What JPO Procedures Precede a Suit to Rescind a Trial Decision in Japanese IP?

A "Suit to Rescind a Trial Decision" (shinketsu torikeshi soshō) in Japan offers a judicial pathway to challenge a final administrative adjudication—a "trial decision" (shinketsu)—issued by the Japan Patent Office (JPO) concerning intellectual property rights. However, this lawsuit does not arise in a vacuum. It is the culmination of a sequence of intricate administrative procedures that take place entirely within the JPO. Understanding these foundational JPO procedures—namely, application, examination, and the JPO trial itself—is essential for anyone involved in obtaining, maintaining, or challenging IP rights in Japan, as they set the stage for any subsequent court action.

Q: What is the initial step to obtain an IP right that might eventually lead to a JPO trial and a subsequent rescission suit?

A: The Application and Examination Process (出願と審査 - shutsugan to shinsa)

The journey towards an IP right that might eventually be contested in a JPO trial and then a rescission suit begins with an application filed with the JPO, followed by an examination process. This is true for industrial property rights like patents, utility models, designs, and trademarks, which require an administrative act by the JPO for their formal establishment.

1. Filing an Application (出願 - shutsugan)

• Patents (特許 - tokkyo): An application for a patent is governed by Article 36 et seq. of the Patent Act. It must include a request, a description (meisaisho), a scope of patent claims (tokkyo seikyū no han'i), any necessary drawings, and an abstract. The claims are particularly crucial as they define the specific invention for which protection is sought, with each claim identifying all features the applicant deems necessary to specify that invention. This is analogous to claim drafting practices in jurisdictions like the United States.
• Utility Models (実用新案 - jitsuyō shin'an): These rights pertain to "devices" (kōan), defined as creations of technical ideas that utilize natural laws, often for more incremental innovations than patents. The application process is similar to that for patents, requiring a request, description, claims (jitsuyō shin'an tōroku seikyū no han'i), and drawings.
• Designs (意匠 - ishō): Design rights protect the shape, pattern, color, or their combination in an article, which creates an aesthetic impression through visual perception. The application includes drawings or photographs depicting the design, and a request that specifies the article to which the design pertains. Japan generally follows a "one design per application" principle (Article 7 of the Design Act).
• Trademarks (商標 - shōhyō): Trademark rights protect marks such as characters, figures, signs, three-dimensional shapes, colors, sounds, or their combinations, used to identify the source of goods or services. The application must include a representation of the trademark and a list of the designated goods and/or services for which protection is sought. Similar to designs, a "one trademark per application" principle generally applies (Article 6 of the Trademark Act).

2. Examination (審査 - shinsa) by the JPO

Once an application is filed and formal requirements are met, it proceeds to substantive examination (though, as noted below, utility models are an exception).

