How Do You File a "Suit to Rescind a Trial Decision" with the Japanese IP High Court?

Successfully initiating a "Suit to Rescind a Trial Decision" (shinketsu torikeshi soshō) in Japan—a legal action to challenge a final trial decision from the Japan Patent Office (JPO)—hinges on meticulous adherence to specific procedural requirements. These rules govern everything from the content and submission of the initial court filing to identifying the correct parties and meeting strict deadlines. This article provides a practical guide to navigating these critical first steps when bringing such a suit before the Japanese Intellectual Property (IP) High Court.

Q: What is the formal method for initiating a Suit to Rescind a Trial Decision?

A: Filing a Complaint (訴状の提出 - sojō no teishutsu)

The legal process to challenge a JPO trial decision in court commences with the filing of a formal written document known as a "complaint" (訴状 - sojō).

• Method of Filing: The suit is formally initiated by submitting this complaint to the competent court. This fundamental step is governed by Article 133, Paragraph 1 of the Code of Civil Procedure (CCP), as the specific IP laws and the Administrative Case Litigation Act (ACLA) do not provide alternative methods for the initiation itself.
• Language: All court documents in Japan, including the complaint, must be prepared and filed in the Japanese language. Any supporting documents in foreign languages typically require certified Japanese translations.
• Number of Copies: While specific court rules may have nuances, generally, an original complaint is submitted for the court, along with a sufficient number of copies for service on each defendant named in the suit.

Q: Where must the complaint be filed?

A: The Proper Venue: The Intellectual Property High Court (訴状の提出先 - sojō no teishutsu saki)

Choosing the correct court is paramount, as jurisdiction for these specialized suits is exclusive.

• Exclusive Jurisdiction: For Suits to Rescind JPO Trial Decisions (and certain other JPO decisions designated by law as appealable in the same manner), the Tokyo High Court holds exclusive first-instance jurisdiction. This means no other court in Japan can hear these cases at the initial stage.
• IP High Court as the De Facto Venue: The Act for Establishment of the Intellectual Property High Court created the IP High Court as a special branch of the Tokyo High Court specifically to handle IP-related matters. Consequently, all such complaints are filed directly with the dedicated court clerk's office (shōtei jimu-shitsu) of the IP High Court. The IP High Court maintains its own case numbering system distinct from the main Tokyo High Court.
• Distinction from Other IP Litigation: It's crucial to distinguish this from other types of IP litigation. For instance, IP infringement lawsuits are typically initiated in a District Court as the court of first instance. The Tokyo District Court and the Osaka District Court have specialized IP divisions and often handle a significant volume of such infringement cases, sometimes having exclusive or primary jurisdiction depending on the specific IP right involved. Suits to Rescind JPO Trial Decisions, however, bypass the District Court level entirely and go straight to the IP High Court.

Q: What essential information must be included in the complaint?

A: Mandatory Content of the Complaint (訴状の記載事項 - sojō no kisai jikō)

The complaint is a foundational document and must contain specific information as mandated by the Code of Civil Procedure (Article 133, Paragraph 2 ) and the Rules of Civil Procedure (Article 53 ).

