The whole procedure from filing to registration is shown in the flow chart below.
The due date for filing the national phase of a PCT application in Japan is 30 months from its earliest priority application date. Once this due date for entering the Japanese national phase has passed, there is no way for nationalizing the PCT application based on its priority application, but claiming force major due a serious natural disaster (Here, not even the earthquake and tsunami as well as nuclear havoc at the fukushima plant were sufficient for foreign application to come under force major!). Nevertheless, in case of a global pandemic such as the recent CoVid-19 outbreak foreign application to come under force major and a remedy period was established.
Notwithstanding, in order to restore priority, a notice of the reasons for restoration may be filed with the JPO in order to reinstate the proceedings, accordingly. The notice should contain all legitimate reasons why the applicant has not been able to claim priority in due time.
Furthermore, in case of other circumstance where a failure occurred despite all due care, the notice must be filed within one month after the entering date the Japanese national phase (31 months) and has to be accompanied by supporting documents proving that the reasons are legitimate. If the Receiving Office restores priority on the basis of PCT Rule 26bis3 and if the reason for restoration comes under a failure that occurred despite all due care required by the circumstances, then restoration may be accepted by the JPO.
Note:The PCT Application can be filed based on the bibliographic data without a translation of the application text (specification, claims, figures etc.). Thus, when entering the Japanese national phase only the following documents and information are necessary:
The WIPO WO-Publication number or a copy of the bibliographic data on the front page thereof. In case there are amendments under PCT Article 19(1) and/or 34(2) please provide a copy of the PCT specification, claims and drawings; copies of the any requests to WIPO and a copy of an international preliminary examination report, if not yet published.
The translation of the application text can be filed 2 months after the date of entering the Japanese national phase. Once the due for the translation has passed the application is deemed to be withdrawn which results in a loss of right.
For the sake of full disclosure and to avoid any priority problems, it is recommended to file the translation of the original application text, and thereafter file the amendments in accordance under PCT Article 19(1) and/or 34(2) of the international application in the international phase as a voluntary amendment in the Japanese national phase before the examination request (which is 3 years from the international filing date of the PCT application).
Paris Convention Treaty Application (of a foreign language patent application)
The due date for filing the Japanese patent application under the Paris Convention Treaty is 12 months from its earliest priority application date. Once this due date for claiming the earliest priority application has passed, there is no way for restoring the priority for the Japanese patent application (expect for unlikely events as stated in above).
When filing a Japanese patent application, the following documents and information are necessary:
The application number and filing date of the priority application, the priority document (if WIPO- Digital Access Service (DAS) is not applicable), the application text (specification, claims, figures and abstract).
The full name (including middle names) and address (including country) of each applicant and the full name and address of each inventor.For all IP 5 offices (USPTO, SIPO, KIPO, EPO, JPO) and most countries (except Germany) the priority documents are exchanged via the WIPO-DAS. In case of Germany the original priority document has to be provided within 16 months after the earliest priority application date.
With regard to the establishment of a foreign language application regime which allows the applicant to file a Japanese foreign language patent application based on its original (foreign language) application text (specification, claims, figures etc.). The translation of the can be filed within 16 months after the earliest priority application date. The late filed translation can be corrected based on the original foreign application text. Once the due date for the translation has passed the application is deemed to be withdrawn which results in a loss of right.
Note:In case a Japanese patent application under the Paris Convention Treaty is filed based on its Japanese translation, it is deemed a national patent application and the translation mistakes cannot be corrected on the basis of the its original (foreign language) application text. Due to the fact that the benefit of the Japanese foreign language patent application proceedings by far outweigh the financial effort (official fees of 22,000- JPY instead of 14,000- JPY) it is our firms’ client policy to file the original foreign application text first and commence with the filing of the translation thereafter.
However, since the examination request cannot be filed before the translation of patent application has been filed, there might be some scenarios filing the translation together with the application is more beneficial for the applicant.
After filing the official application documents at the JPO, the formal examination department check whether it fulfills the necessary procedural and formal requirements.
