Design

Trademark

Dissatisfy with examiner’ s decision of refusal

What can be done? Point

Point

Approval rates of the results of the proceedings reached more than 80%With dissatisfaction with the determination of the Trial and Appeal Department (TAD), the case would be further filed an action before the Intellectual Property High Court. In the revocation action against the decision of the appeal against the examiner's decision of refusal (patent), more than 80% of the appeal decisions have been recently approved by the Intellectual Property High Court.The approval rates of the appeal decisions for Design and Trademark are also high.

Decision of refusal

Reconsideration by the examiner before appeal

(patent only)

Approval rates of the Intellectual Property High Court with regard to the decisions of

the Trial and Appeal Department (TAD)Revocation action against the decision of the appeal against the examiner's decision of refusal (patent)

Request for appeal/trial

Panel

Written request for

appeal/trial

Decision of

a patent grant

Request approved

Request not

approved

Any corrections on the claims, etc.

Decision of refusal is invalid

Decision of refusal is valid

Reporting the result of examination

No correction on the claims, etc.

Examination

Trial and appeal

※ With regard to Patent, except for the registrations based on the reconsideration by the examiner before appeal

About 80%


Determine validity of the decision of refusal and possibility of granting the right

For dissatisfaction with the decision of refusal by the examiner, "Appeal against examiner'sdecision of refusal" can be requested.A panel consisting of administrative judges examines whether the decision of refusal is valid.If it is determined invalid, an examination is conducted by the Trial and Appeal Department (TAD) ex officio with regard to presence or absence of other reasons for refusal, and the department determines whether the right can be granted.

The rate of the request approval is about 70%


Patent Design Trademark



The rate of the request approval for patents (the rate at which the decision of refusal was cancelled) has moderately increased since 2009 and was 70.4% in 2018. The rate of the request approval for Design was 66.8% and that for Trademark was 70.9%.All these rates are about 70% and can be said to be high rates of approval.

Patent

Applicable IP law

Design

Trademark

Dissatisfy with examiner’ s decision of refusal


Point

Approval rates of the results of the proceedings reached more than 80%With dissatisfaction with the determination of the Trial and Appeal Department (TAD), the case would be further filed an action before the Intellectual Property High Court. In the revocation action against the decision of the appeal against the examiner's decision of refusal (patent), more than 80% of the appeal decisions have been recently approved by the Intellectual Property High Court.The approval rates of the appeal decisions for Design and Trademark are also high.

Decision of refusal

Reconsideration by the examiner before appeal

(patent only)

Approval rates of the Intellectual Property High Court with regard to the decisions of

the Trial and Appeal Department (TAD)Revocation action against the decision of the appeal against the examiner's decision of refusal (patent)

Request for appeal/trial

Panel

Written request for

appeal/trial

Decision of

a patent grant

Request approved

Request not

approved

Any corrections on the claims, etc.

Decision of refusal is invalid

Decision of refusal is valid

Reporting the result of examination

No correction on the claims, etc.

Examination

Trial and appeal

※With regard to Patent, except for the registrations based onthe reconsideration by the examiner before appeal

About 80%

A third party can file an opposition against a patent or a trademark that has been registered

"Opposition to grant of patent/registration of trademark" is a system that allows the public to oppose to a grant of patent or trademark registration for 6 months after issuance of a gazette containing the patent or for 2 months after issuance of a gazette containing the trademark.If it is considered that the right acquired by others includes any deficiency, anyone can file an opposition. A panel consisting of administrative judges first conducts an ex officio examination as necessary and then checks and examines the allegation and evidences of the opponent whether "The right should be revoked.".Correcting deficiencies in the right acquired by others make the right more reliable and leads to prevent any disputes and smooth utilization of the right.

Only minimum burden on procedures is needed to eliminate obstacles of business activities

Breakdown of Opponents Cases filed from 2015–2017

Results of proceedings of Opposition to grant of patent

Individual (Japan)

Individual (Foreign)

Corporation (Japan)

Corporation (Foreign)

Others

Maintain (no correction)

Maintain (any correction)

Revocation※


Rejection (any correction)

63.8% of Opposition to grant of patent include some changes made to the scope

of the patent rights

Revocation※


Rejection (no correction)

Under proceedings

Withdrawal

The system "Opposition to grant of patent” is basically conducted in documentary proceedings between the Trial and Appeal Department (TAD) and the right holder so that the system has an advantage to lighten the burden of the procedures, resulting in excellent availability to the opponent.In addition, any person who has no interest in the case can file an opposition.Therefore, "Opposition to grant of patent" is considered as a system appropriate for eliminating the third party’s patent which would obstruct business activities while minimizing the burden.

Patent

Applicable IP law

Trademark

Opposition to grant of patent Opposition to registration of trademark

Oppose to patent and trademark registrations


Point

The rate of occurrence of changes in the scope of patent rights exceeds 60%

The rate made any change on the scope of patent rights by "Opposition to grant of patent" is beyond the majority.This includes not a few cases in which the claims pointed out by the opponent are cancelled or significantly restricted. This can be said this proves "Opposition to grant of patent" leads to enhance reliability of the registered rights.

PanelPatent gazette

Revocation of the right

The Intellectual Property High Court

Maintenance of the right

Documentary proceedings

Notice of reasons for revocation

Opposition to grant of patent

Request for opinions and corrections

Patentee

Patentee

Approval of the opposition

Rejection of the opposition

Within 6 months from issuance

Revocation action against the decision of revocation

※ In a case of an opposition to registration of trademark, procedures and terms would bedifferent from those of a patent. ※ Revocation of all or a part of the claims filed Opposition to grant of patent

Case for Patent

The Oppositions filed from March 2015 to April 2018; 3,093 cases

A third party can file an opposition against a patent or a trademark that has been registered

"Opposition to grant of patent/registration of trademark" is a system that allows the public to oppose to a grant of patent or trademark registration for 6 months after issuance of a gazette containing the patent or for 2 months after issuance of a gazette containing the trademark.If it is considered that the right acquired by others includes any deficiency, anyone can file an opposition. A panel consisting of administrative judges first conducts an ex officio examination as necessary and then checks and examines the allegation and evidences of the opponent whether "The right should be revoked.".Correcting deficiencies in the right acquired by others make the right more reliable and leads to prevent any disputes and smooth utilization of the right.

Only minimum burden on procedures is needed to eliminate obstacles of business activities

Breakdown of Opponents Cases filed from 2015–2017

Results of proceedings of Opposition to grant of patent

Individual (Japan)

Individual (Foreign)

Corporation (Japan)

Corporation (Foreign)

Others

Maintain (no correction)


Revocation※



63.8% of Opposition to grant of patent include some changes made to the scope

of the patent rights

Revocation※


Rejection (no correction)

Under proceedings

Withdrawal

The system "Opposition to grant of patent” is basically conducted in documentary proceedings between the Trial and Appeal Department (TAD) and the right holder so that the system has an advantage to lighten the burden of the procedures, resulting in excellent availability to the opponent.In addition, any person who has no interest in the case can file an opposition.Therefore, "Opposition to grant of patent" is considered as a system appropriate for eliminating the third party’s patent which would obstruct business activities while minimizing the burden.

