An International Guide to
Patent Case Management for Judges

7.2 The Japan Patent Office and administrative review proceedings

7.2.1 The Japan Patent Office

The JPO is the administrative agency of the Government of Japan responsible for the administration of industrial property laws, including the Patent Act. It is headed by a commissioner and includes examination departments, which examine patent applications,²¹ and a TAD, which conducts trial and appeal processes related to the validity and scope of granted patents.²²

The JPO is one of the world’s largest patent offices. In terms of a global comparison, the JPO generally receives the third-highest number of patent applications per year, behind the China National Intellectual Property Administration and the United States Patent and Trademark Office.²³ It also cooperates with other countries on the protection and exploitation of IP rights. For example, in 2021, the JPO issued 48,502 international search reports under the PCT as an international searching authority and 1,562 international preliminary examination reports as an international preliminary examining authority.²⁴

7.2.2 Examiners and the examination of patent applications

The JPO’s examination departments are organized into four technical fields: physics, optics and social infrastructure; mechanical technology; chemistry, life science and material science; and electronic technology.²⁵ JPO examiners are experts in technology and patent law, and are responsible for the examination of patent applications to ensure compliance with the requirements set out in the Patent Act.

Examinations are conducted in accordance with the Examination Guidelines for Patent and Utility Model in Japan (“Examination Guidelines”).²⁶ The Examination Guidelines are prepared by the JPO to help ensure consistent decisions and transparent processes and to address a range of matters, including the principles and procedures of examination, the requirements for patentability, descriptions and claims, priority, applications written in foreign languages, and the extension of the patent term. An English version of the Examination Guidelines is available on the JPO’s website.

An examiner must refuse a patent application if it does not comply with the requirements set out in the Patent Act. However, before reaching that decision, an examiner must notify the applicant of the grounds for refusing the application and give them an opportunity to submit a written opinion within a specified period of time.²⁷

7.2.3 The Trial and Appeal department

The TAD of the JPO is comprised of 38 boards arranged across technical fields. Of these, 33 boards oversee patents and utility models.²⁸ The remaining boards are the design board and four trademark boards.²⁹ The TAD has two important roles:

• to consider appeals against a JPO examiner’s decision as an internal review; and
• the resolution of disputes concerning the grant of IP rights.

7.2.3.1 Appeals against examiner decisions

This role of the TAD in appeals involves determining whether an examination conducted by the JPO’s examination department was appropriate and ensuring the accuracy of the granted patent right. In particular, the TAD examines demandant appeals against an examiner’s decision of refusal (sometimes referred to as a “decision of rejection”).³⁰ Appeals against an examiner’s decision of refusal play an important role in ensuring the appropriate examination of patent applications.

The TAD is also responsible for examining oppositions to the grant of a patent. A third party may file an opposition to a patent within six months from the publication date of a gazette containing the patent.³¹ Oppositions to the grant of a patent help ensure the accuracy of a patent right.³²

7.2.3.2 Resolution of disputes

The TAD’s dispute resolution role includes:

• determining the validity of patent rights (trials for invalidation);
• correcting the scope of patent claims (trials for correction); and
• providing an official advisory opinion in relation to the technical scope of a patented invention (Hantei (advisory opinion)).

In a trial for invalidation, an interested person in relation to a granted patent files a request with the JPO for a trial decision that the patent is invalid, indicating the reasons why the patent should be invalidated.³³ A trial for invalidation is a means of invalidating a patent that should not have been granted and deeming that it never existed.³⁴

In a trial for correction, a patentee files a request with the JPO to correct the scope of patent claims.³⁵ However, a request for a trial for correction cannot be filed in the period between when an invalidation trial has become pending at the JPO and the time when the trial decision has become final and binding. Instead, a request for correction may only be filed at a prescribed time within this period.³⁶

In Hantei, at the request of a party, the TAD delivers and then publishes an official advisory opinion with respect to the technical scope of a patented invention.³⁷

The TAD conducts proceedings for appeals against an examiner’s decision of refusal, oppositions to the grant of patents, trials for invalidation, trials for correction and Hantei in accordance with the Manual for Trial and Appeal Proceedings (“Manual for Proceedings”), the Examination Guidelines, court decisions and other trial and appeal decisions.