Note:The JPO maybe issue a formal correction order in case of necessary documents are missing or any other discrepancies in the application forms. The formal order is issued approx. within 4 weeks after the filing official application document.
Although a power of attorney for taking over the representation for filing a patent application at the JPO is no longer necessary, it may still mandatory for representation of the applicant in case of formal registration such as change of name or change of inventors etc. Furthermore, in case of filing an appeal a power of attorney becomes necessary.
Despite the above relaxation, it is our firm’s client policy to require a power of attorney from new clients and/or individual applicants etc.
Note:In particular when filing the Japanese patent application under the Paris Convention Treaty with a priority application of a country that has no exchange agreement via the WIPO-DAS, please make sure that each inventor and each applicant names as well as their addresses are correct and up-to-date. In particular with regard to applicants and inventors information that are different to the information as stated in the application form, the requirements for a correction of said bibliographic data at the JPO is very stringent.
On the other side, registrations of changes of applicant or inventor information of a PCT application during the international phase can be filed during Japanese national phase. A copy of the respective request at the international bureau and a power of attorney is sufficient to file for the registration of change or assignment at the JPO.
The examination request has to filed either after 3 years of the earliest priority application for a Japanese foreign language application via the Paris Convention Treaty or in case of the national phase of an international PCT application 3 years after the international filing date of a PCT application. Once the due date for the request for examination has passed, the application -regardless of its origin- is deemed to be withdrawn which results in a loss of right. There is no way to restore the date for the request of examination other than filing for reinstatement and onus that the failure occurred despite all due care.
There are various alternatives to expedite the examination, including the PPH. However, with regard to the present speed and the high granting rate of the examination proceedings, the varieties of expedited examinations requests have lost importance over the past years.
The claims can be voluntarily amended in the scope of the specification and the figures at all time before the issuance of a first office action (notice or reason for refusal or notice for allowance of grant). We recommended to file for a voluntary amendment to the claims at the time of filing the examination request.
Note:Avoiding the well-known stumbling blocks in the claim wording saves costs and enhances examination efficiency. Here, as an example are two categories of usual clarity rejections.
Firstly, the use of relative adjectives as ambiguous terms limiting scope of a feature such as “much bigger”, “easy to apply”, “a high temperature”, “substantially”, “preferably”, “for example” “in particular” etc. These terms should either be totally avoided or clarified with regard to the technical limitations in their respective intervals. Moreover, subject matter comprising numerical ranges including zero or open numerical intervals without any upper limitation such as “0 to 10%” or “more than 10%”, respectively, suffer clarity rejections as to whether the defined component should be included in the claim scope or not, i.e., indispensable or optional to the subject matter.
Secondly, the pitfalls of non-exclusive combination "and/or" is often deemed unclear, in particular with regard to multiple-dependent claims relating to such features. Multiple independent claims in the same category are permitted if those claims come under the requirement of unity of invention.
Also the term "computer program product" as it is often used in claims before the EPO, causes confusion for the Japanese examiner, as a software related claim is considered product claim per se. It should be noted that different claim categories cannot depend on each other. This said, a product claims cannot depend on method claims etc. Especially for software-related claims a “mirror claim” with the respective features may introduced for the other claim category to avoid a formal rejection.
Apart from the above examples, there are many more formal pitfalls and limitations, with regard to product-by-process claims, the novelty rejection of the main claim (absence of a specific technical feature claim 1) etc. which may make a voluntary amendment before examination necessary in order to enhance examination efficiency at the JPO. In case you would like to us to check your claims please expressly instruct us at the time of filing the examination request.
The first office action is issued approx. 3 to 9 months after the examination request. In case the primary examiner does not find any reasons for rejection, the first office action is a notice for allowance of grant.
