Appealing JPO Decisions in Japan: What Are the Options for U.S. Companies Dissatisfied with an Examiner's Ruling?

Japanese Attorney at Law - Bengoshi L.L.

• 8 min read

The journey of a patent application through the Japan Patent Office (JPO) involves rigorous examination, and not all applications emerge with a granted patent. Similarly, post-grant challenges like invalidation trials or oppositions can lead to decisions that are unfavorable to one of the parties. For U.S. companies and other applicants or patentees interacting with the JPO, understanding the avenues for appealing adverse decisions is crucial. Japanese patent law provides a multi-tiered system for review, beginning with administrative appeals within the JPO itself, followed by the possibility of judicial review before specialized courts. This article outlines these appeal mechanisms.

Phase 1: Administrative Appeal Within the JPO – The Appeal Against an Examiner's Decision of Refusal

If a JPO examiner issues a final "Decision of Refusal" (拒絶査定 - kyozetsu satei) for a patent application, the applicant is not without recourse. The first line of appeal is an administrative procedure within the JPO known as an Appeal Against an Examiner's Decision of Refusal (拒絶査定不服審判 - Kyozetsu Satei Fufuku Shinpan), governed by Article 121 of the Patent Act.

Nature and Purpose:
This is an ex parte proceeding (査定系審判手続 - satei-kei shinpan tetsuzuki), meaning it is primarily between the applicant and the JPO. A panel of three or five experienced Administrative Patent Judges (shinpan-kan) from the JPO's Trial and Appeal Board conducts a review of the examiner's decision. The purpose is to reconsider the patentability of the application in light of the applicant's arguments and any amendments made.

Who Can File and When:
The appeal must be filed by the applicant who is dissatisfied with the examiner's final rejection. It must be lodged within three months from the date the applicant received the certified copy of the Decision of Refusal. This period can be extended for applicants residing overseas, including U.S. entities.

Key Procedural Aspects:

  1. Filing Amendments with the Appeal (Article 17-2(1)(iv)): This is a critical strategic opportunity. When filing the appeal request, the applicant can also file amendments to the description, patent claims, or drawings. These amendments are intended to overcome the reasons for refusal cited by the examiner. However, such amendments are subject to strict limitations:
    • They must not introduce "new matter" beyond the scope of the original disclosure.
    • They are generally restricted to purposes such as deleting claims, restricting the scope of claims (e.g., by adding elements, narrowing ranges), correcting errors, or clarifying ambiguities.
    • An amendment that restricts claim scope must also ensure that the invention defined by the amended, restricted claim is itself independently patentable (meeting requirements like novelty and inventive step).
  2. Re-examination by Examiner Before Appeal Board Review (審査前置制度 - Shinsa Zenchi Seido) (Article 162): If amendments are filed along with the appeal request, the application is first sent back to the examination division (often to the original examiner or another examiner in the same unit) for re-examination in light of the amendments. This is known as the "system of re-examination before appeal."
    • If the examiner is persuaded that the amendments have overcome all grounds for refusal, they can issue a Decision to Grant a Patent (Article 164(1)). In this scenario, the appeal proceeding effectively concludes with a favorable outcome for the applicant.
    • If the examiner still finds reasons for refusal, they will report the results of their re-examination to the JPO Commissioner, and the case will then proceed to the Trial and Appeal Board for a full review.
  3. Review by the Trial and Appeal Board: If the case proceeds to the Appeal Board, the panel of Administrative Patent Judges will review the entire application, the examiner's decision, the prior art, and any arguments and amendments submitted by the applicant.
    • The Board is not limited to reviewing only the specific reasons for refusal cited by the examiner. It can uphold the rejection based on different or additional grounds (Article 159(2)). However, if the Board intends to reject the application based on new grounds not previously notified to the applicant, it must issue a new Notification of Reasons for Refusal, giving the applicant a further opportunity to submit arguments and/or amendments.
    • The proceedings before the Appeal Board in ex parte appeals are primarily based on written submissions (Article 145(2)).