7.2.3.3 Administrative patent judges, executive advisors and consultants

TAD proceedings are conducted by administrative patent judges who have a technical background. They are experts in particular technologies and are required to have more than 10 years of experience in patent examination. As of June 2021, there were approximately 380 administrative patent judges.

Administrative patent judges are able to hear explanations of technical matters directly from inventors in oral proceedings or via oral inquiries and interviews. Administrative patent judges who are experts in a relevant specialized field may also be appointed to a panel in cases that involve complex technologies.

Administrative patent judges are provided legal support by part-time executive advisors on trials and appeals, who have experience as judges and lawyers, and full-time consultants on trial decisions and court judgments, who consult with administrative patent judges in relation to individual cases.

7.2.3.4 Appeal of Trial and Appeal department decisions to the Intellectual Property High Court

Persons may file a revocation action (an administrative lawsuit) with the IP High Court against the following TAD decisions: an appeal decision to refuse an invention in an appeal against an examiner’s decision of refusal; a decision to revoke a patent in an opposition to the grant of a patent; or a trial decision in either a trial for invalidation or a trial for correction. The IP High Court’s exclusive jurisdiction in relation to these lawsuits and its key personnel are discussed in Section 7.4.

7.2.4 Patent validity and scope: the Japan Patent Office’s trial and appeal system

This section outlines the trial and appeal system administered by the TAD of the JPO. This section first sets out some features that are common to JPO trial and appeal processes concerning patents. It then describes the following processes that relate to patent validity and scope: appeals against an examiner’s decision of refusal, oppositions to the grant of a patent, trials for invalidation and trials for correction.³⁸ The Hantei (infringement advisory opinion) system is also described.

7.2.4.1 Common features of the Japan Patent Office’s trial and appeal processes

JPO examiners are responsible for the examination of patent applications to ensure compliance with the requirements set out in the Patent Act. Examinations are conducted in accordance with the Examination Guidelines.³⁹

The TAD of the JPO conducts a number of trials and appeals. Panels of administrative patent judges may examine appeals against an examiner’s decision to refuse a patent application, as well as oppositions to the grant of a patent. They also conduct trial proceedings, including trials for correction of the scope of patent claims and trials for invalidation to determine the validity of patent rights. On request, the TAD may also provide Hantei, a nonbinding official infringement advisory opinion in relation to the technical scope of a patented invention.⁴⁰

7.2.4.1.1 Formality check

When demandants file a request for a trial or an appeal with the TAD of the JPO, trial clerks will first conduct a formality check to assess, for example, whether the purpose of and reason for the request is stated, whether the fees have been paid and whether the necessary documents, such as a power of attorney, are attached. After completing a formality check, the trial clerks will send the requested cases to the specialized TAD board in charge of the proceedings.⁴¹

7.2.4.1.2 Panels of administrative patent judges and ex officio proceedings

Appeals and trials are conducted by a panel consisting of three or five administrative patent judges.⁴² Ex officio proceedings allow a panel to investigate facts and examine evidence on its own authority.⁴³

7.2.4.1.3 The Manual for Trial and Appeal Proceedings

Administrative patent judges conduct trial and appeal proceedings in accordance with the procedures set out in the Manual for Proceedings, as well as the Examination Guidelines, court decisions and other trial and appeal decisions.

The JPO prepares and publishes the Manual for Proceedings to ensure:

• a uniform understanding within the TAD of the purpose of laws and regulations and their interpretation in court decisions and other trial and appeal decisions;
• consistent and transparent trial and appeal procedures and decisions; and
• fair and accurate trial and appeal decisions.

An English version of parts of the Manual for Proceedings is available on the JPO’s website.⁴⁴

7.2.4.1.4 Evidence

Parties may submit evidence to the JPO up until the conclusion of a trial or appeal process. Where there is evidence, the parties must state the means of proof in a written request for trial or appeal or a written reply and attach the evidence. When submitting evidence, the evidence and its relationship with the facts to be proved must be identified in writing.

Documentary evidence – including patent gazettes, books, magazines, academic journals, catalogs, blueprints, order forms and delivery slips – is usually submitted as a means of proof. When submitting a document prepared in a foreign language, the parties must attach a translation of the text of the part to be examined.

The examination of witnesses is possible in a trial for invalidation. Evidence may be obtained by hearing expert opinion and inspecting evidence, applying the rules of civil procedure. Panels of administrative patent judges may also examine a witness via videoconference.