Patent

Applicable IP law

Trademark

Opposition to grant of patent Opposition to registration of trademark

Oppose to patent and trademark registrations


Point

The rate of occurrence of changes in the scope of patent rights exceeds 60%

The rate made any change on the scope of patent rights by "Opposition to grant of patent" is beyond the majority.This includes not a few cases in which the claims pointed out by the opponent are cancelled or significantly restricted. This can be said this proves "Opposition to grant of patent" leads to enhance reliability of the registered rights.

PanelPatent gazette

Revocation of the right

The Intellectual Property High Court

Maintenance of the right

Documentary proceedings

Notice of reasons for revocation

Opposition to grant of patent

Request for opinions and corrections

Patentee

Patentee

Approval of the opposition

Rejection of the opposition

Within 6 months from issuance

Revocation action against the decision of revocation

※ In a case of an opposition to registration of trademark, procedures and terms would be different from those of a patent. ※ Revocation of all or a part of the claims filed Opposition to grant of patent

Case for Patent

The Oppositions filed from March 2015 to April 2018; 3,093 cases

Invalidate the right involving deficiencies in the whole society

The difference between Invalidity defense and Trial for invalidation

If invalidation of the rights of patent, utility model, design, or trademark that should not have been originally granted as the rights in the whole society is requested, it is possible to file "Trial for invalidation.""Trial for invalidation" is a system for resolution of a dispute between parties concerned regarding validity of the rights. A panel consisting of administrative judges examine ex officio if necessary.This system also gives the both parties an opportunity to fully allege their opinion, and withdraws an allegation from the parties which is not stated enough in writing through oral proceedings.

In a lawsuit of infringement of the right, "Invalidity defense" is defined as a defendant’s allegation "The right, on which the plaintiff based the demand, should be revoked.” If this defense is approved, the plaintiff’s demand is rejected.In case this invalidity defense is sued, the court that deals with the infringement case can also determine whether the patent or the like that is going to be exercised has any reason for invalidation.However, the court decision’s effect is relatively potent between the concerned parties, and even if the court determines that the right of the patent, etc. has any reason for invalidation, that decision does not invalidate the right in the whole society.On the other hand, some cases filing a lawsuit for infringement of the right are demanded as "Trial for invalidation" at the same time.The Trial and Appeal Department (TAD) is supposed to preferentially quickly examine "Trial for invalidation".The validity of the trial decision of "Trial for invalidation" covers not only relative potency between the parties but also the whole society.

Reliability of trial decisions in trials for invalidation

With regard to cases in which determination of validity or invalidity was made, the concordance rate of the conclusion of the Trial and Appeal Department (TAD) and the District Court was 74% in both "Trial for invalidation" and lawsuits of infringement of rights (patent).In a revocation action against the trial decision made in "Trial for invalidation", About 70% of the trial decision was approved by the Intellectual Property High Court.

Patent

Applicable IP law

Utility model

Design

Trademark


Want to invalidate the right that others have acquired


Point

Cases for application of the system

As a countermeasure against the right holder As a means to prevent a suit for infringement of the right in advance

The validity of the court decision

extends only to the parties concerned

Court decision first:

16 cases (in 2018)

Receiving a warning letter that alleges the

right infringement!

As soon as Company A began selling a new product, it received a letter from Company B, warning "Your product infringes the right of Patent Registration No. ○, and thus, we demand that you stop selling that product, dispose of the inventory, and compensate for damages.Without your sincere response, we may consider filing a lawsuit."Company A examined Company B’s patent right and then considered it a conventionally known art. Therefore, Company A demanded a trial for invalidation to avoid suspension of selling the new product.

Accused of infringement of the

right !

For Company A’s product, Company B filed an infringement lawsuit in the District Court, stating, "Your goods infringe the right of Design Registration No. ○, and thus, we demand thatyou stop the sales, dispose ofyour inventory, and compensatefor damages."Company A examined thecontent of Company B’s designright and then considered it asbeing similar to a conventionallyknown design.Therefore, Company Ademanded a trial for invalidationto proceed the litigationadvantageously.

A right related to the technology used in the

business of the company has already been acquired

by a different company

It was found that the technology used in Company A’s product has a relation with Company B’s patent.It is possible to be sent a warning letter or filed a lawsuit for the right infringement from Company B in the future.Company A examined Company B’s patent right, and it was considered that there was a deficiency in the description of the scope of the right. Therefore, Company A demanded a trial for invalidation in advance to avoid a dispute with Company B.

A right associated with the goods about to be used for

the business of the company has already been acquired by other company

When Company A has the famous mark with the trademark right in cosmetics and has planned to use the mark for foods, it was found that Company B had acquired the trademark r ight in foods after Company A’s mark became famous.It is possible to receive a warning letter, etc. if Company A starts selling the foods attached with this mark. Considering that Company A’s mark has already been famous, Company B’s trademark right should not have been registered originally.Therefore, Company A demanded a trial for invalidation in advance to avoid a dispute with Company B.

Invalidity defense in court


Determination whether valid or invalid

Approval rates of trial decision

Average for the last 10 years In 2018

The validity of the trial decision

reaches the whole society

Trial decision first:

26 cases (in 2018)

Trial for invalidation in the Trial and Appeal Department (TAD)



Invalidate the right involving deficiencies in the whole society

The difference between Invalidity defense and Trial for invalidation

If invalidation of the rights of patent, utility model,design, or trademark that should not have been originally granted as the rights in the whole society is requested, it is possible to file "Trial for invalidation.""Trial for invalidation" is a system for resolution of a dispute between parties concerned regarding validity of the rights. A panel consisting of administrative judges examine ex officio if necessary.This system also gives the both parties an opportunity to fully allege their opinion, and withdraws an allegation from the parties which is not stated enough in writing through oral proceedings.

In a lawsuit of infringement of the right, "Invalidity defense" is defined as a defendant’s allegation "The right, on which the plaintiff based the demand, should be revoked.” If this defense is approved, the plaintiff’s demand is rejected.In case this invalidity defense is sued, the court that deals with the infringement case can also determine whether the patent or the like that is going to be exercised has any reason for invalidation.However, the court decision’s effect is relatively potent between the concerned parties, and even if the court determines that the right of the patent, etc. has any reason for invalidation, that decision does not invalidate the right in the whole society.On the other hand, some cases filing a lawsuit for infringement of the right are demanded as "Trial for invalidation" at the same time.The Trial and Appeal Department (TAD) is supposed to preferentially quickly examine "Trial for invalidation".The validity of the trial decision of "Trial for invalidation" covers not only relative potency between the parties but also the whole society.

