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.