In case the primary examiner finds a reason for rejection, the first notice issued by the examiner informs the applicant of such reason. A written argument and a claim amendment can be filed within 3 months after the dispatch date the first notice of reasons for rejection. This term can be extended in two steps (two months and one month) for 3 additional months. In case the initial 3 months term has passed without filing for an extension of term, the primary examination proceedings can be reinstated by payment of a reinstatement fee.
Final Notice of Reason for Refusal
After the first notice of reasons for rejection, the primary examiner has three alternatives, the grant the patent application if all reasons for rejection are resolved, to issue a final notice of reasons for rejection if the claim amendment adds new reasons for rejection or a decision of refusal if the examiner arrives at the opinion that the claim amendment and written opinion does not resolve the reasons of the first notice of reasons for rejection at all.
The amendment possibilities to the claims in response to a final notice of reasons for rejection are limited to a claim cancellation, a restriction of the claim scope (limited to restrictions of matters required to identify the subject matter already stated in a claim, whereas the industrial applicability and/or the problem to be solved by the invention stated in the said claim prior to the amendment should be identical with those after the amendment), a correction of errors, and a clarification of unclear statements (limited to the subject matter as rejected by the examiner).
If no reasons for refusal were found by the JPO examiner, a notice for decision of grant will be issued. The notice for decision of grant is either issued as a first office action between 9 to 12 months after the request for examination or approx. 3 months in response to a written argument/ claim amendment in response to a notice of reason for refusal.
From the issuance date of the notice for decision of grant the applicant can pay the patent granting fees (including the 1st to 3rd year patent annuity fees) within 4 weeks. The applicant has the choice whether or not to file a divisional application after grant. The divisional application has to be filed before or at the time of paying the granting fees.
Note:The payment term of the granting fees can be extended by 4 weeks, but remains is the shortest term in the patent proceedings for foreign applicants. Though the JPO allows for a late payment of the granting fees after the extended term under the double official fee payment scheme within 6 months after the issuance date of the notice for decision of grant, the applicant’s immediate attention to the payment is very much appreciated.
Furthermore, please note that for patent applications that were granted after a favorable appeal proceeding at the JPO, there is no opportunity to file a post-grant divisional application.
The decision of refusal marks the end of the primary examination proceedings and an appeal must to be filed against the decision of the primary examiner.
In principle, the primary examiner has to issue an additional notice of reasons for rejection if the argumentation and reasons for rejection change. The Japanese Patent Law does not provide for right to be heard and the issuance of an office action or the acceptance of an invitation for an interview is to the discretion of the JPO.
The amendment limitations to the claims in response to decision of refusal are the same as for a final notice of reasons.
Written Argument:
In the written argument the arguments against the allegations of the examiner are stated and misunderstandings or misconceptions with regard to the subject matter of claims are clarified.
The most likely reasons for rejection are due to lack of novelty and/or inventive step, violations of the clarity, support and/or enablement requirement, whereas a special form of a lack of novelty rejection is either a lack of unity of invention rejection (absence of a specific technical feature in claim 1) or a novelty destroying unpublished prior art (“older right”) of the same applicant, namely a novelty rejection applied to a younger patent application where inventors or applicants of a prior application and a present application are same, and the unpublished younger patent application contain subject matter that is self-collusive with older, published patent application.
Other likely reasons for refusal in trending technical fields are a lack of patentability with regard to industrially applicable inventions in special cases such as absence of technicality in software-related claims or a violation of the requirements of inventions relating to surgery or therapy and diagnostic methods practiced on the human body, i.e. so-called inventions for medical treatment methods, which are also not patentable.With regard to most of reasons of rejections an amendment of the claims wording is necessary.
Note:An argumentation based on subject matter that is stated in the specification, but not in the claim is not considered to resolve to reasons for rejection without a respective claim amendment. In particular, in case of a partial feature of a combined subject matter that solves the technical problem is highlighted only in the written argumentation, but is not defined in the claim wording, the written argument is meaning less without a respective incorporation of said partial feature into the claim.