Reliability of trial decisions in trials for invalidation

With regard to cases in which determination of validity or invalidity was made, the concordance rate of the conclusion of the Trial and Appeal Department (TAD) and the District Court was 74% in both "Trial for invalidation" and lawsuits of infringement of rights (patent).In a revocation action against the trial decision made in "Trial for invalidation", About 70% of the trial decision was approved by the Intellectual Property High Court.

Patent

Applicable IP law

Utility model

Design

Trademark


Want to invalidate the right that others have acquired


Point


As a countermeasure against the right holder As a means to prevent a suit for infringement of the right in advance

The validity of the court decision

extends only to the parties concerned

Court decision first:

16 cases (in 2018)

Receiving a warning letter that alleges the

right infringement!

As soon as Company A began selling a new product, it received a letter from Company B, warning "Your product infringes the right of Patent Registration No. ○, and thus, we demand that you stop selling thatproduct, dispose of the inventory, and compensate for damages.Without your sincere response, we may consider filing a lawsuit."Company A examined Company B’s patent right and then considered it a conventionally known art. Therefore, Company A demanded a trial for invalidation to avoid suspension of selling the new product.

Accused of infringement of the

right !

For Company A’s product, Company B filed an infringement lawsuit in the District Court, stating, "Your goods infringe the right of Design Registration No. ○, and thus, we demand that you stop the sales, dispose of your inventory, and compensate for damages."Company A examined the content of Company B’s design right and then considered it asbeing similar to a conventionally known design.Therefore, Company A demanded a trial for invalidation to proceed the litigation advantageously.

A right related to the technology used in the

business of the company has already been acquired

by a different company

It was found that the technology used in Company A’s product has a relation with Company B’s patent.It is possible to be sent a warning letter or filed a lawsuitfor the right infringement from Company B in the future.Company A examined Company B’s patent right, and it was considered that there was a deficiency in the description of the scope of the right. Therefore, Company A demanded a trial for invalidation in advance to avoid a dispute with Company B.

A right associated with the goods about to be used for

the business of the company has already been acquired by other company

When Company A has the famous mark with the trademark right in cosmetics and has planned to use the mark for foods, it was found that Company B had acquired the trademark r ight in foods after Company A’s mark became famous.It is possible to receive a warning letter, etc. if Company A starts selling the foods attached with this mark. Considering that Company A’s mark has already been famous,Company B’s trademark right should not have been registered originally.Therefore, Company A demanded a trial for invalidation in advance to avoid a dispute with Company B.




Approval rates of trial decision

Average for the last 10 years In 2018

The validity of the trial decision

reaches the whole society

Trial decision first:

26 cases (in 2018)




A trademark registration that has not been used can be rescinded

A trademark that your company wants to use has already been registered by other company.However, it seems that the trademark has not been actually used by other company. A measure that can be taken in such cases to use the trademark is "Trial for rescission."When the trademark has not been used for the designated goods or services for more than 3 consecutive t years in Japan, the trademark registration can be rescinded.When a trial decision to rescind the trademark registration is finalized, the trademark right is deemed to have been lapsed on the registration date of the demand for the trial.

Deficiencies of patent rights can be voluntarily corrected

Trial for correction can be demanded for various purposes.

If a registered patent right partially includes some deficiencies and correction is needed, the patentee will be able to demand a "Trial for correction." Thereby, this can make smooth exercise of the right.If someone has alleged invalidity of a patent or it is expected, this system is often used in order for the patentee to remedy a reason for invalidation.

The demandant does not need to prove the fact of "nonuse"

Trial for rescission can be demanded in various cases.

Trial for rescission due to unauthorized use of the trademark by the trademark right holder or the licensee

Upon demanding "Trial for rescission," use of the registered trademark has to be proven by the trademark right holder (the demandee), and thus, the demandant does not need to prove it.It should be noted that "Using from the preceding 3 months to the registration date of demand" is proven by the demandant to mean that the use was done after the demandee knew about trial for rescind would be demanded, the use of the registered trademark is not approved.

Applicable IP law

Trademark

Patent

Applicable IP law


Want to rescind trademark registration


Want to correct deficiencies of registered patent rights

What can be done? What can be done?

Point

Point

Points

The case that there is an unauthorized use, including intentionally causing a false recognition as to the quality of goods and services, or intentionally confusing with goods and services pertaining to the business of others. If someone has alleged invalidity of a patent or it is expected,

this system can be used so that the patentee can remedy a reason for invalidity.

When exercise of patent rights against others, by reviewing and correcting a deficiency in one’s own patent rights in advance, it is possible to reduce the potential to make the patent invalid by a trial for invalidation filed by others.

If a part of the patent right becomes unnecessary due to changes in the business environment, a trial for correction can decrease a maintenance fee of the patent right by canceling a part of the right.

Trial for rescission due to confusion of use of result of transfer of the trademark rightThe case that when a trademark has been owned by different right holders after registration, one used it for the purpose of unfair competition and thereby caused confusion with the goods and services pertaining to the other’s business.

Trial for rescission due to unfair registration by agency, etc.The case that the trademark registration was filed by the agency, etc. without any legitimate reason, or consent of the overseas holder of the trademark right.※ Only in this case, a person who can demand is limited.

Deficiency

Elimination of deficiency (elimination of reasons

for invalidation)

Decision of a patent grant

Demand for Trial for correction

Patent No. ○○.

Patent No. ○○.

Right holder

Reason for invalidation・Unclear description,

etc.

"Patent application,""Publication before examination," "Decision of a patent grant," and the like are considered to be made based on the corrected patent specification and the like (Patent Law § 128).

A trademark registration that has not been used can be rescinded

A trademark that your company wants to use has already been registered by other company.However, it seems that the trademark has not been actually used by other company. A measure that can be taken in such cases to use the trademark is "Trial for rescission."When the trademark has not been used for the designated goods or services for more than 3 consecutive t years in Japan, the trademark registration can be rescinded.When a trial decision to rescind the trademark registration is finalized, the trademark right is deemed to have been lapsed on the registration date of the demand for the trial.

Deficiencies of patent rights can be voluntarily corrected

Trial for correction can be demanded for various purposes.

If a registered patent right partially includes some deficiencies and correction is needed, the patentee will be able to demand a "Trial for correction." Thereby, this can make smooth exercise of the right.If someone has alleged invalidity of a patent or it is expected, this system is often used in order for the patentee to remedy a reason for invalidation.

The demandant does not need to prove the fact of "nonuse"

Trial for rescission can be demanded in various cases.

Trial for rescission due to unauthorized use of the trademark by the trademark right holder or the licensee

Upon demanding "Trial for rescission," use of the registered trademark has to be proven by the trademark right holder (the demandee), and thus, the demandant does not need to prove it.It should be noted that "Using from the preceding 3 months to the registration date of demand" is proven by the demandant to mean that the use was done after the demandee knew about trial for rescind would be demanded, the use of the registered trademark is not approved.