A panel may preserve evidence in accordance with the rules of civil procedure if it finds that it will be difficult to use the evidence unless the examination of evidence is conducted in advance.⁴⁵

7.2.4.1.5 Claim construction

A panel must specify the claimed invention based on the description of the claims. The panel construes the claims by referring to the description, drawings and common general knowledge in the technical field of the claimed invention at the time of filing. Even if the invention specified in the description of the claims and the invention described in the description or drawings do not correspond, the panel must not specify the claimed invention based only on the latter: the matters described in the claims must always be taken into consideration.⁴⁶

7.2.4.2 Appeal against an examiner’s decision of refusal

An applicant who is dissatisfied with a JPO examiner’s decision of refusal (sometimes referred to as a “decision of rejection”) may file a request for appeal against the decision within three months (four months for a party residing outside of Japan) from the date on which a certified copy of the examiner’s decision was served.⁴⁷

If a person has been unable to file an appeal against refusal within the prescribed period due to reasons beyond the person’s control, they may file an appeal within 14 days (or within two months, if the person is an overseas resident) after the date on which those reasons cease to exist but no later than six months after the end of that period.⁴⁸

An appeal against an examiner’s decision of refusal is an ex parte appeal initiated by an appellant (a demandant) against the JPO. It is conducted by a panel of administrative patent judges as documentary proceedings.⁴⁹ If a panel determines that the decision was inappropriate, it may conduct an ex officio investigation to determine whether there are other reasons for refusal.⁵⁰ If the examiner’s decision is affirmed, the appellant may file an action with the IP High Court to revoke the appeal decision.⁵¹ Figure 7.2 summarizes this process.

Source: Adapted from TAD, Handbook, at 6.

In 2021, the JPO received 16,894 requests for an appeal against an examiner’s decision of refusal. The JPO has reported that the rate of successful appeals resulting in the grant of a patent has increased since 2012, reaching 77 percent in 2021.⁵²

7.2.4.3 Opposition to the grant of a patent

Any person may file an opposition to the grant of a patent with the JPO. Oppositions do not require any “interest” on the part of the demandant.⁵³ However, anonymous patent oppositions are not possible.⁵⁴

Opposition to the grant of a patent may be made on a number of grounds, including, for example, that the patent claims an invention that falls under prior art within Japan or a foreign country at the time of the patent application’s filing.⁵⁵

An opposition must be filed no later than six months from the publication of a gazette containing the patent. If a patent has two or more claims, an opposition to a granted patent may be filed for each claim.⁵⁶

The opposition to the grant of a patent process may be conducted by a panel consisting of three or five administrative patent judges (see Figure 7.3). However, it is usually conducted by a panel consisting of three administrative patent judges as documentary proceedings.⁵⁷

Source: Adapted from TAD, JPO (2020), at 8.

This process is conducted between the JPO and a patentee.⁵⁸ The JPO has noted that this is to ease any procedural burden on demandants, making it easier for them to use the process.⁵⁹ A demandant is entitled to express their opinion if requested by the JPO and may submit a written opinion if the patentee files a request for correction.⁶⁰

A panel will examine only the claims to which an opposition to the granted patent is filed and will conduct the examination on the basis of the reasons and evidence pleaded by the demandant.⁶¹ However, the panel may examine reasons that have not been pleaded in ex officio proceedings.⁶² A decision to invoke ex officio proceedings must take into consideration the public interest, the purpose of the process, any delay in the proceedings, and a possible accurate determination as a result of the ex officio examination of the evidence.⁶³

A panel must make a ruling that a patent is to be revoked if the grounds for opposition of the grant of the patent are established. A patent right is deemed never to have existed once a revocation decision becomes final and binding.⁶⁴ If a panel intends to render a revocation decision, the judge must notify the patentee and any intervenors of the grounds and provide them an opportunity to submit a written opinion within a reasonable specified period of time. The patentee may file a request for a correction of the description, claims or drawings attached to the written application only within this period.⁶⁵

If a panel decides to revoke a patent, the patentee may file an action to revoke that decision with the IP High Court, naming the Commissioner of the JPO as a defendant. However, if the administrative patent judges make a decision to maintain the patent, the decision becomes final and binding upon service of a certified copy of the decision, and the parties who filed the opposition may not file a revocation action against the decision.⁶⁶