Claim Amendment:
Despite the fact that applicant can amend the claims with regard to the full disclosure of the specification and figures in response to a first notice of reasons for refusal, we recommend to keep in mind that the scope of the claim amendment may be limited in future examination proceedings. In particular, with regard to chemical-, pharma- and biotech-related claims which strongly depend on the support of specification it is important to deeply consider which subject matter has sufficient support by the specification as a deletion of such feature may be deemed a violation of the amendment limitations in case of a final notice or a decision for rejection.
Though such a dilemma can be cured by filing a divisional application, it is remains costly for the applicant.Similarly, technical features that are either unclear or for which the specification states no superior technical effective over the prior art should not be incorporated in the claim wording should be avoided since those features maybe cause troubles with regard to the amendment limitations as stated above.
In other words, please keep in mind that in response to final notice of reasons for rejections or a decision for refusal only a claim cancellation, a restriction of the claim scope (limited to restrictions of matters required to identify the subject matter already stated in a claim, whereas the industrial applicability and/or the problem to be solved by the invention stated in the said claim prior to the amendment should be identical with those after the amendment. Furthermore, correction of errors; and a clarification of unclear statements (limited to the subject matter as rejected by the examiner).
This said, it is strongly recommended to resolve all clarity issues with response to the first office action and therefore the instrument of an unofficial interview is a very handy tool to make sure that those reasons for rejection are to be come.
The interview with primary examiner (or the board of appeal examiner) is optional, but highly appreciated by the examiners, too. In case of clarity rejections it provides for an upfront consent to the claim wording before filing a written response to the notice of reasons for rejection.
This means based on an upfront claim draft as a basis for the discussion, the residual ambiguities of the claim wording are eliminated. The interview keeps the examination proceedings alive without causing an abrupt end to the examination/appeal proceedings which may forces the applicant to engaging in more costly higher instance proceedings. During the interview the motivation for a consensual solution can be signaled and an additional opportunity for amendments maybe provided if there is positive outlook for a grant of the patent application.
The benefits of an unofficial interview with regard to the examiner efficiency outweighs the financial efforts when considering the translation costs and the unnecessary limitations to the claim scope that might occur otherwise.
The reasons for filing a divisional application are manifold and usually depend on the applicant's strategy and budget. Divisional applications can also be filed within 4 weeks after the notice of allowance for grant or together with the granting fees payment based on a parent application which has been granted during the primary examination proceedings (i.e., not after a successful appeal trial).
However, with regard to the predicaments of the Japanese examination proceedings there are constraints for which the filing of a divisional application inevitable to prosecute the full scope of the invention. Those are for example a lack of unity of invention rejection, rejections which cannot be resolved without violating the limitations requirements to the claim amendment in the later stage of the examination proceedings or strategic considerations for avoiding the so-called “appeal dilemma”, which does not allow the appellant to file a divisional application after grant for a parent application that was granted during the appeal proceedings.
Moreover, it is sometimes necessary to file a divisional application to break free and be exempt from the restrictive limits in the light of the Japanese Patent Act Article 17bis (5). In other cases, a divisional application maybe considered as a fallback solution for the appeal trial in order to keep the application proceedings pending at the JPO instead of engaging in a costly and less flexible appeal trial at the Tokyo IP High Court. Moreover, please consider that applicant obtains a 50% refund of the official examination fees if a divisional application is withdrawn before the JPO issued a first office action.
Thus, a fallback solution for the appeal trial in form of a divisional application maybe a prudent approach to avoid a sudden discontinuance of the application proceedings due to monetary considerations, and it outweighs the filing fees by the benefit of keeping the examination proceedings at the JPO.
Post Grant Opposition
The filing term of the post-grant opposition against a patent right is 6 months from the publication date of the patent right in the official patent gazette.
Any person (demandant of the opposition) can file a post-grant opposition, and a strawman-filing is permitted. The opposition an ex-parte proceeding which usually takes approx. 12 to 16 months depending on the exchange of preparatory documents. The procedure starts with the opponent filing the reasons for revocation of the patent for each patent claim. Beside lack of novelty, lack of inventive step and prior use (also due to prior published patent applications), additional reasons for revocation are unity of invention, lack of clarity, violations to the support and enablement requirements, introduction of new matter. For claims which are not opposed by the grounds of the opposition, no reasons for revocation are deemed to present (i.e. a patent right maybe maintained by limiting the main claim to the features of the non-opposed claim).