Applicable IP law

Trademark

Patent

Applicable IP law


Want to rescind trademark registration


Want to correct deficiencies of registered patent rights

What can be done? What can be done?

Point

Point

Points

The case that there is an unauthorized use, including intentionally causing a false recognition as to the quality of goods and services, or intentionally confusing with goods and services pertaining to the business of others. If someone has alleged invalidity of a patent or it is expected,

this system can be used so that the patentee can remedy a reason for invalidity.

When exercise of patent rights against others, by reviewing and correcting a deficiency in one’s own patent rights in advance, it is possible to reduce the potential to make the patent invalid by a trial for invalidation filed by others.

If a part of the patent right becomes unnecessary due to changes in the business environment, a trial for correction can decrease a maintenance fee of the patent right by canceling a part of the right.

Trial for rescission due to confusion of use of result of transfer of the trademark rightThe case that when a trademark has been owned by differentright holders after registration, one used it for the purpose of unfair competition and thereby caused confusion with the goods and services pertaining to the other’s business.

Trial for rescission due to unfair registration by agency, etc.The case that the trademark registration was filed by the agency, etc. without any legitimate reason, or consent of the overseas holder of the trademark right.※ Only in this case, a person who can demand is limited.

Deficiency

Elimination of deficiency (elimination of reasons

for invalidation)

Decision of a patent grant

Demand for Trial for correction

Patent No. ○○.

Patent No. ○○.

Right holder

Reason for invalidation・Unclear description,

etc.

"Patent application,""Publication before examination," "Decision of a patent grant," and the like are considered to be made based on the corrected patent specification and the like (Patent Law § 128).

Patent

Applicable IP law

Utility model

Design

Trademark


Want to obtain opinions of the JPO regarding the scope of the right

An official opinion of the Trial and Appeal Department (TAD) of the JPO on the scope of the right can be requested

A right holder can ask for "Hantei " from the Trial and Appeal Department (TAD) when the right holder would like to know whether the goods or the like of others falls within the scope of the right of his own patent or the like.When someone would like to make the products that are planned or in production after confirming they do not infringe upon rights of others, anyone, including a person who is not a right holder can ask a “Hantei.”

"Hantei (Advisory opinion)" facilitates licensing negotiations in the Internet of things (IoT) era.

In the background of recent development and spread of the IoT, companies in various industries and business conditions have utilized the standard system of the information and communication field.Under such circumstances, the conditions surrounding licensing negotiations have been significantly changing.For example, a solution by cross-license has been conventionally achieved on the basis of the practices in the same industry, however, such a solution has become difficult to achieve.In particular, it is considered to be difficult to resolve disputes over the determination of whether a patent subject to license negotiation is a “Standard Essential Patent (SEP)” (a patent inevitable to use for manufacturing and supplying products and services that comply with specific standards) when the concerned parties belong to the different industries.The JPO has contributed to facilitate licensing negotiations and to rapidly resolve the disputes by providing determination on a standard essential patent from a fair and neutral position.

What can be done? Points

Features of Hantei (Advisory opinion)

Examples of utilization of Hantei (Advisory opinion)


Decision in the neutral and fair position

Speedy conclusion (3 months at the

shortest)

A kind of administrative service

(no legal binding)

Materials to allege infringement or non-infringement in a patent infringement trial

Materials to warn the other party for patent infringement

Materials to refute when having received a warning from others for patent infringement

Materials to attach to the petition for import suspension of infringing goods

Materials as evidences for a complaint to the police

Inexpensive cost (40,000 yen)

De facto sufficiently respected and

authoritative decision

Licensing negotiations involving "Standard Essential Patents (SEPs)"

Simple procedures (the same as the trial

and appeal procedures)

Court

Others

Police and Customs

〇〇 Industry △△ Industry

Previous Current

Licensing negotiations across industries

Licensing negotiations in the same industry

Negotiations having difficulties or breakdown of negotiations

Patent subject to negotiation

Reference

Virtual object based on the

standard document

Determine standard essentiality


Company A (patentee)

Company B (patent

practitioner)


Company C (patent

practitioner)

Cross-licensing

The JPO prepared a "Manual of “Hantei” (Advisory Opinion) forEssentiality Check" and began operations on April 1, 2018; this manual was revised in July 2019 to improve user convenience.

Company A (patentee) and Company C (patent practitioner) have been negotiating a licensing agreement, however, they have many differences in opinions, and for that reason, continuation of the negotiation has become difficult.One of the issues is that " Company C’s product conforming to the standard α infringes Company A’s patent which is a standard essential patent based on the standard α."Company C would like to obtain the opinion of the third party in a fair and neutral position the fact that Company A’s subject patent is not a standard essential patent.

Patent

Applicable IP law

Utility model

Design

Trademark


Want to obtain opinions of the JPO regarding the scope of the right

An official opinion of the Trial and Appeal Department (TAD) of the JPO on the scope of the right can be requested

A right holder can ask for "Hantei " from the Trial and Appeal Department (TAD) when the right holder would like to know whether the goods or the like of others falls within the scope of the right of his own patent or the like.When someone would like to make the products that are planned or in production after confirming they do not infringe upon rights of others, anyone, including a person who is not a right holder can ask a “Hantei.”

"Hantei (Advisory opinion)" facilitates licensing negotiations in the Internet of things (IoT) era.

In the background of recent development and spread of the IoT, companies in various industries and business conditions have utilized the standard system of the information and communication field.Under such circumstances, the conditions surrounding licensing negotiations have been significantly changing.For example, a solution by cross-license has been conventionally achieved on the basis of the practices in the same industry, however, such a solution has become difficult to achieve.In particular, it is considered to be difficult to resolve disputes over the determination of whether a patent subject to license negotiation is a “Standard Essential Patent (SEP)” (a patent inevitable to use for manufacturing and supplying products and services that comply with specific standards) when the concerned parties belong to the different industries.The JPO has contributed to facilitate licensing negotiations and to rapidly resolve the disputes by providing determination on a standard essential patent from a fair and neutral position.

What can be done? Points

Features of Hantei (Advisory opinion)

Examples of utilization of Hantei (Advisory opinion)


Decision in the neutral and fair position

Speedy conclusion (3 months at the

shortest)

A kind of administrative service

(no legal binding)

Materials to allege infringement or non-infringement in a patent infringement trial

Materials to warn the other party for patent infringement

Materials to refute when having received a warning from others for patent infringement

Materials to attach to the petition for import suspension of infringing goods

Materials as evidences for a complaint to the police

Inexpensive cost (40,000 yen)

De facto sufficiently respected and

authoritative decision

Licensing negotiations involving "Standard Essential Patents (SEPs)"

Simple procedures (the same as the trial

and appeal procedures)

Court

Others

Police and Customs

〇〇 Industry △△ Industry

Previous Current

Licensing negotiations across industries

Licensing negotiations in the same industry

Negotiations having difficulties or breakdown of negotiations

Patent subject to negotiation

Reference

Virtual object based on the

standard document

Determine standard essentiality



Company B (patent

practitioner)


Company C(patent

practitioner)

Cross-licensing

The JPO prepared a "Manual of “Hantei” (Advisory Opinion) for Essentiality Check" and began operations on April 1, 2018; this manual was revised in July 2019 to improve user convenience.