The number of requests for oppositions to the grant of a patent increased between 2015 (264 requests) and 2017 (1,251 requests). The number slightly decreased between 2018 (1,075 requests) and 2020 (1,029 requests), but increased again in 2021 (1,260 requests).⁶⁷ The JPO has reported that, out of the 4,977 opposition cases decided between April 2015 and December 2018, 32.3 percent of patents were maintained without corrections, 45.3 percent were maintained with corrections, and 10.2 percent were revoked.⁶⁸

7.2.4.4 Trial for correction

A patentee may file a request for a trial for correction to correct the claims, description or drawings of the patent.⁶⁹ Trials for correction are ex parte proceedings conducted by a panel of administrative patent judges as documentary proceedings (see Figure 7.4).

Source: Adapted from TAD, Handbook, at 13.

A trial for correction allows a patentee to voluntarily correct the claims, description or drawings attached to an application. A correction is usually requested as a preventive measure to guard the patent against a trial for invalidation when a patent is partially defective or to preclude a dispute by clarifying an ambiguous part within the patent.

A request for correction in a trial for invalidation or in an opposition to the grant of a patent allows the correction of claims or drawings as a patentee’s means of defending the validity of the patent during such proceedings.⁷⁰

Article 126(1) of the Patent Act provides that the corrections that may be requested in a trial for correction are limited to the following: a restriction of the claims, correction of errors or mistranslations, clarification of any ambiguous statement, or rewriting a claim that cites the preceding claim so that it does not cite the preceding claim.⁷¹

A request for a correction trial may not be filed between the time that a trial for invalidation or an opposition to the grant of a patent is pending before the JPO and the time that the ruling on the trial or opposition becomes final and binding.⁷² However, a request for correction may be filed at a prescribed time during this period.⁷³

A request for a trial for correction may be filed even after the forfeiture of the patent right. However, this does not apply after a patent has been revoked by a revocation decision or invalidated by a trial for invalidation.⁷⁴

Where a request for a trial for correction does not correspond to one of the purposes in Article 126(1) of the Patent Act or does not comply with other requirements, the chief administrative patent judge must notify the patentee of these reasons and provide the patentee an opportunity to submit a written opinion by designating an adequate time limit.⁷⁵

Where a written opinion has not been submitted within a designated time limit, or a written opinion has been submitted but not adopted, a notice of the conclusion of proceedings is issued, and a trial decision of disapproval (in some cases, partial approval) of the request must be made.⁷⁶

Where the purpose of the request described in a written request for trial has been amended in response to the notice of reasons for rejecting a request for correction, and the gist of the written request has not been changed by the amendment, the amended purpose of the request will be further examined. Where the gist of the written request has changed as a result of the amendment, the amendment will not be adopted, and a trial decision will be made by issuing a notice of the conclusion of proceedings. In this case, the reasons for the trial decision must contain the refusal of the amendment and reasons.⁷⁷

If a decision is made to allow a correction (either as a result of a trial or a request for correction) and that decision has become final and binding, the following are deemed to have been made based on the corrected claims, descriptions or drawings with retroactive effect: the filing and publication of the patent application; the examiner’s decision or a trial or appeal decision to the effect that the patent is to be granted; and the registration of the patent right.⁷⁸

In 2021, the JPO received 196 requests for a trial for correction.⁷⁹

7.2.4.5 Trial for invalidation

Interested persons may file a request for a trial for invalidation if they wish to invalidate a patent that should not have been granted, with binding legal effect as to third parties. In 2021, there were 106 requests for a trial for the invalidation of a patent.⁸⁰ Trials for invalidation are to be distinguished from the “defense of invalidity,” which may be raised in patent infringement lawsuits.⁸¹

7.2.4.5.1 Grounds for invalidation

Reasons for invalidation are any reason or fact invalidating a right. Such reasons are limited to the statutory reasons for invalidation under Article 123(1) of the Patent Act.⁸² If a patent falls under any of the following items – set out as an exhaustive list in Article 123(1)(i)–(viii) – a request for a trial for patent invalidation may be filed (if the request involves two or more claims, it may be filed on a claim-by-claim basis):