After receiving the opponent’s request for an opposition trial, the grounds for opposition and supporting documents thereto, a board of of either three or five appeal trial examiners is nominated, and within 2 to 3 weeks the JPO will issue a notice of official reference number to the opponent and the patent proprietor, respectively. Thereafter, a copy of the opponent’s filing documents is sent to the patent proprietor or his local representative and approx. 2 to 4 months after the expiry of the filing term for the post-grant opposition.
The patent proprietor does not have to immediately submit a response to such copy, but wait for the finding of the board of appeal examiner charge of the opposition. Nevertheless, an opinion by means of a written statement can be stated at any time after the above copy of the opponent’s documents have been received.
On the other side, the JPO will issue a notice of official reference number timely to inform the parties that a registration of the request for an opposition trial will processed into the official register of the JPO. This register entry is usually made public on the official information online database approx. one month after the expiry of the filing term of the opposition for the purpose of warning third parties of possible status changes of the opposed patent right.
Opposition Examination
Once the copy of the opponent’s filing documents was sent to the patent proprietor, the board of appeal trial examiners starts with the examination of opposition. During the examination, any reasons for revocation may be examined ex officio, even if it is not pleaded by the opponent. However, despite the ex-officio examination of the board of appeal, the patent is only examined for each claim as stated in the filing documents of opponent. Moreover, if two or more oppositions are filed against the same patent right by the same or different parties, examination will be in principle be combined irrespectively the grounds for opposition, and no particular notice of the combination will be issued by the JPO.The opponent can withdraw the request for an opposition trial only before notice of the Notice of reason for revocation.
Notice of Reason for Revocation
As a result of the ex-officio examination a nNotice of reasons for revocation is issued to the patent proprietor, if the board of appeal trial examiners intend to render a decision for revocation of a patent right.
In accordance to the nNotice of reason for revocation, the patent right proprietor and the opponent are notified of the ex-officio reasons for the revocation of the patent right.The patent right proprietor can file a written argument and a request for correction within 90 days from date of issuance of the nNotice of reason for revocation.
Written Argument/ Claim Amendment in Opposition
The patent right proprietor may submit a written argument and a request for a correction of the claims to the notified reasons for revocation within 90 days from date of issuance of the notice of reasons for revocation. Nevertheless, the patent right proprietor can file his written argument at any time after the above copy of the opponent’s documents have been received and the date of issuance of the notice of reasons for revocation was issued.
The patent right proprietor can extend this due date by filing a three-months extension in two steps: a one-month extension followed by an additional two-months extension can be filed by payment of the respective official fees.
On the other side, the board of appeal issues a copy of the written argument and the request for correction of the patent right proprietor to the opponent. If the patent right proprietor filed a request for correction, the opponent can file a written argument against the patent proprietor’s argumentation and the correction to the patent right as requested. The filing term for such written argument by the opponent is only 50 days from the issuance date of the patent proprietor’s filing documents by the JPO.
After a first exchange of preparatory documents as stated above, the board of appeal may revise its reasons for revocation and issues a further notice of reason for revocation. If the board of appeal trial examiners arrives at the opinion that reasons for revocation are overcome and that patent right can be maintained, a decision of maintenance may be issued.
Decision to maintain the patent right (Opposition)
A notice of a decision to maintain the patent right may be issued instead of a notice of reasons for revocation, if the allegations of the opponent were not sufficient to convince the board of appeal to issue notice of reasons for revocation, because either there were no such reasons provided by the opponent, the opponent made a fraudulent request for the opposition trial etc. or other irregularities which lead to a dismissal of the opposition. The decision on an opposition trial is published in the patent gazette. Public file inspection of the opposition proceedings and the related documents is available on request.