Company A (patentee) and Company C (patent practitioner) have been negotiating a licensing agreement, however, they have many differences in opinions, and for that reason, continuation of the negotiation has become difficult.One of the issues is that " Company C’s product conforming to the standard α infringes Company A’s patent which is a standard essential patent based on the standard α."Company C would like to obtain the opinion of the third party in a fair and neutral position the fact that Company A’s subject patent is not a standard essential patent.

Quasi-judicial organization acting as the first instanceAlthough the Trial and Appeal Department (TAD) is a department of JPO, yet it can be said to be a "Quasi-judicial organization" acting as the first instance in intellectual property disputes.In the case where the party is not satisfied with the decision of the Trial and Appeal Department (TAD) or the District Court, the party may make a revocation action against the decision with the Intellectual Property High Court (second instance).

Assigning administrative judges with advanced technical expertiseTrial and Appeal Department (TAD) is composed of Boards of Trial and Appeal responsible for proceedings, the Trial and Appeal Division responsible for any planning and support of proceedings, etc.Boards of Trial and Appeal are divided into 38 boards according to types of rights such as patents, utility models, designs, and trademarks, and specialized fields such as business machinery, production machinery, pharmaceuticals, and electronic device. Administrative judges with advanced technical expertise are assigned to each section.Although administrative judges are appointed from those with more than 5 year experiences as examiners, strict independence is ensured between the Examination Departments and the Trial and Appeal Department (TAD).


Supreme Court of Japan

Intellectual Property High Court

Trial and Appeal Department (TAD) of the Japan Patent Office

Opposition




Examination

Filing

laying open of (unexamined) applications

(Within 3 years from filing) request for examination ※ 3

RegistrationRefusal ※ 2

Hantei (advisory opinion)

Appeal against an examiner's decision of refusal

Appeal against examiner's decision to dismiss amendment

District Court ※ 1

Utilization of rights

Director-General of the Trial and Appeal Department (TAD)

Executive Chief Administrative Judge

Patents and utility models

Trial and Appeal Division

Designs

Trademarks

Boards for Physics, Optics, and Social Infrastructure

Boards for Machines

Boards for Chemicals

Boards for Electricity

The 1st Board: Measurement

The 2nd Board: Material Analysis

The 3rd Board: Amusement Machinery

The 4th Board: General Amusement

The 5th Board: Natural Resources and Living

Environment

The 6th Board: Applied Optics

The 7th Board: Business Machinery

The 8th Board: Applied physics and Optical

Devices

The 9th Board: Automatic Control and Living Related Machinery

The 10th Board: Motive Machinery The 11th Board: Transportation and LightingThe 12th Board: General Machinery and LogisticsThe 13th Board: Production MachineryThe 14th Board: Textile Processing and

Packaging MachineryThe 15th Board: Medical DeviceThe 16th Board: Heating, Refrigerating and

Air-conditioning Engineering

The 17th Board: Inorganic and Environmental Chemistry

The 18th Board: Material Processing Metals and Electrochemistry

The 19th Board: PolymersThe 20th section: Plastics EngineeringThe 21st section: Applied Organic ChemicalsThe 22nd section: Organic ChemistryThe 23rd section: PharmaceuticalsThe 24th section: BiopharmaceuticalsThe 25th section: Biotechnology

The 34th Board: Design

The 35th Board: Trademarks: Chemicals and Foodstuffs

The 36th Board: Trademarks: Machinery and Electric Appliances

The 37th Board: Trademarks: Textiles and General Merchandise

The 38th Board: Trademarks: Industrial Services and General Service

The 26th Board: Electronic Commerce

Technology

The 27th Board: Interface

The 28th Board: Data processing

The 29th Board: Electronic Device

The 30th Board: Video System

The 31st Board: Transmission Systems

The 32nd Board: Electronic Components and

Electric Power Systems

The 33rd Board: Digital Communications

Intellectual property dispute

revocation action against appeal/trial decision

Appeal

Infringement lawsuit

※1 the Tokyo District Court and the Osaka District Court for patents and utility models※2 In the case of patents, designs, and trademarks※3 In the case of patents＊Another trial and appeal system includes commissioning of the provision of an expert opinion.

Playing a coordinating role

(2020.2)

Litigation Affairs OfficeAdministrative work related to litigation procedures

Trial and Appeal Policy Planning OfficeResearch and planning related to intellectual property systems and operation

Infringement and Invalidation Affairs OfficeClerical work related to the System of Trial for Invalidation (trial clerk)

Nos.1, 5, 7 to 9 SectionsClerical work related to appeal against an examiner's decision of refusal, etc. (trial clerk)

Quasi-judicial organization acting as the first instanceAlthough the Trial and Appeal Department (TAD) is a department of JPO, yet it can be said to be a "Quasi-judicial organization" acting as the first instance in intellectual property disputes.In the case where the party is not satisfied with the decision of the Trial and Appeal Department (TAD) or the District Court, the party may make a revocation action against the decision with the Intellectual Property High Court (second instance).

Assigning administrative judges with advanced technical expertiseTrial and Appeal Department (TAD) is composed of Boards of Trial and Appeal responsible for proceedings, the Trial and Appeal Division responsible for any planning and support of proceedings, etc.Boards of Trial and Appeal are divided into 38 boards according to types of rights such as patents, utility models, designs, and trademarks, and specialized fields such as business machinery, production machinery, pharmaceuticals, and electronic device. Administrative judges with advanced technical expertise are assigned to each section.Although administrative judges are appointed from those with more than 5 year experiences as examiners, strict independence is ensured between the Examination Departments and the Trial and Appeal Department (TAD).