Possible Outcomes of the Appeal (Trial Decision - 審決 Shinketsu):
The Appeal Board will issue a formal trial decision (shinketsu), which can be:

  1. Dismissal of the Appeal Request: If the appeal request itself is procedurally flawed and cannot be corrected (Article 135).
  2. Dismissal of the Appeal (Rejection Upheld): If the Board agrees with the examiner that the application is unpatentable (often termed a 不成立審決 - fuseiritsu shinketsu, meaning "decision of non-establishment of the appeal").
  3. Allowance of the Appeal (Rejection Overturned):
    • Decision to Grant a Patent: If the Board finds the invention patentable as claimed or as amended.
    • Decision to Remand to the Examiner for Further Examination (Article 160(1)): This may occur if the Board finds the initial examination was procedurally deficient or incomplete, requiring further action by the examination division. A decision by the Board to remand, particularly if it includes findings on certain patentability issues, is binding on the examiner in subsequent proceedings (Article 160(2)).

Phase 2: Judicial Review – Lawsuit for Rescission of JPO Trial/Appeal Decisions

If an applicant (or other party in inter partes JPO trials) is dissatisfied with a final decision (shinketsu) from the JPO's Trial and Appeal Board, or with certain other JPO determinations (like a revocation decision in an opposition proceeding, if appealed by the patentee), the next step is to seek judicial review by filing a lawsuit in court. This is known as a Lawsuit for Rescission of a Trial/Appeal Decision (審決取消訴訟 - Shinketsu Torikeshi Soshō), governed by Article 178 of the Patent Act and the Administrative Case Litigation Act.

Nature of the Lawsuit and Jurisdiction:
This lawsuit is an administrative action seeking the cancellation (rescission) of the JPO's administrative adjudication. It is not a de novo re-examination of the patent application or patent validity itself, but rather a review of the legality of the JPO's decision.

A key feature of this system is that such lawsuits have exclusive jurisdiction in the Tokyo High Court (Article 178(1)). Since 2005, these specialized patent cases are handled by the Intellectual Property (IP) High Court, which operates as a special branch of the Tokyo High Court. The IP High Court is staffed with judges experienced in intellectual property matters and is supported by Judicial Research Officials (saibansho chōsakan) who possess technical expertise. This structure ensures a high level of specialized competence in reviewing complex JPO decisions.

Parties to the Lawsuit (Article 179):
The parties depend on the nature of the JPO proceeding being appealed:

  • Appeals from Ex Parte Trial Decisions: If the JPO Trial and Appeal Board upholds an examiner's rejection in an appeal against refusal, or if a patentee's request in a Trial for Correction is denied, the applicant/patentee is the plaintiff. The Director General of the JPO is the defendant.
  • Appeals from Inter Partes Trial Decisions: For decisions from invalidation trials or trials for invalidation of patent term extension, the losing party from the JPO trial (whether the original requester of the trial or the patentee) becomes the plaintiff. The winning party from the JPO trial becomes the defendant. The JPO itself is not a party to these inter partes appeal lawsuits.
  • Appeals from Post-Grant Opposition Decisions: If a patent is revoked in an opposition proceeding, only the patentee can appeal this revocation decision. The plaintiff is the patentee, and the defendant is the Director General of the JPO. The original opponent cannot appeal a JPO decision to maintain the patent; their recourse would be to file a separate invalidation trial if they have standing.

Time Limit for Filing:
The lawsuit must be filed with the IP High Court within a strict deadline, typically 30 days from the date of service of the certified copy of the JPO's trial/appeal decision (Article 178(3)). This period is extendable for parties residing overseas.

Scope of Judicial Review and Restrictions on New Arguments/Evidence:
The IP High Court reviews the JPO's decision for errors in the application of law or significant errors in fact-finding that affected the decision's outcome. A critical aspect of this review is the general restriction on introducing entirely new grounds for invalidity or patentability, or new pieces of prior art, that were not considered during the JPO trial/appeal proceedings. This principle was significantly shaped by the Supreme Court's Grand Bench decision on March 10, 1976 (often referred to as the Meriyasu Amiki Jiken or "Knitting Machine case"). The rationale is that the judicial review is primarily an assessment of the JPO's decision based on the record before it, not an entirely new proceeding.
However, this does not mean no new evidence is ever allowed. New evidence that serves to explain or elaborate on the arguments or prior art already considered by the JPO, or evidence that helps the court understand the technical context of the issues decided by the JPO, may be admissible. The Supreme Court, in a judgment on January 24, 1980 (the Shokuhin Hōsō Yōki Jiken or "Food Packaging Container case"), acknowledged that supplementary materials could be considered.