• 1. Identification of Parties and Legal Representatives (当事者及び法定代理人 - tōjisha oyobi hōtei dairi-nin):
  • Plaintiff(s) (原告 - genkoku): The full, official name and address of the party filing the suit. If the plaintiff is a corporation, its registered official name, the address of its registered head office, and the name of its legal representative (e.g., Representative Director, President) must be stated.
  • Defendant(s) (被告 - hikoku):
    • For satei-kei (ex parte type) suits, such as those appealing a JPO trial decision that upheld an examiner's refusal of an application, the defendant is the Commissioner-General of the JPO (特許庁長官 - Tokkyochō Chōkan). The complaint should state the official title and the name of the individual currently holding that office (e.g., "Commissioner-General of the Japan Patent Office, [Name of current Commissioner]").
    • For tōjisha-kei (inter partes type) suits, such as those appealing a JPO trial decision in an invalidation trial or an opposition, the defendant is the adverse party from the JPO trial. This would be the original requester of the JPO trial (if the IP right holder is appealing) or the IP right holder (if the JPO trial requester is appealing). Their full name and address are required.
  • Legal Representatives: If parties are represented, the names of their attorneys-at-law (bengoshi) or patent attorneys (benrishi) acting as litigation representatives must be provided, along with their professional addresses (typically their law or patent firm address). This address is often designated as the official address for service of court documents (送達場所 - sōtatsu basho).
• 2. Purport of the Claim (請求の趣旨 - seikyū no shushi):
  • This section is a clear and concise statement of the specific judgment or relief the plaintiff is seeking from the court.
  • For a straightforward rescission of an entire JPO trial decision, an example would be: "The plaintiff seeks a judgment rescinding the trial decision rendered by the Japan Patent Office on [Date of trial decision] in JPO Trial No. [Official JPO Trial Number].".
  • If the plaintiff is challenging only a part of the JPO trial decision (e.g., where a patent invalidation trial decision invalidates some claims of a patent but upholds others, and the patentee appeals the invalidation of the specific claims), the purport must precisely identify the portion of the decision for which rescission is sought. For example: "The plaintiff seeks a judgment rescinding the part of the trial decision rendered by the Japan Patent Office on [Date] in JPO Trial No. [Number] that found Claim X of Patent No. YYYY to be invalid.".
  • It is customary to also include a request that the defendant bears the court costs, such as "The court costs shall be borne by the defendant" (訴訟費用は被告の負担とする - soshō hiyō wa hikoku no futan to suru). While the actual allocation of court costs is ultimately determined by the court at the conclusion of the case based on CCP Article 61 et seq., this request is a standard part of the purport.
• 3. Cause of Action (請求の原因 - seikyū no gen'in):
  • This section explains the basis for the plaintiff's claim. Under Article 53, Paragraph 1 of the Rules of Civil Procedure, it encompasses two key aspects:
    • Facts Necessary to Identify the Claim (請求を特定するのに必要な事実 - seikyū o tokutei suru no ni hitsuyō na jijitsu): This part precisely identifies the specific JPO trial decision being challenged. It must include details such as the JPO trial number, the date the trial decision was rendered, and the date its transcript was served on the plaintiff. This is crucial for defining the subject matter (soshōbutsu) of the lawsuit. Because the scope of judicial review in these suits is generally limited to the issues and evidence that were actually examined and decided by the JPO in the trial (a principle affirmed by the Supreme Court judgment of March 10, 1976, Minshū Vol. 30, No. 2, p. 79 ), clearly identifying the specific prior art references or legal/factual issues that were central to the JPO's trial decision is vital here. Often, the complaint will simply state "as per the attached copy of the JPO trial decision" (別紙審決謄本記載のとおり - besshi shinketsu tōhon kisai no tōri) and append the decision itself.
    • Facts Substantiating the Claim (請求を理由づける事実 - seikyū o riyūzukeru jijitsu): This is where the plaintiff outlines the substantive legal and factual grounds upon which they allege the JPO trial decision is unlawful and should, therefore, be rescinded by the court. This would involve specifying the alleged errors committed by the JPO trial examiners—for example, errors in their findings of fact, misinterpretation or misapplication of relevant IP law (e.g., concerning novelty, inventive step, similarity of marks), or significant procedural irregularities during the JPO trial that affected the outcome. While the complaint must state these grounds, the full and detailed argumentation, supported by evidence, is typically developed in subsequent written submissions to the court, known as preparatory briefs (準備書面 - junbi shomen). The initial statement in the complaint might be a summary, with an indication that further details will follow (e.g., "The reasons will be argued in preparatory documents to be submitted later.").
• 4. Value of the Subject Matter of the Suit and Amount of Stamp Duty (訴訟物の価額と貼用印紙額 - soshōbutsu no kagaku to chōyō inshi gaku):
  • Suits to Rescind JPO Trial Decisions are generally treated as claims where the economic value of the subject matter cannot be precisely calculated (non-pecuniary claims).
  • For the purpose of calculating the mandatory court filing fee (stamp duty), the Act on Costs of Civil Procedure, etc. (民事訴訟費用等に関する法律 - Minji Soshō Hiyōtō ni Kansuru Hōritsu) deems the value of such a suit to be ¥1,600,000 (this figure was current as of 2015, the publication date of the primary reference material for these posts, and may have been revised).
  • Based on this deemed value, the corresponding stamp duty payable at the time of filing the complaint for a first-instance suit was ¥13,000. This fee is typically paid by affixing physical revenue stamps (収入印紙 - shūnyū inshi) to the original copy of the complaint submitted to the court.