Supreme Court of Japan

Intellectual Property High Court

Trial and Appeal Department (TAD) of the Japan Patent Office

Opposition




Examination

Filing

laying open of (unexamined) applications

(Within 3 years from filing) request for examination ※ 3

RegistrationRefusal ※ 2

Hantei (advisory opinion)

Appeal against an examiner's decision of refusal

Appeal against examiner's decision to dismiss amendment

District Court ※1

Utilization of rights

Director-General of the Trial and Appeal Department (TAD)

Executive Chief Administrative Judge

Patents and utility models

Trial and Appeal Division

Designs

Trademarks

Boards for Physics, Optics, and Social Infrastructure

Boards for Machines

Boards for Chemicals

Boards for Electricity

The 1st Board: Measurement

The 2nd Board: Material Analysis

The 3rd Board: Amusement Machinery

The 4th Board: General Amusement

The 5th Board: Natural Resources and Living

Environment

The 6th Board: Applied Optics

The 7th Board: Business Machinery

The 8th Board: Applied physics and Optical

Devices

The 9th Board: Automatic Control and Living Related Machinery

The 10th Board: Motive Machinery The 11th Board: Transportation and LightingThe 12th Board: General Machinery and

LogisticsThe 13th Board: Production MachineryThe 14th Board: Textile Processing and

Packaging MachineryThe 15th Board: Medical DeviceThe 16th Board: Heating, Refrigerating and

Air-conditioning Engineering

The 17th Board: Inorganic and Environmental Chemistry

The 18th Board: Material Processing Metals and Electrochemistry

The 19th Board: PolymersThe 20th section: Plastics EngineeringThe 21st section: Applied Organic ChemicalsThe 22nd section: Organic ChemistryThe 23rd section: PharmaceuticalsThe 24th section: BiopharmaceuticalsThe 25th section: Biotechnology

The 34th Board: Design

The 35th Board: Trademarks: Chemicals and Foodstuffs

The 36th Board: Trademarks: Machinery and Electric Appliances

The 37th Board: Trademarks: Textiles and General Merchandise

The 38th Board: Trademarks: Industrial Services and General Service

The 26th Board: Electronic Commerce

Technology

The 27th Board: Interface

The 28th Board: Data processing

The 29th Board: Electronic Device

The 30th Board: Video System

The 31st Board: Transmission Systems

The 32nd Board: Electronic Components and

Electric Power Systems

The 33rd Board: Digital Communications

Intellectual property dispute

revocation action against appeal/trial decision

Appeal

Infringement lawsuit

※1 the Tokyo District Court and the Osaka District Court for patents and utility models※2 In the case of patents, designs, and trademarks※3 In the case of patents＊Another trial and appeal system includes commissioning of the provision of an expert opinion.

Playing a coordinating role

(2020.2)

Litigation Affairs OfficeAdministrative work related to litigation procedures

Trial and Appeal Policy Planning OfficeResearch and planning related to intellectual property systems and operation

Infringement and Invalidation Affairs OfficeClerical work related to the System of Trial for Invalidation (trial clerk)

Nos.1, 5, 7 to 9 SectionsClerical work related to appeal against an examiner's decision of refusal, etc. (trial clerk)

Proceeding Flow Trial and Appeal Practitioner Study Group 2018Main roles of administrative judges

Proceedings conducted by a panel consisting of three or five administrative judgesThree or five administrative judges examine a case in a trial/appeal. Once trial and appeal procedures are commenced by a request for trial or appeal, formality check and substantive determination are conducted by a panel.In a trial for invalidation , "oral proceedings" are conducted in principle to directly hear allegations of the parties concerned. The panel renders a trial decision after sufficient satisfaction of the panel is established.

Ex officio investigation conducted by the panel.Although proceedings are conducted based on evidence submitted by the parties concerned in principle, because the right has binding legal effectiveness as to third parties, ex officio investigation is also conducted by the panel utilizing the JPO’s expertise as necessary.

"Trial and Appeal Practitioner Study Group" aimed at improving administrative judges’ skillsStudy group consisting of practitioners inside and outside the JPO deliberates on trial/appeal and court decisions in actual cases considered to be important in the trial and appeal practice. The results of the study are consolidated into a report and widely disseminated. The results are utilized for trial and appeal practice, and an understanding of trial and appeal practice is shared with trial and appeal system users.

Analysis of trial/appeal and court decisionsRecent trial and appeal decisions and court decisions are reviewed and analyzed taking into account users’ opinions, etc.Results of analysis are shared at meetings at the Trial and Appeal Department (TAD), etc. and utilized for proceedings.

Not only proceedings are strictly conducted on a daily basis, but also various efforts are made to improve reliability of trial and appeal decisions by the Trial and Appeal Department (TAD).



Trial Court

Chief Administrative Judge

In particular, oral proceedings are conducted in trial for

invalidation cases

Demandant


Administrative Judge


Trial Clerks

Courtroom audience

Demandee

Witness

request for trial/appeal

formality

check

oral proceedings

trial/appeal decision

consultation

Of the 3 or 5 administrative judges in the panel, one presides over proceedings and administrative business of the case as a chief administrative judge.


Those who have more than 5 years of experiences as examiners at the Japan Patent Office as well as completed a legal training course.Proceedings for patents, etc. are also conducted by administrative judges at the United States Patent and Trademark Office, European Patent Office, China National Intellectual Property Administration, Korean Intellectual Property Office, etc.

Trial Clerk

In addition to clerical work related to preparation and service of trial records in trial/appeal cases, other clerical work is undertaken by trial clerks at the order of the chief administrative judge.Those who have engaged in industrial property rights at the Japan Patent Office for more than 5 years as well as completed a legal training course.

Subcommittees for 6 fields (4 fields for patents, 1 field for designs, and 1 field for trademarks) were established, and they deliberated on 12 trial/appeal and court decisions in actual cases (1–3 cases per subcommittee).

The results of the study are consolidated into a report (Japanese/English) and made available at the JPO website.

Participants: 64 practitioners participated in the study group (10–11 practitioners per subcommittee)• Participants are selected from

practitioners of the Japan Intellectual Property Association, the Japan Patent Attorneys Association, the Japan Federation of Bar Associations, as well as chief administrative judge, Administrative Judges, and Consultants on Trial/Appeal Decisions and Court Judgements.• Judges of the Intellectual

Property High Court and the Tokyo District Court participated as observers.

Proceeding Flow Trial and Appeal Practitioner Study Group 2018Main roles of administrative judges

Proceedings conducted by a panel consisting of three or five administrative judgesThree or five administrative judges examine a case in a trial/appeal. Once trial and appeal procedures are commenced by a request for trial or appeal, formality check and substantive determination are conducted by a panel.In a trial for invalidation , "oral proceedings" are conducted in principle to directly hear allegations of the parties concerned. The panel renders a trial decision after sufficient satisfaction of the panel is established.

Ex officio investigation conducted by the panel.Although proceedings are conducted based on evidence submitted by the parties concerned in principle, because the right has binding legal effectiveness as to third parties, ex officio investigation is also conducted by the panel utilizing the JPO’s expertise as necessary.

"Trial and Appeal Practitioner Study Group" aimed at improving administrative judges’ skillsStudy group consisting of practitioners inside and outside the JPO deliberates on trial/appeal and court decisions in actual cases considered to be important in the trial and appeal practice. The results of the study are consolidated into a report and widely disseminated. The results are utilized for trial and appeal practice, and an understanding of trial and appeal practice is shared with trial and appeal system users.

Analysis of trial/appeal and court decisionsRecent trial and appeal decisions and court decisions are reviewed and analyzed taking into account users’ opinions, etc.Results of analysis are shared at meetings at the Trial and Appeal Department (TAD), etc. and utilized for proceedings.