The Court's Judgment and Its Effect:
The IP High Court will issue a judgment that either:

  1. Dismisses the lawsuit: If it finds no reversible error in the JPO's decision, thereby upholding it.
  2. Rescinds (Cancels) the JPO's decision: If it finds that the JPO's decision was based on a significant error of law or fact.

Importantly, the IP High Court cannot substitute its own decision on the merits to, for example, directly grant a patent if it rescinds a JPO decision that had upheld a refusal, or directly invalidate a patent if it rescinds a JPO decision that had upheld validity.

If the court rescinds the JPO's decision, the case is usually remanded to the JPO for further proceedings (Patent Act, Article 181). The JPO's Trial and Appeal Board is then legally bound by the reasoning (binding force - kōsoku-ryoku) of the IP High Court's judgment with respect to the specific legal or factual errors identified by the court (Administrative Case Litigation Act, Article 33). The JPO must then re-adjudicate the matter consistent with the court's findings. The complexities surrounding the scope of this binding force, especially if new evidence is legitimately introduced upon remand, were explored in the Supreme Court's judgment of April 28, 1992 (the Kōsoku Senkai Shiki Bareru Kenma Hō Jiken or "High-Speed Centrifugal Barrel Finishing Method case").

Phase 3: Further Appeal to the Supreme Court of Japan

A party dissatisfied with the judgment of the IP High Court (acting as the court of first instance for these administrative appeals) has a final, though limited, avenue of appeal to the Supreme Court of Japan (jōkoku).

  • Grounds for Appeal: Direct appeal to the Supreme Court is typically restricted to very limited grounds, such as alleged constitutional violations or grave errors of law in the IP High Court's judgment that clearly affected its outcome (as per Article 312 of the Code of Civil Procedure, which is applied mutatis mutandis).
  • Petition for Acceptance of Appeal: More commonly, parties file a "petition for acceptance of appeal" (jōkoku juri mōshitate) under Article 318 of the Code of Civil Procedure. This is a discretionary review where the Supreme Court may choose to hear the case if it determines that the IP High Court's judgment involves an important question concerning the interpretation of law.

The Supreme Court's review is generally limited to questions of law; it does not re-examine the facts of the case.

Key Considerations for U.S. Companies

Navigating this multi-tiered appeal system requires careful strategy:

  1. Utilize Japanese Patent Counsel: Engaging experienced Japanese patent attorneys (benrishi) and potentially litigation counsel (bengoshi) is essential for both JPO internal appeals and any subsequent court proceedings.
  2. Strategic Amendments in JPO Appeals: The appeal against an examiner's rejection is often the last best chance to make significant amendments to secure allowance. This opportunity should be used wisely within the permissible limits.
  3. Build a Strong Record at the JPO: Given the restrictions on introducing entirely new issues or evidence before the IP High Court, it is crucial to develop a comprehensive record and present all relevant arguments and evidence during the JPO trial/appeal proceedings.
  4. Understand Deadlines: All appeal stages have strict, relatively short deadlines that must be meticulously observed.

Conclusion

Japan provides a structured pathway for challenging decisions made by JPO examiners and its Trial and Appeal Board. This begins with an internal administrative appeal against an examiner's final rejection, offering an opportunity for reconsideration and amendment. Unfavorable decisions from the JPO's Trial and Appeal Board (in various types of trials or oppositions) can then be subject to judicial review by the specialized IP High Court, with a final, albeit restricted, avenue to the Supreme Court. For U.S. companies and other applicants, a thorough understanding of these distinct appeal stages, their procedural requirements, and strategic implications is vital for effectively pursuing and defending patent rights in Japan.