• the patent has been granted on a patent application (excluding an application written in a foreign language) with an amendment that does not comply with the requirements stipulated in Article 17-2(3) (i.e., any amendment of the description, scope of claims or drawings must be made within the scope of the matters described in the description, scope of claims or drawings originally attached to the application);
• the patent has been granted in violation of Article 25 (enjoyment of rights by foreign nationals), Articles 29 and 29-2 (conditions for patentability), Article 32 (unpatentable inventions, such as those likely to disrupt public order, corrupt public morals or harm public health) or Article 38 (joint applications), or Article 39(1)–(4) (prior application; if the patent has been obtained in violation of Article 38, excluding if the transfer of a patent right under that patent has been registered based on a request under Article 74(1));
• the patent has been granted in violation of a treaty;
• the patent has been granted on a patent application not complying with the requirements stipulated in Article 36(4)(i) or Article 36(6) (excluding Article 36(6)(iv)), which address the requirements for statements of the detailed explanation of the invention and statements of claims;
• the matters stated in the description, claims or drawings attached to the application written in a foreign language are not within the scope of matters stated in foreign-language documents;
• the patent has been granted on a patent application filed by a person that does not have the right to the grant of a patent for the invention (excluding when the transfer of a patent right under the patent has been registered based on a request under Article 74(1));
• after being granted a patent, the patentee comes to fall under a category of person that is not permitted the enjoyment of a patent right pursuant to Article 25, or the patent comes to violate a treaty after being granted; or
• the correction of the description, claims or drawings attached to the written application for the patent have been obtained in violation of the proviso to Article 126(1), Article 126(5)–(7) (including as applied mutatis mutandis pursuant to Article 120-5(9) or Article 134-2(9)), the provisos to Article 120-5(2) or Article 134-2(1).

No other reasons outside the statutory provisions constitute a reason for the request of a trial for invalidation.⁸³

7.2.4.5.2 Parties

Trials for invalidation are inter partes trials, involving a demandant (an interested person in relation to a granted patent) and demandee (the patentee). A trial for invalidation is conducted by a panel of either three or five TAD administrative patent judges.⁸⁴ The process commences when a demandant files a request with the JPO for a trial for patent invalidation, indicating the reasons why a patent should be invalidated. The demandant may file such a request any time after the registration of the establishment of a patent right.⁸⁵

Only an “interested person” may file a request for a trial for invalidation.⁸⁶ Whether a person is an “interested person” is determined on a case-by-case basis. The court has indicated that an interested person may include a person who is being sued for patent infringement or a person who manufactures the same kind of product as the patented invention.⁸⁷

Furthermore, persons who claim a legitimate right to obtain a patent can request a trial for invalidation on the grounds that the patent has been granted:

• in violation of the joint application requirements under Article 38 of the Patent Act; or
• on a patent application filed by a person who is not the inventor and has not succeeded to the right to obtain a patent for that invention (usurped application).⁸⁸

Persons having a legitimate right to obtain a patent include those who are actual co-owners of the right to obtain a patent and persons to whom the right to obtain a patent has been transferred by the actual inventor.

Figure 7.5 provides an overview of this process. A number of the steps in this process are discussed in detail below.

Source: Adapted from JPO (2020), s. 51–03 fig 1–1 and 1–2.

7.2.4.5.3 Patentee written reply and request for correction

After a demandant files a request for a trial for invalidation, a patentee may submit written replies and file a request for correction to protect their patent rights. In the written reply, the patentee will respond to the arguments made by the demandant in the request for a trial.

Patentees may request a correction of descriptions, claims or drawings to clarify and correct the scope of claims and to avoid invalidation. The corrections that may be requested include, for example, restriction of the claims and clarification of ambiguous statements. When a correction decision becomes final and binding, the original registration of the establishment of a patent right is deemed to have been made based on the corrected claims.⁸⁹

A request for correction:

• must identify the purpose of the correction (restriction of the scope of claims, correction of errors or incorrect translations, clarification of an ambiguous description etc.);
• must not add any new matter;
• must not substantially expand or change the scope of claims; and
• must fulfill the requirements for independent patentability.