Not only proceedings are strictly conducted on a daily basis, but also various efforts are made to improve reliability of trial and appeal decisions by the Trial and Appeal Department (TAD).



Trial Court


In particular, oral proceedings are conducted in trial for

invalidation cases

Demandant




Trial Clerks

Courtroom audience

Demandee

Witness

request for trial/appeal

formality

check

oral proceedings

trial/appeal decision

consultation

Of the 3 or 5 administrative judges in the panel, one presides over proceedings and administrative business of the case as a chief administrative judge.


Those who have more than 5 years of experiences as examiners at the Japan Patent Office as well as completed a legal training course.Proceedings for patents, etc. are also conducted by administrative judges at the United States Patent and Trademark Office, European Patent Office, China National Intellectual Property Administration, Korean Intellectual Property Office, etc.

Trial Clerk

In addition to clerical work related to preparation and service of trial records in trial/appeal cases, other clerical work is undertaken by trial clerks at the order of the chief administrative judge.Those who have engaged in industrial property rights at the Japan Patent Office for more than 5 years as well as completed a legal training course.

Subcommittees for 6 fields (4 fields for patents, 1 field for designs, and 1 field for trademarks) were established, and they deliberated on 12 trial/appeal and court decisions in actual cases (1–3 cases per subcommittee).

The results of the study are consolidated into a report (Japanese/English) and made available at the JPO website.

Participants: 64 practitioners participated in the study group (10–11 practitioners per subcommittee)• Participants are selected from

practitioners of the JapanIntellectual PropertyAssociation, the JapanPatent Attorneys Association,the Japan Federation of BarAssociations, as well as chiefadministrative judge,Administrative Judges, andConsultants on Trial/AppealDecisions and CourtJudgements.• Judges of the Intellectual

Property High Court and theTokyo District Courtparticipated as observers.

“Exchange of opinions” to listen to the voice of usersOpinions are exchanged with a wide range of users, such as corporate IP personnel, patent attorneys, lawyers, etc. on a regular basis.This exchange of opinions helped to achieve the revision of the "Manual for Trial and Appeal Proceedings" that provides operations of the Trial and Appeal Department (TAD) (September 2018: Opposition to grant of patent; June 2019: Enhancement of described matters in the trial/appeal decisions; etc.) and of "Manual of “Hantei” (Advisory Opinion) for Essentiality Check” (July 2019), etc.

Demonstration of "mock oral proceedings" to remove the anxiety about oral proceedings Oral proceedings bring together administrative judges and concerned parties in intellectual property disputes where validity/invalidity of rights is alleged. In order to let users know more about oral proceedings, JPO staff members conduct and actually play roles in mock oral proceedings throughout Japan.

"Circuit trial examinations, on-site interviews, and television interviews" to improve accessibility to the systemThe Trial and Appeal Department (TAD) proactively promotes circuit trial examinations in every place nationwide (oral proceedings in local regions) and interviews in local regions so that people in local regions can have direct contact with an administrative judge panel.

Exchange of opinions with patent attorneys and lawyers nationwide

Mock oral proceedings (in Osaka)

Mock oral proceedings (in Hiroshima)

Exchange of opinions with JAFBIC (Japan Foods & Biotechnology Intellectual Property Rights Center)

User seminars outlining the patent trial and appeal systems (for practitioners)

Judicial Symposium on Intellectual Property / TOKYO 2019Japan, China, South Korea, India, Australia, and ASEAN(co-hosted with the Supreme Court of Japan, the Intel lectual Property High Court, the Ministry of Justice, the Japan Federation of Bar Associations, and the IP Lawyers Network Japan)

"User seminars outlining the patent trial and appeal systems" and "Symposium" to provide the latest information on the trial and appeal system By utilizing opportunities of international meetings with trial and appeal departments of foreign Patent Offices, the Trial and Appeal Department (TAD) of the Japan Patent Office collects the latest information on the trial and appeal systems both at home and abroad, and then, proactively provides the information through user seminars, etc.A wide range of users, including patent attorneys, lawyers, and particularly corporate IP personnel, have participated in the seminars. The total number of participants reached about 2,600 in Japan (in FY 2018).

The Trial and Appeal Department (TAD) makes much of the opinions of trial and appeal system users, such as corporate IP personnel, patent attorneys, and lawyers, with the aim of realizing a better trial and appeal system.The following explains dissemination of information by the Trial and Appeal Department (TAD) as well as exchange of opinions with the users.


Locations where circuit trial examinations were actually held in FY 2016–2018

“Exchange of opinions” to listen to the voice of usersOpinions are exchanged with a wide range of users, such as corporate IP personnel, patent attorneys, lawyers, etc. on a regular basis.This exchange of opinions helped to achieve the revision of the "Manual for Trial and Appeal Proceedings" that provides operations of the Trial and Appeal Department (TAD) (September 2018: Opposition to grant of patent; June 2019: Enhancement of described matters in the trial/appeal decisions; etc.) and of "Manual of “Hantei” (Advisory Opinion) forEssentiality Check” (July 2019), etc.

Demonstration of "mock oral proceedings" to remove the anxiety about oral proceedings Oral proceedings bring together administrative judges and concerned parties in intellectual property disputes where validity/invalidity of rights is alleged. In order to let users know more about oral proceedings, JPO staff members conduct and actually play roles in mock oral proceedings throughout Japan.

"Circuit trial examinations, on-site interviews, and television interviews" to improve accessibility to the systemThe Trial and Appeal Department (TAD) proactively promotes circuit trial examinations in every place nationwide (oral proceedings in local regions) and interviews in local regions so that people in local regions can have direct contact with an administrative judge panel.

Exchange of opinions with patent attorneys and lawyers nationwide

Mock oral proceedings (in Osaka)

Mock oral proceedings (in Hiroshima)

Exchange of opinions with JAFBIC (Japan Foods & Biotechnology Intellectual Property Rights Center)

User seminars outlining the patent trial and appeal systems (for practitioners)

Judicial Symposium on Intellectual Property / TOKYO 2019Japan, China, South Korea, India, Australia, and ASEAN(co-hosted with the Supreme Court of Japan, the Intel lectual Property High Court, the Ministry of Justice, the Japan Federation of Bar Associations, and the IP Lawyers Network Japan)

"User seminars outlining the patent trial and appeal systems" and "Symposium" to provide the latest information on the trial and appeal system By utilizing opportunities of international meetings with trial and appeal departments of foreign Patent Offices, the Trial and Appeal Department (TAD) of the Japan Patent Office collects the latest information on the trial and appeal systems both at home and abroad, and then, proactively provides the information through user seminars, etc.A wide range of users, including patent attorneys, lawyers, and particularly corporate IP personnel, have participated in the seminars. The total number of participants reached about 2,600 in Japan (in FY 2018).

The Trial and Appeal Department (TAD) makes much of the opinions of trial and appeal system users, such as corporate IP personnel, patent attorneys, and lawyers, with the aim of realizing a better trial and appeal system.The following explains dissemination of information by the Trial and Appeal Department (TAD) as well as exchange of opinions with the users.


