My Patent Application Was Rejected in Japan! Understanding the Appeal Process

Japanese Attorney at Law - Bengoshi L.L.

• 11 min read

Receiving a "Decision of Rejection" (拒絶査定 - Kyozetsu Satei) from the Japan Patent Office (JPO) for your patent application can be a significant setback. However, it's crucial to understand that this is not necessarily the final word. Japanese patent law provides a robust mechanism for applicants to challenge an examiner's adverse decision: the Appeal Trial against an Examiner's Decision of Rejection (拒絶査定不服審判 - Kyozetsu Satei Fufuku Shinpan). This administrative trial offers a valuable opportunity for a fresh review by a panel of experienced administrative judges and potentially to overturn the rejection and secure your patent.

This article provides an in-depth guide to this appeal process, covering who can file, critical deadlines, the role of amendments, the unique "Examiner's Reconsideration Before Trial" system, and strategic considerations for applicants.

I. Understanding the Examiner's Decision of Rejection (拒絶査定)

A Decision of Rejection is a formal, written decision issued by a JPO examiner concluding that the patent application, in its current state, does not meet one or more of the statutory requirements for patentability. The decision will detail the specific grounds for rejection, referencing relevant articles of the Patent Act and any cited prior art.

Common grounds for rejection include, but are not limited to:

  • Lack of novelty (the invention was already publicly known).
  • Lack of inventive step (the invention would have been obvious to a person skilled in the art).
  • The claimed subject matter not constituting a statutory "invention" (e.g., being a mere scientific discovery or abstract idea).
  • Lack of industrial applicability.
  • Deficiencies in the specification or claims, such as:
    • Insufficient disclosure (failure to enable a person skilled in the art to carry out the invention).
    • Claims not being adequately supported by the description in the specification.
    • Claims being unclear or not concise.
    • Introduction of "new matter" in amendments made during prosecution.

The certified copy of this decision is officially served on the applicant (or their registered Japanese representative), and this date of service is critical as it starts the clock for filing an appeal.

II. Initiating an Appeal Trial against an Examiner's Decision of Rejection (Article 121, Patent Act)

If an applicant disagrees with the examiner's Decision of Rejection, they can initiate an appeal trial.

A. Who Can File the Appeal?

  • The Applicant: The primary party entitled to file an appeal is the applicant who received the Decision of Rejection.
  • Co-applicants: If the patent application is jointly owned by multiple applicants, the appeal must be filed by all co-applicants jointly (Article 132(3) of the Patent Act). This ensures that decisions regarding the commonly owned application are made collectively.
  • Successors in Title: If the application has been assigned after the rejection but before the appeal deadline, the successor in title (the new applicant) can generally file the appeal, provided the assignment is properly recorded with the JPO. The PDF mentions a Tokyo High Court case (December 24, 1985) supporting this for successors to the "right to obtain a patent," emphasizing the need for proper registration of the transfer of rights.

B. The Crucial Time Limit for Filing (Article 121(1))

The request for an appeal trial must typically be filed within three months from the date on which the certified copy of the Decision of Rejection was served on the applicant.

  • For Overseas Residents: While the statutory period is three months, there are often provisions that effectively extend this for applicants residing overseas. For instance, an additional month is often granted by JPO operational practice, or specific extensions of time can be requested (usually requiring payment of a fee). It's crucial for foreign applicants to confirm the exact applicable deadline and extension possibilities with their Japanese patent attorney.
  • Strict Deadline: This is a critical deadline. Failure to file the appeal request within the prescribed (and any extended) period will result in the examiner's Decision of Rejection becoming final and binding, meaning the application is definitively abandoned.

C. Filing the Request for Appeal

The appeal is initiated by submitting a formal "Request for Appeal Trial" (審判請求書 - shinpan seikyūsho) to the JPO. This document must clearly identify the application, the decision being appealed, and importantly, state the grounds for dissatisfaction with the examiner's decision. An official fee is also payable at the time of filing the appeal request.

III. The Strategic Option: Filing Amendments with the Appeal Request (Article 17-2)

A unique and strategically vital aspect of the Japanese appeal process is the applicant's ability to file amendments to the specification, claims, or drawings at the same time as filing the Request for Appeal Trial (Article 17-2(1)(iv)).

A. Purpose of Concurrent Amendments

This provision allows the applicant one more significant opportunity to try and overcome the examiner's rejections by modifying the application. Often, the appeal is not just about arguing that the examiner erred, but also about presenting the invention in a revised form that might be patentable.

B. Limitations on Amendments at This Stage

While this is a valuable opportunity, the amendments filed with the appeal request are subject to the same strict limitations that apply to amendments made after a final Notice of Reasons for Rejection during examination. These typically include:

  • No New Matter: The amendments must not introduce subject matter that goes beyond the scope of the disclosure contained in the application as originally filed (Article 17-2(3)). This is a fundamental principle.
  • Permissible Purposes for Claim Amendments (Article 17-2(5)): Amendments to the claims are generally restricted to purposes such as:
    • Deletion of a claim or claims.
    • Restriction of the scope of a claim (e.g., by adding further limitations).
    • Correction of errors (typographical or obvious mistakes).
    • Clarification of ambiguous statements (provided it does not substantially change the invention or broaden the claims).
  • Independent Patentability of Amended Claims (Article 17-2(6)): If a claim is amended, the invention defined by the amended claim must itself be patentable (i.e., meet novelty, inventive step, etc., requirements as if it were a new application).
  • No Shift to a Different Invention (Article 17-2(4)): The amendments must not effectively change the invention to one that lacks unity with the invention as it stood before amendment (unless unity was already an issue).