Q: Who has the legal standing to file (be a plaintiff) and be sued (be a defendant) in these suits?

A: Standing to Sue and Be Sued (当事者適格 - tōjisha tekikaku)

Having the correct parties is a fundamental requirement for any lawsuit.

• Plaintiff (原告適格 - genkoku tekikaku):
  • A Suit to Rescind a Trial Decision can only be filed by a person who has a direct legal interest that has been adversely affected by the JPO trial decision.
  • This generally means:
    • A party to the JPO trial (e.g., the applicant/patentee who is dissatisfied with a refusal or invalidation, or the requester of an invalidation trial whose request was denied).
    • A participant (参加人 - sankajin) in the JPO trial who has a legal interest in its outcome.
    • A person whose application to intervene as a participant in the JPO trial was rejected by the JPO.
  • These rules are stipulated in Article 178, Paragraph 2 of the Patent Act and corresponding articles in the Utility Model, Design, and Trademark Acts.
• Defendant (被告適格 - hikoku tekikaku): The correct defendant depends on the nature of the JPO trial that led to the challenged decision, as set out in Article 179 of the Patent Act and its equivalents.
  • In Satei-kei (ex parte type) suits: These are typically appeals from JPO trial decisions which reviewed an examiner's action on an application (e.g., an appeal against an examiner's final refusal of a patent application, or an appeal concerning a correction trial). In these cases, the defendant in the court action must be the Commissioner-General of the JPO.
  • In Tōjisha-kei (inter partes type) suits: These arise from JPO trials that involved a dispute between two opposing parties (e.g., patent invalidation trials, trademark non-use cancellation trials, or trials on the validity of patent term extensions). In the subsequent Suit to Rescind the Trial Decision, the defendant must be the adverse party from those JPO trial proceedings. For instance, if a patentee appeals a JPO trial decision that invalidated their patent, the defendant in court will be the party who successfully requested the invalidation at the JPO. Conversely, if a party who requested invalidation at the JPO is dissatisfied because the JPO upheld the patent, that party will sue the patentee.
  • Incorrectly naming the defendant can lead to the court dismissing the suit for lack of proper parties, so careful identification is essential.

Q: What is the deadline for filing the complaint?

A: Time Limit for Filing (出訴期間 - shusso kikan)

Japanese law imposes a very strict and relatively short deadline for initiating these suits.

• Strict 30-day Limit: A Suit to Rescind a JPO Trial Decision must be filed with the IP High Court within 30 days from the date on which the party (or its representative) was served with the official written transcript (謄本 - tōhon) of the JPO trial decision. This is stipulated by Article 178, Paragraph 3 of the Patent Act and equivalent provisions in the other major IP Acts.
• Immutable Period (不変期間 - fuhen kikan): This 30-day period is classified as an "immutable period". This means that, unlike ordinary procedural deadlines which a court might have discretion to extend, this period generally cannot be extended by the court itself, except under extremely limited circumstances (such as a natural disaster preventing access to the court) which are rarely applicable. If the complaint is not filed within this strict 30-day window, the suit will be dismissed as untimely, and the JPO trial decision will become final and unchallengeable in this manner. When calculating the 30 days, the day of service itself is typically not included (calculation starts from the following day).
• Additional Period for Overseas Parties (付加期間 - fuka kikan): Recognizing the practical difficulties for parties located in remote areas or overseas to meet such a short deadline, the law allows for an "additional period" to be granted. Article 178, Paragraph 5 of the Patent Act (and equivalents) empowers the Chief Trial Examiner at the JPO, when issuing the trial decision, to designate, ex officio, an additional period on top of the 30 days for parties who are based abroad or in areas with significant transportation challenges. This additional period is often set at 90 days for overseas parties. If such an additional period is formally granted and stated in the JPO trial decision documentation, the effective deadline for filing the suit with the IP High Court is extended by that amount.