The opponent has no remedy to appeal this final decision by filing an appeal court trial against the opposition trial decision at the Tokyo Intellectual Property High Court. (reformatio in peius). However, the opponent can file an invalidation trial against maintained patent, if unresolved conflicts remain between the interested parties.
In order to determine validity of a decision of refusal and to obtain a decision of grant from a higher instance at the JPO, the dissatisfaction with the decision of the primary examiner can encountered by filing an appeal against primary examiner's decision of refusal.
The reasons for appeal (written argument) must be filed within 4 months (for foreign applicants) from the issuance date of the decision of refusal. At the time of filing the reasons for appeal, the applicant has also the opportunity to file a claim amendment and/or to file a divisional application.
Note:It is highly recommended to file a claim amendment at the time of filing an appeal. This claim amendment provides the appellant with the chance of benefit from an interlocutory examination of the primary examiner in a reexamination step before the appeal stage. Together with commencing an oral hearing or a telephone interview with the primary examiner and/or the board of appeal at the later stage of the appeal proceedings such claim amendment often provides for a proper chance to turn around the decision of refusal.
The applicant has to pay the patent granting fees (including the 1st to 3rd year patent annuity fees) within 4 weeks after the issuance date of the Decision for Grant. The date of payment of the 1st to 3rd year patent annuity fees is not the base date for the 4th year patent annuity and all others patent annuity payments to follow. The base date will be published with the publication of the patent right in the official gazette and/or at the time of issuing the letters patent to the applicant.
Furthermore, in absence of a payment in due time, the applicant can late pay the patent granting fees (including the 1st to 3rd year patent annuity fees) within 6 months after the issuance date of the Decision for Grant by double payment of the official fees.
Note:The time between date of payment and the issuance of the letter patent is approx. 2 months. Thus, the decision whether to instruct a computer payment agency as third-party payment channels has to wait until the letters patent are received and the base date for the above 4th year and following annuity payments is known.
In case the payment of the 1st to 3rd year patent annuity fees in due time, the patent will be published in the official patent gazette and the letters patent will be issued to the applicant. The publication date of the patent right on the letters patent and as issued in the official patent gazette is the base date for payment of the 4th patent annuity and the filing term of a post-grant opposition against the grant of the patent.
Unlike in case of the opposition trail against a patent right only an interested party may request a trial to invalidate a patent right. The invalidation trial is an inter-parte proceeding. The invalidation of a patent right can be trialed at the JPO or at a civil court in case of an infringement motion against the patent right. The ground for the request for an invalidation trial may be similar to grounds available in the opposition trial. The request for an invalidation trial can filed over the protective term or as long as patent right is no invalidated.
A request for invalidation trial can be filed during the term for filing an opposition or while an opposition proceeding is pending. If filed while a trial opposition is pending, the opposition proceedings in principle takes precedence over the invalidation trial.
However, in case the invalidation trial request was filed prior to the start substantial examination of the opposition trial, and if the merit to the invalidation trial provides prima facie evidence or in case that there is any conflict between the patent proprietor and the opponent which needs immediate attention (such as an unjustified claim for infringement damages based on the patent right or a patent invalidation defense during an infringement trial), the trial for invalidation can take precedence over the opposition proceedings. The decision which proceedings to stay is subject to the decision of the board of appeal trial examiners (if the invalidation is trailed at the JPO) or the judge of the court handling the infringement proceedings, respectively. There is an exchange of information between the court and the JPO, whereas the court informs the JPO of any infringement motion instructed against a patent right and the JPO informs the courts every time an invalidation trial was request against a patent right.
Moreover, the JPO may request any records of the court trial proceedings if deemed necessary.
The invalidation trial proceedings begin with the request for invalidation trial by the demandant (person with interest, no anonymous filing) and the filing of the grounds for invalidation. The court (or board of appeal examiners in case of the JPO) appoints a panel which provides copies of the demandant’s filing documents and an invitation to response to thereto to the patent proprietor (or his local representative). The patent proprietor may file a preparatory document including a written argument and request for correction.