Drafting effective amendments at this stage requires careful consideration of the examiner's reasoning and these legal constraints.

IV. Examiner's Reconsideration Before Trial (前置審査 - Zenchi Shinsa) (Articles 162-164)

A distinctive feature of the Japanese system is the "Examiner's Reconsideration Before Trial" (前置審査 - Zenchi Shinsa, literally "pre-trial examination").

A. Mandatory Re-examination if Amendments are Filed

If the applicant files amendments to the specification, claims, or drawings concurrently with the request for an appeal trial, the JPO Commissioner must direct an examiner (usually the same examiner who issued the rejection, or another examiner if the original one is unavailable) to reconsider the application in light of these amendments before the case formally proceeds to the appeal board (Article 162). This system is automatically triggered by the filing of amendments with the appeal.

B. Purpose of Zenchi Shinsa

The primary goal of Zenchi Shinsa is to promote efficiency. If the filed amendments clearly resolve all the outstanding issues raised by the examiner, it allows the patent to be granted quickly without the need for a full appeal board proceeding, thus saving time and resources for both the applicant and the JPO.

C. Possible Outcomes of Zenchi Shinsa

  1. Rejection Overcome → Decision to Grant Patent (Article 163(1) if original rejection was for non-final office action context, but effectively leads to grant):
    If the examiner, upon reviewing the amended application, finds that all previously cited grounds for rejection have been overcome and no new grounds for rejection arise, they will issue a Decision to Grant a Patent (特許査定 - Tokkyo Satei). In this scenario, the appeal trial is effectively terminated because its objective (to secure a patent) has been achieved.
  2. Rejection(s) Not Overcome or Amendment Improper → Report to Commissioner (Article 164(3)):
    If the examiner concludes that the amendments do not overcome the original grounds for rejection, or if the amendments themselves are improper (e.g., add new matter), the examiner does not issue another Decision of Rejection. Instead, they prepare a report detailing their findings and submit it to the JPO Commissioner. The application then formally proceeds to the appeal board for the scheduled trial.
  3. New Grounds for Rejection Found in Amended Application (Article 163(2)):
    If the amendments filed with the appeal request, while perhaps addressing the original rejections, introduce new issues that lead to new grounds for rejection, the examiner is obligated to issue a new Notice of Reasons for Rejection to the applicant. This notice will detail these new grounds. The applicant is then given another opportunity to submit arguments and/or further (very limited) amendments directly to the examiner. If these new rejections cannot be overcome at this stage, the examiner will then report to the Commissioner, and the case will proceed to the appeal board, which will consider all unresolved issues. This procedure ensures procedural fairness, preventing the applicant from being blindsided by new rejection grounds at the appeal board stage without a prior chance to respond to the examiner. This addresses concerns highlighted in cases like the Reverse Washing Transmission Mechanism Case (IP High Court, October 4, 2011), where dismissing an amendment at the appeal stage without giving proper notice of reasons for rejection based on the amended claims was found to be a procedural violation.

V. The Appeal Trial Proceedings (審理 - Shinri) Before the Appeal Board

If the Zenchi Shinsa does not result in a patent grant, the case moves to the appeal board (審判廷 - shinpan-tei) for a formal trial.

A. Composition of the Appeal Board

The appeal trial is conducted by a panel of administrative judges (審判官 - shinpan-kan). Typically, this panel consists of three judges, though for particularly complex or important cases, a five-judge panel may be convened (Article 136(1)). These judges are experienced JPO officials, often with backgrounds as senior examiners and strong technical and legal expertise.

B. Nature of the Proceedings

  • Continuation of Examination (Article 158): The appeal trial is considered an extension or continuation of the examination process. The entire file history from the initial examination, including all prior art cited and arguments made, is before the appeal board.
  • Primarily Written Proceedings: While oral hearings (口頭審理 - kōtō shinri) are possible if deemed necessary by the board or requested by the applicant (Article 145), many appeal trials against rejection are conducted primarily on the basis of written submissions: the applicant's appeal brief, the examiner's statement of reasons for rejection (if prepared and transmitted to the board), and any further arguments or evidence filed by the applicant in response to board actions.
  • Panel Deliberation: The judges deliberate on the case based on all evidence and arguments.

C. Scope of Review by the Appeal Board

A critical aspect of these appeal trials is that the appeal board's review is not limited to the specific grounds for rejection articulated by the examiner in the final Decision of Rejection.