Q: Are there special considerations for foreign corporations when filing or being named in such a suit?

A: Issues Concerning Foreign Corporations (外国法人の代表者記載と資格証明書 - gaikoku hōjin no daihyōsha kisai to shikaku shōmei-sho)

When a foreign corporation is a party to a Suit to Rescind a JPO Trial Decision, several specific procedural points related to its representation and legal capacity arise.

• Governing Law for Procedure: Even if a party is a foreign corporation, the procedural aspects of the lawsuit before the Japanese court are governed by Japanese law as the lex fori (law of the forum). This means the ACLA and the CCP will apply.
• Identification of the Legal Representative in the Complaint:
  • The complaint must correctly identify the legal representative of the foreign corporation. This is typically the individual who has the authority to legally bind the corporation in judicial proceedings according to the laws of the country/state where the corporation was established (lex incorporationis) —for example, its President, CEO, Managing Director, or equivalent. Their name should be stated.
  • If the foreign corporation has officially registered a representative in Japan under the Japanese Companies Act (e.g., a Japan branch manager with representative authority, as per Article 817 of the Companies Act ), this registered Japanese representative can be named, and their authority can be readily proven using Japanese commercial registration certificates (商業登記簿謄本 - shōgyō tōkibo tōhon). This can simplify matters considerably.
• Certificate of Qualification (資格証明書 - shikaku shōmei-sho):
  • The authority of the individual named in the complaint as the legal representative of the foreign corporation must be formally proven to the court. This is usually done by submitting a "certificate of qualification".
  • The nature of this certificate varies depending on the jurisdiction of incorporation. It could be an official certificate of corporate registration, an excerpt from a commercial register, a certificate of good standing, or a notarized document (such as a corporate resolution or power of attorney) that clearly shows the named individual's capacity and authority to represent the corporation in legal actions.
  • For example, for a U.S. corporation, this might involve a certificate issued by the Secretary of State of the state of incorporation, or a notarized certificate of incumbency or corporate resolution authorizing the representative. For a German company (AG or GmbH), an extract from the Commercial Register (Handelsregisterauszug) issued by the local court (Amtsgericht) or a notarial certificate based on it would be appropriate. For a UK company, documents from Companies House or a certificate from a Notary Public would be used.
  • This certificate must demonstrate that the person named as representative had the authority to act for the corporation at the time the suit was filed or, if representation is through a litigation agent like an attorney, that the person appointing the agent had such authority.
• Practical Handling and Potential Issues:
  • Obtaining the correct representative information and the necessary certificates, often requiring translation and notarization/apostille, can be time-consuming, especially given the short 30-day filing deadline.
  • While Japanese courts may sometimes show a degree of flexibility by allowing a complaint to be filed with provisional representative details, with formal certificates and any necessary amendments to the representative's name submitted shortly thereafter (a practice known as tsuinin or ratification), this is not a guaranteed indulgence. It's crucial to act swiftly.
  • Failure to correctly identify the legal representative in the complaint or to submit the required certificate of qualification in a timely manner can lead to significant procedural problems. The court may issue an order to rectify the defect (補正命令 - hosei meirei) within a certain period. If the defect is not cured, the complaint could be dismissed by a ruling of the presiding judge (訴状却下命令 - sojō kyakka meirei under CCP Article 137, Paragraph 2 ) or the suit itself could be dismissed as inadmissible by a judgment.

Q: What about rights held in co-ownership? Does this affect who must sue or be sued?

A: Co-owned Rights and Necessary Joinder (共有に係る権利の審決取消訴訟と固有必要的共同訴訟 - kyōyū ni kakaru kenri no shinketsu torikeshi soshō to koyū hitsuyō-teki kyōdō soshō)

When an IP right (like a patent) or an application for such a right is co-owned by multiple parties, specific rules apply regarding who must participate in a Suit to Rescind a JPO Trial Decision. This involves the procedural concept of "necessary joinder of parties" (hitsuyō-teki kyōdō soshō), where the outcome of the litigation must be legally uniform for all joint parties.