Time limits apply to when corrections may be requested. For example, a patentee (demandee) may only file a request for correction within the time limit for submitting a written reply after receiving duplicates of the written request (i.e., within the first opportunity to reply to the alleged reasons for invalidation) or after the chief administrative patent judge provides advance notice of a trial decision.⁹⁰

7.2.4.5.4 Demandant response to patentee response

After demandants file a request for a trial for invalidation, they may submit written responses (reply briefs) or amend the request. A demandant may state their objections to statements made by a patentee in their response as to the validity of a patent.⁹¹

In order to avoid unreasonable delays in a proceeding, demandants may not, in principle, amend the request for a trial to change the gist of the reasons for the request (e.g., by changing the reason for invalidation from violation of the requirement for inventive step to violation of the clarity requirement).⁹² However, they may amend the request to change the gist of the reasons for the request if there is no risk of unreasonable delay in the proceedings and the amendment is in response to a patentee’s request for correction.⁹³

7.2.4.5.5 Ex officio proceedings

A panel of administrative patent judges may conduct an ex officio examination of any grounds for invalidation not pleaded by a demandant or the violation of any correction requirements.⁹⁴ However, it cannot examine any claim not claimed by a demandant.⁹⁵

If a panel conducts ex officio proceedings, it must provide both parties with a “notice of reasons for invalidation” or a “notice of reasons for rejecting a request for correction.” The parties may formally respond to such ex officio decisions.

7.2.4.5.6 Oral proceedings

Trials for invalidation are generally conducted as oral proceedings.⁹⁶ In oral proceedings, the panel and the parties communicate in order to understand and resolve the issues in dispute, including any technical matters.

A panel will generally conduct oral proceedings with parties appearing before a trial court. However, it is now also possible to conduct oral proceedings online.⁹⁷ The panel may ask the parties to address issues that have emerged as a result of an ex officio examination. The panel may also interrupt the proceedings to examine witnesses.

Oral proceedings provide both the demandant and patentee with an opportunity to present their arguments, eliminating the need for the exchange of multiple documents. They also provide an efficient means for the parties to present sufficient evidence so that a panel may establish the facts while also taking into consideration the binding legal effect of patent rights on third parties. Therefore, the binding effect of constructive admissions recognized in civil litigation proceedings does not apply.⁹⁸

Documentary allegations are permitted, and parties do not need to restate the allegations submitted in writing at oral proceedings.

Prior to oral proceedings, the panel will send a written “notice of proceedings matters” to both parties. The written notice clarifies the matters to be alleged and proved at the oral proceedings as well as the issues in dispute between the parties. This helps facilitate the proceedings and ensures that all relevant issues and matters are considered.

The written notice must contain the following matters:

• the preliminary view of the panel – the panel presents a preliminary view of the identical and differing features of the patented invention and cited invention;
• the matters concerning the allegations by the parties – to ensure that the parties can make allegations and present all the relevant evidence, the panel identifies the issues in dispute and those to be discussed by the panel when making a decision; and
• a request for technical explanations – the panel may request a technical explanation of the patented invention and its background (among other aspects) from the parties.

Based on the content of the written notice, the parties must submit in advance an “oral proceedings statement brief” (statement brief). The statement brief is prepared in order to ensure there are no omissions and to clarify the logical structure of the arguments so that the oral proceedings may be conducted efficiently.

7.2.4.5.7 Advance notice of a trial decision

The panel will provide the parties and intervenors with advance notice of a trial decision when:

• the panel is ready to make a trial decision following the oral proceedings; and
• the case is one, for example, where a reason for the request for trial is approved or when the request for correction is not approved).⁹⁹

In response to the advance notice, a patentee (demandee) may file a request for correction or to amend a corrected description, claim or drawing. If no such request is made, the panel will conclude the proceedings and deliver a trial decision.¹⁰⁰

The advance notice will contain the same matters as those that will be set out in the trial decision. The advance notice will describe all matters – including the conclusion, reasons for the trial decision, determination of the appropriateness of any corrections, and the validity of all the claims – in the same level of detail as in the final trial decision. The panel must also set out all the reasons for deciding the validity of a patent in the advance notice.¹⁰¹

The advance notice procedure was established to prevent “a catch-ball” situation between the IP High Court and the JPO. A “catch-ball” situation is one in which:

• either party files an action to revoke a JPO trial decision with the IP High Court;
• the patentee files a request for a trial for correction with the JPO;
• the IP High Court revokes the JPO’s trial decision because the claims on which the trial decision is based have changed as a result of the finalization of the trial for correction, and the court then remits the case back to the JPO.

The advance notice procedure avoids such a situation, where a trial for invalidation is remanded to the JPO. Instead of showing the final decision of the panel to the patentee (demandee) and allowing them to request corrections based on that decision, the IP High Court is prevented from weighing in before the trial for invalidation is properly concluded.