  • De Novo Review: The board can conduct a comprehensive, de novo review of the application for any and all potential grounds of rejection. This means they can identify new prior art or raise new objections that the original examiner did not.
  • Notification of New Grounds (Article 159(2) citing Article 50): If the appeal board finds new grounds for rejection not previously notified by the examiner, it must issue its own Notice of Reasons for Rejection to the applicant. This notice will explain the new grounds and provide the applicant with an opportunity to submit arguments and/or propose amendments to address these new objections before the board makes its final decision. This ensures the applicant is not unfairly surprised.

D. Handling of Amendments Filed with the Appeal

If amendments were filed with the appeal request and the case has proceeded to the appeal board (i.e., Zenchi Shinsa did not result in a grant), the board will first consider the allowability of these amendments under the relevant provisions (e.g., Article 17-2).

  • If the amendments are found to be improper (e.g., adding new matter, unduly broadening claims), the board may issue a decision dismissing the amendments (補正却下決定 - hosei kyakka kettei) (Article 159(1) citing Article 53). The trial would then typically proceed based on the specification and claims as they stood before the rejected amendments.
  • If the amendments are deemed allowable, the trial proceeds with the assessment of patentability of the amended application.

VI. The Appeal Trial Decision (審決 - Shinketsu)

After due consideration, the appeal board will issue a formal written trial decision (審決 - shinketsu).

A. Decision to Grant a Patent (特許すべき旨の審決 - Tokkyo subeki Mune no Shinketsu)

If the appeal board concludes that the examiner's Decision of Rejection was incorrect and that the application (either as originally filed, or as validly amended during the appeal process) meets all requirements for patentability, it will issue a trial decision revoking the examiner's rejection and stating that a patent should be granted (Article 159(3) citing Article 51). This is often referred to as a "Patent Grant Trial Decision."

  • Remand to Examiner (差戻し - Sashimodoshi) (Article 160): In very rare circumstances, instead of directly granting the patent, the appeal board may issue a trial decision to remand the case to the examiner for further examination (Article 160(1)). This might occur if, for example, entirely new and extensive prior art searches are deemed necessary, or if the amendments are so substantial that re-examination by the examiner is more appropriate. If a case is remanded, any findings or conclusions in the appeal board's decision are binding on the examiner in the subsequent examination (Article 160(2)).

B. Decision Upholding Rejection (拒絶審決 - Kyozetsu Shinketsu)

If the appeal board concurs with the examiner's reasons for rejection, or if it finds its own grounds for rejection that the applicant has failed to overcome, it will issue a trial decision dismissing the appeal and upholding the rejection of the application (often simply referred to as a "Rejection Trial Decision") (Article 157).

C. Handling of Multiple Claims

It's important to remember that if a patent application contains multiple claims, and the appeal board finds that even a single claim is unpatentable and cannot be rectified by allowable amendment or deletion, the appeal concerning the entire application will generally be rejected (unless the unpatentable claims are successfully cancelled or amended to be patentable).

VII. Strategic Considerations for Applicants

Facing a Decision of Rejection requires careful strategic thinking:

  • Thoroughly Analyze the Examiner's Rejection: Understand the precise legal and technical basis for each objection raised by the examiner. Identify any misunderstandings of the invention or misapplication of the law.
  • Evaluate the Merits of an Appeal: Objectively assess the strength of potential counter-arguments and the likelihood of success on appeal. Consider the commercial importance of the invention.
  • Strategic Amendments: The amendments filed with the appeal request are often the applicant's last best chance to substantively modify the claims. They should be crafted to directly address all cited rejections without introducing new matter or violating other amendment rules. Consider various fallback positions through a well-structured set of claims.
  • Utilize Zenchi Shinsa Effectively: If amendments are filed, aim for them to be clear and persuasive enough for the examiner to allow the application during the reconsideration phase, avoiding the need for a full appeal board hearing.
  • Consider Divisional Applications: If the original application contains multiple distinct inventions or if certain claims face intractable rejections while others might be allowable, filing one or more divisional applications before or concurrently with the appeal can be a prudent strategy to pursue protection for the allowable subject matter separately.
  • Interviews: Do not overlook the potential value of an interview with the examiner (during Zenchi Shinsa) or even with the appeal board (if an oral hearing is scheduled or can be requested) to clarify complex points.
  • Further Appeal to Court: If the Appeal Trial against an Examiner's Decision of Rejection also results in an unfavorable decision (i.e., a Kyozetsu Shinketsu), the applicant has the right to further appeal this trial decision to the Intellectual Property High Court of Japan.

Conclusion

Receiving an initial Decision of Rejection from the JPO, while disheartening, is a common occurrence in patent prosecution and does not necessarily signify the end of the pursuit for patent protection in Japan. The Appeal Trial against an Examiner's Decision of Rejection, coupled with the unique Examiner's Reconsideration Before Trial (Zenchi Shinsa) system, provides a structured and fair process for applicants to seek a second opinion and to present their case, often with amendments, to a panel of senior administrative judges. Success in this appellate stage hinges on a meticulous understanding of the examiner's objections, the strategic use of arguments and amendments within the confines of Japanese patent law, and a comprehensive appreciation of JPO appeal board practices. For many inventions, this appeal process is a critical pathway to ultimately securing valuable patent rights.