• Background at the JPO Trial Stage: It's important to note that even before reaching the court, the IP laws generally require co-owners to act jointly in JPO trial proceedings. For example, Article 132, Paragraph 2 of the Patent Act stipulates that if a trial is requested against co-owners of a patent right, all co-owners must be named as respondents. Similarly, Paragraph 3 states that if co-owners of a patent right or a right to obtain a patent request a trial concerning that co-owned right, all co-owners must jointly file the request. This establishes a form of mandatory joint participation (hitsuyō-teki kyōdō shinpan) at the JPO trial stage.
• Court Stage (Suit to Rescind Trial Decision): The rules for joinder in the subsequent court action depend on which party is appealing and the nature of the JPO trial decision:
  • Co-owners Appealing a JPO Trial Decision that Upheld an Examiner's Refusal (satei-kei suit): If co-owners had jointly filed an appeal at the JPO against an examiner's refusal of their application (e.g., for a patent), and the JPO trial decision upholds that refusal (i.e., is unfavorable to the co-owners), then any subsequent Suit to Rescind this unfavorable trial decision is considered an "indispensable necessary joint litigation" (koyū hitsuyō-teki kyōdō soshō). This means all co-owners must jointly file the suit as co-plaintiffs. The rationale is that the determination of whether the right should be granted or not is a single, indivisible issue that must be resolved uniformly for all co-owners. A leading Supreme Court case confirmed this for an appeal against a JPO trial decision that refused a utility model application (Supreme Court judgment, March 7, 1995, Minshū Vol. 49, No. 3, p. 944 ). The defendant in such a suit would be the Commissioner-General of the JPO.
  • A Co-owner Appealing a JPO Trial Decision that Invalidated their Co-owned Right (tōjisha-kei suit): If a JPO trial decision invalidates an IP right that is co-owned (e.g., a patent or trademark is declared invalid in an invalidation trial requested by a third party), then one of the co-owners can individually file a Suit to Rescind that invalidating trial decision. Such an action by a single co-owner is considered an "act of preservation" (hozon kōi) under Japanese civil law (Civil Code Article 252, proviso), aimed at preventing the loss or diminution of the co-owned property (the IP right). Therefore, it does not require all other co-owners to join as co-plaintiffs at the outset. This was established by Supreme Court judgments (e.g., Supreme Court judgment, February 22, 2002, Minshū Vol. 56, No. 2, p. 348, concerning a trademark; Supreme Court judgment, March 25, 2002, Minshū Vol. 56, No. 3, p. 574, concerning a patent cancellation decision in an opposition proceeding, which is analogous ). The defendant in such a suit would be the party who successfully sought invalidation at the JPO. If other co-owners later file separate suits challenging the same invalidating decision, these suits would likely be consolidated by the court and treated as a form of "similar necessary joint litigation" (ruiji hitsuyō-teki kyōdō soshō), where the outcome must still be uniform for all.
  • A Third Party Appealing a JPO Trial Decision that Upheld the Validity of a Co-owned Right (tōjisha-kei suit): Conversely, if a third party had requested an invalidation trial against a co-owned IP right, and the JPO trial decision dismisses that request, thereby upholding the validity of the co-owned right, and this third-party challenger then files a Suit to Rescind the JPO's favorable decision, the third party (as plaintiff) must name all of the co-owners of the IP right as joint defendants in the lawsuit. This is because the judgment sought by the plaintiff (i.e., overturning the JPO's decision and potentially leading to the invalidation of the right) would indivisibly affect the legal status of the IP right for all its co-owners.

Conclusion

Successfully launching a Suit to Rescind a JPO Trial Decision is not merely about disagreeing with the JPO's outcome; it demands strict compliance with a host of procedural prerequisites. From meticulously drafting the complaint with all mandatory information and filing it with the IP High Court, to correctly identifying all proper plaintiffs and defendants (especially in cases of co-ownership or foreign corporations), and, critically, adhering to the stringent 30-day statutory deadline, every step is vital. Overlooking any of these requirements can jeopardize the entire legal challenge before its substantive merits are even considered. Therefore, careful preparation and a thorough understanding of these procedural rules are indispensable for any party contemplating this avenue of judicial review in Japan's IP system.