• Patents: JPO examiners review patent applications for requirements such as industrial applicability, novelty, and, critically, inventive step (non-obviousness) under Article 29 of the Patent Act. The standard for assessing inventive step is that of a "person skilled in the art" (tōgyōsha) in the relevant technical field. If the examiner finds grounds for refusal, they will issue a "Notification of Reasons for Refusal" (kyozetsu riyū tsūchi). This notification gives the applicant a specific period to submit a response, which may include arguments against the refusal and/or amendments to the claims or description. This opportunity to respond is a distinctive and important part of JPO practice. After considering the applicant's response, the examiner makes a final decision (satei): either a "Decision to Grant a Patent" (tokkyo satei) or a "Decision of Refusal" (kyozetsu satei). If a patent is granted, it comes into effect upon registration (settei tōroku).
  • A key principle in patent examination (and subsequent trials/litigation) is the "identification of the gist of the invention" (hatsumei no yōshi nintei). This is determined based on the description in the claims, with the detailed description of the invention being used for interpretation only in limited circumstances, such as ambiguity in the claims or clear clerical errors (as affirmed by the Supreme Court judgment of March 8, 1991, Minshū Vol. 45, No. 3, p. 123 – often referred to as the "Lipase case").
  • If an application contains multiple claims, the JPO examiner issues a single, indivisible decision covering the entire application. It is not possible to grant some claims while refusing others in the same initial decision (this is known as the "principle of indivisibility of the application" - shutsugan fukabun no gensoku, supported by the Supreme Court judgment of July 10, 2008, Minshū Vol. 62, No. 7, p. 1905).
  • Applicants can file "divisional applications" (bunkatsu shutsugan) under Article 44 of the Patent Act, effectively splitting off some claims from an original application into one or more new applications while retaining the original filing date, provided no new matter is introduced.
• Utility Models: A significant distinction for utility models is that, following amendments to the Utility Model Act in 1993, applications generally do not undergo substantive examination by the JPO for novelty or inventive step prior to registration (Article 14, Paragraph 2 of the Utility Model Act). Registration is typically granted if basic formality and unity requirements are met. The validity of a registered utility model can later be challenged by any party through an invalidation trial at the JPO. While substantive examination is bypassed, any person can request a "Utility Model Technical Opinion Report" (jitsuyō shin'an gijutsu hyōka-sho) from the JPO, which provides an assessment of prior art related to the registered utility model; however, this report is non-binding on the issue of validity.
• Designs: Examiners review design applications for substantive requirements, including novelty (Article 3, Paragraph 1 of the Design Act) and creativity/non-obviousness (Article 3, Paragraph 2), from the perspective of a person skilled in the art. The process shares similarities with patent examination, and a Notification of Reasons for Refusal may be issued if deficiencies are found. The examination concludes with either a "Decision to Register a Design" (ishō tōroku no satei) or a Decision of Refusal.
• Trademarks: Trademark examiners review applications for, among other things, distinctiveness (Article 3 of the Trademark Act – can the mark distinguish the applicant's goods/services?) and whether the mark falls into any categories of unregistrable trademarks (Article 4 of the Trademark Act – e.g., similarity to prior registered marks by others, likelihood of causing confusion with well-known marks, marks contrary to public order). The concept of "acquired distinctiveness" through use (Article 3, Paragraph 2 of the Trademark Act) can be a critical factor for marks that are initially descriptive. The similarity of trademarks is judged comprehensively based on their visual appearance, the concepts or ideas they evoke, and their pronunciation, all considered in light of the actual trading circumstances for the goods/services involved (a principle affirmed by the Supreme Court judgment of February 27, 1968, Minshū Vol. 22, No. 2, p. 399 – the "Hyōzan/Shōzan" case). As with patents and designs, a Notification of Reasons for Refusal may be issued, followed by a "Decision to Register a Trademark" (shōhyō tōroku no satei) or a Decision of Refusal.
• JPO Examination Standards (審査基準 - shinsa kijun): The JPO publishes detailed Examination Guidelines for patents, designs, and trademarks, as well as Examination Standards. While these documents provide significant guidance to examiners and are valuable resources for applicants, they are internal administrative guidelines and are not legally binding on subsequent JPO trial proceedings or, importantly, on the courts in a Suit to Rescind a Trial Decision.

Q: If an applicant or a third party is dissatisfied with an examiner's decision or the validity of a registered right, what is the next step within the JPO?

A: The JPO Trial System (審判 - shinpan)

Before a matter can be brought before the IP High Court, a party dissatisfied with certain JPO outcomes must typically exhaust the JPO's internal trial system. This trial system is a distinct, quasi-judicial administrative procedure.

1. Nature and Purpose of JPO Trials

• JPO trials are adjudicative proceedings conducted within the JPO by a panel of (usually three or five) experienced administrative judges known as trial examiners (shinpan-kan). Their purpose is to review certain decisions made by JPO examiners (e.g., refusals of applications) or to determine the validity of already registered IP rights (e.g., in an invalidation trial).
• These trials serve as an internal JPO appeal or a first-instance validity challenge mechanism before a dispute can escalate to judicial review by the courts. They are considered a form of administrative appeal (gyōsei fufuku mōshitate) but are highly specialized and possess many characteristics of judicial proceedings, hence the term "quasi-judicial."
• The general Administrative Appeal Act does not apply to matters that are subject to these specific JPO trial procedures, as the IP laws (Patent Act, etc.) provide a comprehensive and superseding trial framework. It is only the "trial decisions" (shinketsu) (or certain other "decisions" - kettei - that are legally treated like trial decisions for appeal purposes, such as decisions in opposition proceedings) emanating from these JPO trials that can become the subject of a Suit to Rescind a Trial Decision before the IP High Court.