In principle, a panel will provide advance notice of a trial decision when it is ready to make the first trial decision (see Figure 7.6). However, it will not provide advance notice in the following cases:

• the patentee (demandee) has indicated that they do not wish to be given the advance notice;
• the patentee does not file a request for correction, and all the claims requested for trial are determined to be valid; or
• all the requested corrections to the claims are approved, and all the requested claims are determined to be valid.¹⁰²

If the patentee files a request for correction after they are given advance notice, the demandant is provided an opportunity to respond. If the patentee does not file a request for correction, the panel usually concludes the proceedings and renders a trial decision based on the contents of the determination described in the advance notice.

Source: Adapted from JPO (2020), s. 51–17 fig.

7.2.4.5.8 Reasons for trial decision

The trial decision of the panel includes the issues in dispute and the determination of those issues. In the trial decision, the panel will determine and decide all the reasons for invalidation (including the reasons alleged by the demandants and the reasons of which the panel have notified the parties ex officio) and present its conclusions and specific reasons for its decision.

The panel will determine the degree to which it will address reasons for invalidation that are not directly related to the conclusion of the trial decision. These may include reasons for invalidation that the panel decided to dismiss when a demandant filed a request for a trial for invalidation on the basis of multiple reasons for invalidation. The trial decision must also describe the panel’s reasons for not approving the amendment of the reasons for the request for a trial on the basis that it would change the gist of those reasons.¹⁰³

Any persons who are dissatisfied with the trial decision in a trial for invalidation may file an action to revoke a trial decision with the IP High Court. The person filing the action will be the plaintiff, and the opposing party will be the defendant. The JPO is not a party in a suit for the revocation of a trial decision.¹⁰⁴

7.2.4.6 Hantei system

Under the Hantei (infringement advisory opinion) system, a party may request that the TAD of the JPO deliver and publish an official advisory opinion with respect to the technical scope of a patented invention.¹⁰⁵ In 2021, the JPO received 24 requests for Hantei.¹⁰⁶

An advisory opinion’s result has no legally binding force on a party to the case, and so no legal interest is required for demanding an advisory opinion. Nevertheless, it is necessary to show some benefit in obtaining an advisory opinion.¹⁰⁷ For example, a patentee (demandant) can request a determination as to whether the product of another person (demandee) falls within the technical scope of their patented invention. A person who is not the patentee (demandant) can also request a determination when they want to know whether a technology for which an investment or a project is planned or a technology that is being worked falls within the technical scope of a patented invention owned by a patentee (who, in that case, usually becomes the demandee).¹⁰⁸

A demandant must submit a written request for an advisory opinion to the JPO.¹⁰⁹ When a request for an advisory opinion is filed, the panel must serve a copy of this written request to the demandee and give the demandee an opportunity to file a written answer. Upon accepting the written answer, the panel must forward a copy to a demandant (see Figure 7.7).¹¹⁰

Source: Adapted from JPO (2019), s. 15.

During Hantei proceedings, the TAD examines the technical scope of a specific patented invention. Therefore, requests for examining an indirect infringement pursuant to Article 101 of the Patent Act will not be considered. A Hantei process on the technical scope of a patented invention will include, however, the determination of the doctrine of equivalents.¹¹¹ During the process, the TAD may examine evidence and request additional information and concludes by issuing a written advisory opinion that includes a statement as to the technical scope of the patent.

The Hantei system is an administrative service and is, therefore, neither legally binding nor appealable.

In 2018, the JPO implemented a new Hantei system in relation to standard-essential patents.¹¹² The aim of the new system is to facilitate license negotiations by improving the transparency of a standard-essential patent’s actual essentiality. A request for Hantei in relation to a standard-essential patent can be made when the different views of a demandant and demandee on the “essentiality” of a patented invention become apparent, for example, in license negotiations. Demandants need to specifically identify a “virtual object” from a technical standard that is usually established by a standard-setting organization. A panel consisting of three administrative patent judges compares and determines the patented invention and the identified virtual object and assesses whether the virtual object falls within the technical scope of the patented invention. If so, the patent is determined to be a standard-essential patent.

7.2.4.7 Statistics

Tables 7.1 and 7.2 show the number of cases and the revocation rate of trial or appeal decisions – as ex parte and inter partes appeals, respectively – from 2012 to 2021.