During the invalidation trial proceedings preparatory documents may exchange in an approx. 3 months rhythm until the judge or board of appeal examiners reaches a decision to summon an oral hearing. Before each oral hearing preparatory documents are exchanged between the parties and the court/board of appeal examiners.
After the oral hearing, a further oral hearing may schedule if the reasons for invalidation were not deemed to be overcome or the patent can only be partly maintained. In this case the board of appeal issues an advance notice of the invalidation trial decision to the patentee. The patentee can file a request for correction in order to refute the reasons for invalidation as notified or in order to consent to maintain the patent in the scope as notified by the board of appeal.
Note:Due to the complexity of proceedings invalidation trials are more expensive than opposition trials.
In case of a decision for the invalidation of the patent right, if the reasons for invalidation only partly revoke the claims of the patent right, the decision effects only a part of the patent right (claims) while upholding remaining part of the patent right (claims) if a respective request for correction of the patent is filed by the patent proprietor. The decision to maintain based on the corrected patent right and the corrected patent right with its maintained claims is published in the patent gazette.
In case that a decision completely invalidates a patent right, the voided patent right is retroactively deemed never to have existed. Public file inspection of the invalidation proceedings and the related documents is available on request.
Both, the demandant and the patent proprietor can appeal the final decision by filing appeal court trial against the invalidation trial decision at the Tokyo Intellectual Property High Court.
After the first oral hearing, in case board of appeal examiners fully uphold the patent right and dismisses the grounds for invalidation, a notice of a decision to maintain the patent is issued approx. 3 - 4 months after the oral hearing.
The demandant has the remedy to appeal this final decision by filing an appeal court trial against the invalidation trial decision at the Tokyo Intellectual Property High Court. (The patent proprietor may appeal if dissatisfied with the decision to partial maintain/revoke his patent right, respectively.)
In case of a decision for the revocation of patent right, if the reasons for opposition only partly revoke the claims of the patent right, the decision effects only the opposed part while upholding remaining claims of the patent right, if a respective request for correction of the patent right is filed by the patent proprietor. The decision based on the corrected patent and the corrected patent with its maintained claims is published in the patent gazette.
In case decision completely revokes a patent right, the revoked the patent right is retroactively deemed never to have existed. Public file inspection of the opposition proceedings and the related documents is available on request.
The opponent has no remedy to appeal this final decision by filing court trial against the opposition trial decision at the Tokyo Intellectual Property High Court. (reformatio in peius). However, the opponent can file an invalidation trial against (partially) maintained patent, if unresolved conflicts remain between the interested parties.
In case the opposition was not dismissed on the bases of irregularities, the notice of a decision to maintain is issued approx. 3 - 4 months after the filing of the written argument (and a request for correction) against the notice of reasons for revocation. The decision of the board of appeal trial examiners in charge of the opposition is a decision to uphold the patent right, because the reason for revocation were deemed to be overcome or a decision for revocation of the patent right.
If the patent proprietor is dissatisfied with the decision of the board of appeal trial examiners in charge of the opposition at the JPO to (partially or completely) revoke the patent right, the patent proprietor may file an appeal court trial against the opposition trial decision at the Tokyo Intellectual Property High Court within 120 days of the issuance date of the opposition decision. This term cannot be extended.
The appeal court trial against the opposition trial decision at the Tokyo Intellectual Property High Court does not allow for any further amendments to the patent claims and no request for correction are allowed during the appeal court trial is pending.
Note:In case of court trial against the opposition decision the foreign appellant needs to be represented by an attorney at law, and a power of attorney together with notarized company register of the appellants data (in case of company) must be filed at the time of filing the request for trail at Tokyo Intellectual Property High Court.
The Supreme Court of Japan is the last remedy of the parties of law suit at the Tokyo Intellectual Property High Court are dissatisfied with the decision of appeal court judges.