2. Types of JPO Trials Relevant to Subsequent Rescission Suits

JPO trials can be broadly categorized, and the type of trial dictates the parties and often the defendant in a subsequent rescission suit:

• Ex Parte Type Trials (査定系審判 - satei-kei shinpan): These trials primarily involve the applicant (or IP right holder) on one side and the JPO (represented by its examination division's stance) on the other.
  • Appeal Trial against Examiner's Decision of Refusal (拒絶査定不服審判 - kyozetsu satei fufuku shinpan): This is filed by an applicant whose application for a patent, design, or trademark has been finally rejected by a JPO examiner. (Patent Act Art. 121, Design Act Art. 46, Trademark Act Art. 44 ). This is a very common path leading to a shinketsu.
  • Correction Trial (訂正審判 - teisei shinpan) (Patents only): This is filed by a patentee seeking to make corrections to the description, claims, or drawings of an already granted patent, typically to narrow the claims, clarify ambiguities, or correct errors. (Patent Act Art. 126).
  • Trial against Examiner's Decision to Reject an Amendment (補正却下決定不服審判 - hosei kyakka kettei fufuku shinpan): If an examiner rejects an amendment made by an applicant to a design or trademark application, the applicant can appeal this rejection. (Design Act Art. 47, Trademark Act Art. 45 ).
  • Opposition Proceedings (異議申立て - igi mōshitate) (Patents and Trademarks): While these result in a "decision" (kettei) rather than a "trial decision" (shinketsu), the procedural framework and subsequent appeal rights to the IP High Court are very similar to those for trials. After a patent is granted or a trademark is registered, third parties have a window of opportunity to file an opposition challenging its validity. If the JPO revokes the patent or trademark registration based on an opposition, the IP right holder can then file a suit in the IP High Court to rescind that revocation decision. (Patent Act Art. 113, Trademark Act Art. 43-2 ).
• Inter Partes Type Trials (当事者系審判 - tōjisha-kei shinpan): These trials involve a dispute between two or more distinct parties, such as the IP right holder and a party challenging the right.
  • Invalidation Trial (無効審判 - mukō shinpan): This can be filed by any "interested party" (or in some cases, only by a person entitled to the right) seeking to invalidate an existing patent, utility model registration, design registration, or trademark registration on various statutory grounds. (Patent Act Art. 123, Utility Model Act Art. 37, Design Act Art. 48, Trademark Act Art. 46 ). Trial decisions from invalidation trials are very frequently the subject of Suits to Rescind.
  • Trial for Invalidation of an Extension of the Term of a Patent Right (延長登録無効審判 - enchō tōroku mukō shinpan): Challenges the validity of a patent term extension granted, for example, for pharmaceutical patents to compensate for regulatory approval delays. (Patent Act Art. 125-2).
  • Trial for Rescission of a Trademark Registration due to Non-Use (不使用取消審判 - fushiyō torikeshi shinpan): Any person can request the cancellation of a trademark registration if the mark has not been used in Japan for a continuous period of three years or more for its designated goods or services. (Trademark Act Art. 50).

3. Key Procedural Aspects of JPO Trials

While specifics vary by trial type, some general procedural features include:

• Initiation: A trial is formally commenced by filing a "request for trial" (shinpan seikyū-sho) with the JPO. This document must identify the parties, the specific IP right or application involved, the purport of the request (what the requester wants the JPO to do), and detailed reasons for the request.
• Written Answer (tōbensho) and Rejoinder (benbaku-sho): In inter partes trials, the JPO serves a copy of the trial request on the respondent (e.g., the IP right holder in an invalidation trial). The respondent is then given a period to file a "written answer" (tōbensho) rebutting the claims. The requester (claimant) may subsequently be permitted to file a "rejoinder" (benbaku-sho) to the answer.
• Mode of Proceedings (shinri no hōshiki):
  • Inter partes trials like invalidation trials are, in principle, conducted through oral hearings (kōtō shinri), allowing parties to present arguments directly to the panel. However, the chief trial examiner can decide to proceed via written proceedings (shomen shinri) if deemed appropriate, or if requested by a party and approved.
  • Ex parte trials, such as appeals against an examiner's refusal, are primarily conducted through written proceedings based on the documents submitted. Oral hearings can be held if the chief trial examiner deems it necessary or upon a party's request.
• Scope of Trial Examination: The panel of trial examiners has the authority to examine grounds not explicitly raised by the parties (shokken shinri or examination ex officio), particularly if these grounds are relevant to the public interest aspect of IP rights (Patent Act Art. 153, Paragraph 1). However, the panel cannot rule on a request or a scope of claim that was not actually put forward by the requesting party (Patent Act Art. 153, Paragraph 3). If the trial examiners consider new grounds not raised by the parties, they must notify the parties and provide them with an opportunity to present their views on these new grounds (Patent Act Art. 153, Paragraph 2).
• Evidence: The JPO trial system includes detailed provisions for the submission and examination of evidence, such as documentary evidence (shoshō), witness examination (shōnin jinmon), and expert opinions. Many of these procedures are modeled on those in the Code of Civil Procedure. A notable difference from civil litigation is that admissions of fact (jijitsu no jihaku) made by a party during a JPO trial are not automatically binding on the trial examiners; the examiners must still satisfy themselves as to the facts. The JPO can also entrust a district court or summary court to conduct specific evidence-gathering procedures if necessary.
• Conclusion of Trial and the Trial Decision (shinketsu):
  • After all submissions are made and hearings (if any) are concluded, and the case is deemed ripe for decision, the trial proceedings are formally closed.
  • The panel of trial examiners then issues a formal, written trial decision, which must include the reasons for the decision. This decision is served on all parties involved in the trial.
  • Potential Outcomes:
    • In an appeal against an examiner's decision of refusal, the trial decision might rescind the examiner's refusal (in which case the application may be remanded for further examination, or the JPO trial panel might directly decide to grant the IP right) or it might uphold the examiner's refusal, stating that the "request is not well-grounded."
    • In an invalidation trial, the trial decision may invalidate the IP right (either in whole or in part, e.g., for specific claims of a patent) or it may dismiss the invalidation request, finding the "request not well-grounded" and upholding the validity of the right.
  • Effect of a Trial Decision: If a Suit to Rescind the Trial Decision is not filed with the IP High Court within the statutory period (typically 30 days from the date of service of the decision transcript, plus any additional period for overseas parties), the JPO trial decision becomes final and binding (kettei shinketsu no kakutei).
  • A final and binding JPO trial decision has an effect known as ichiji-fusaikō-kō (一事不再理効), which is similar to res judicata (Patent Act Article 167). This means that the same parties (and any participants in the trial) generally cannot request another JPO trial based on the "same facts and same evidence" that were, or could have been, considered in the concluded trial.

Q: How does the principle of "inherited illegality" work in this sequence?

A: Principle of Inherited Illegality (違法性の承継 - ihōsei no shōkei)

Understanding how flaws in earlier JPO stages can affect a later Suit to Rescind a Trial Decision involves the concept of "inherited illegality."

• As previously outlined, a party generally cannot directly file a lawsuit in court to challenge an examiner's initial decision (e.g., a Decision of Refusal for a patent application), which is considered the "original disposition" (gen shobun). The JPO's internal trial system must typically be exhausted first. The Suit to Rescind a Trial Decision specifically targets the JPO trial decision.
• However, if the original examiner's decision was based on an error (e.g., a misapplication of the law, a clear misinterpretation of prior art, or a significant procedural violation that led to an incorrect refusal), and the JPO trial subsequently upholds this flawed original decision (e.g., by dismissing an appeal against the refusal), then the illegality present in the original examiner's decision is considered to be "inherited" by the JPO trial decision.
• In such a scenario, when the court reviews the JPO trial decision in a Suit to Rescind, its examination of the trial decision's legality will inherently involve scrutinizing the correctness of the underlying examiner's decision that the trial affirmed. If the court finds that the JPO trial decision is unlawful, perhaps precisely because it wrongly upheld an original decision that was itself based on a significant legal or factual error, then the trial decision will be rescinded. This principle ensures that errors made at the examination stage, if not corrected during the JPO trial, can still be addressed by judicial review of the final JPO trial decision.

Conclusion

The JPO's internal procedures of application, examination, and trial constitute a critical administrative pathway that must be navigated before a dispute over a JPO trial decision can be brought before the Intellectual Property High Court in a Suit to Rescind a Trial Decision. A thorough understanding of these preliminary stages, the specific rules applicable to different types of intellectual property rights, the quasi-judicial nature of the JPO trial, and the content and effect of the JPO trial decision itself, is fundamental. These JPO procedures establish the factual and legal record that forms the basis for any subsequent judicial challenge, and the grounds for a rescission suit often relate directly to alleged errors or illegalities occurring within these earlier administrative phases.