Locations where circuit trial examinations were actually held in FY 2016–2018

※ Please see the JPO website for examinations

English translations of trial/appeal decisionsIn order to improve and enhance the dissemination of information on trials and appeals, the Trial and Appeal Department (TAD) makes efforts to provide English translations of trial/appeal decisions externally through the JPO website, etc.With the globalization of economic activities by enterprises, it has become difficult to resolve disputes over intellectual property rights within one country. We received some opinions that the English translation of "how the Trial and Appeal Department (TAD) of the JPO determines the validity of rights" is useful.

Cooperation with the Trial and Appeal Departments overseasFor the purpose of promoting mutual understanding and exchange of information in the field of trials and appeals, Trial and Appeal Experts Meeting between JPO and CNIPA is held annually with the Reexamination and Invalidation Department of the Patent Office, CNIPA.In addition, opinions are exchanged regularly with the Trial and Appeal Board of the United States Patent and Trademark Office (PTAB of the USPTO) and that of the EPO’s Boards of Appeal (EPO’s BoA).Furthermore, "the JPO-EPO-CNIPA-KIPO Trial and Appeal Meeting" was held in Seoul, Korea, in June 2019 where the heads of patent and trial and appeal boards from Japan, Europe, China, and Korea participated.Among major countries’ patent offices, multilateral cooperation in the field of trials and appeals has also made progress.

Trial and Appeal Experts Meeting between JPO and CNIPA

Exchange of opinions with the PTAB of the USPTO

The JPO-EPO-CNIPA-KIPO Trial and Appeal Meeting

Exchange of opinions with the EPO’s BoA

Dissemination of information overseas and international exchange Access, Contact Us

Map around the JPO

Kokkai-gijidomae

Station

Tameike-Sanno Station

Kasumigaseki Station

Toranomon Station

The Diet Building

To Hibiya

To Akasaka

Purpose of visit Destination for each visit

To appear at or hear oral proceedings, etc.

To have an interview with administrative judges (Please check in advance the venue for interviews with administrative judges.)

To submit documents related to revocation action against trial/ appeal decision (a preparatory document, a written description of evidence, a duplicate of Evidence A, etc.)

Trial Court (JPO)

The First Trial Court / Second Trial Court

JPO (5th floor)

METI Annex (1st floor)

JT Building (16th floor), METI Annex (10th floor)

METI Annex (8th floor)

Main phone number of the JPO

Press buttons after instruction of the voice guidance

Sotobori Street

To Shimbashi

Ginza Line

Ministry of Education, Culture, Sports, Science

and Technology-Japan

Toranomon Hills

Ministry of Economy, Trade and Industry

Ministry of Finance

Cabinet Office

Exit A-13

Exit 5

Exit 8

Exit 3

Nanboku Line

Marunouchi Line

Hibiya Line

Chiyoda Line

Kasumigaseki Building

Ext.

16th floor, JT building (Trial and Appeal Department (TAD))

Japan Patent Office

METI Annex (Trial and Appeal Department (TAD))

Access

Contact Us

※ Please see the JPO website for examinations

English translations of trial/appeal decisionsIn order to improve and enhance the dissemination of information on trials and appeals, the Trial and Appeal Department (TAD) makes efforts to provide English translations of trial/appeal decisions externally through the JPO website, etc.With the globalization of economic activities by enterprises, it has become difficult to resolve disputes over intellectual property rights within one country. We received some opinions that the English translation of"how the Trial and Appeal Department (TAD) of the JPO determines the validity of rights" is useful.

Cooperation with the Trial and Appeal Departments overseasFor the purpose of promoting mutual understanding and exchange ofinformation in the field of trials and appeals, Trial and Appeal Experts Meeting between JPO and CNIPA is held annually with the Reexamination and Invalidation Department of the Patent Office, CNIPA.In addition, opinions are exchanged regularly with the Trial and Appeal Board of the United States Patent and Trademark Office (PTAB of the USPTO) and that of the EPO’s Boards of Appeal (EPO’s BoA).Furthermore, "the JPO-EPO-CNIPA-KIPO Trial and Appeal Meeting" was held in Seoul, Korea, in June 2019 where the heads of patent and trial and appeal boards from Japan, Europe, China, and Korea participated.Among major countries’ patent offices, multilateral cooperation in the field of trials and appeals has also made progress.

Trial and Appeal Experts Meeting between JPO and CNIPA

Exchange of opinions with the PTAB of the USPTO

The JPO-EPO-CNIPA-KIPO Trial and Appeal Meeting

Exchange of opinions with the EPO’s BoA

Dissemination of information overseas and international exchange Access, Contact Us

Map around the JPO

Kokkai-gijidomae

Station

Tameike-Sanno Station

Kasumigaseki Station

Toranomon Station

The Diet Building

To Hibiya

To Akasaka

Purpose of visit Destination for each visit

To appear at or hear oral proceedings, etc.

To have an interview with administrative judges (Please check in advance the venue for interviews with administrative judges.)

To submit documents related to revocation action against trial/ appeal decision (a preparatory document, a written description of evidence, a duplicate of Evidence A, etc.)

Trial Court (JPO)

The First Trial Court / Second Trial Court

JPO (5th floor)

METI Annex (1st floor)

JT Building (16th floor), METI Annex (10th floor)

METI Annex (8th floor)

Main phone number of the JPO

Press buttons after instruction of the voice guidance

Sotobori Street

To Shimbashi

Ginza Line

Ministry of Education, Culture, Sports, Science

and Technology-Japan

Toranomon Hills

Ministry of Economy, Trade and Industry

Ministry of Finance

Cabinet Office

Exit A-13

Exit 5

Exit 8

Exit 3

Nanboku Line

Marunouchi Line

Hibiya Line

Chiyoda Line

Kasumigaseki Building

Ext.

16th floor, JT building (Trial and Appeal Department (TAD))

Japan Patent Office

METI Annex (Trial and Appeal Department (TAD))

Access

Contact Us

Handbook for Trial and Appeal System in Japan For appropriate acquisition and exercise of industrial property rights


Japan Patent Office

Trial and Appeal Department (TAD)Japan Patent Office

With our mission to develop Japanese industry with our intellectual property users, our logo was created to further disseminate the trial and appeal system.The "profile" at the upper right represents administrative judges who are responsible for the trial and appeal system; "brainwaves" and the "magnifying glass" extending from it represent the work of administrative judges of "trial and appeal proceedings" and "ex officio investigation," respectively.The "balance" symbolizes "early resolution of disputes," which is a role for the trial and appeal system to play.The "circular frame" that includes all these elements represents that trial and appeal decisions have "binding legal effectiveness as to third parties."

About a trial and appeal system logo

（2020.2）

handbook for trial and appeal system in japan...the trial and appeal system is a mechanism for...

Documents