We have extensive experience in appeal proceedings, oppositions, trials, and litigation.
For patent cases, in particular, understanding the importance of comprehensive studies of the case from both legal and technical aspects, we pursue the best solution of disputes for clients, utilizing our technical expertise cultivated through application prosecution, as well as our legal expertise acquired through various experience in appeal proceedings, oppositions, trials, and litigation.
In IP litigation in Japan, Patent Attorneys who are also qualified as Specific Infringement Lawsuit Counsels (IP litigators) are capable of representing clients before courts to attend trials and litigation, accompanying attorneys at law. Many of our attorneys are qualified as the IP litigators and have experience at courts.
Please click here for the detailed flow of appeal against decision of refusal (ex parte).
Please click here for the outline flow of appeal proceedings/suit (inter partes).
Please click here for the detailed flow of patent opposition proceedings.
Flow
Detailed Flow of Appeal against Decision of Refusal (ex parte)
1 An appeal against decision of refusal may be lodged with the JPO within 4 months from the mailing date of the decision of refusal. Amendment may be made upon lodging an appeal.
2 Where amendment is made in a patent application, the application is transferred back to the previous examiner for pre-trial reexamination.
3 Where, as a result of the pre-trial reexamination, the decision of refusal cannot be maintained, a decision of grant is issued.
4 Where the Board of Appeals finds a new reason for rejection, a notice of reasons for rejection is issued.
5 Where, as a result of trial examination by the Board, no reason for rejection is found, a notice of closure of proceedings is issued, followed by an appeal decision (appeal granted).
6 Where, as a result of trial examination by the Board, the reasons for rejection are not overcome, a notice of closure of proceedings is issued, followed by an appeal decision (appeal dismissed).
7 The appeal decision (appeal dismissed) may be appealed to the Intellectual Property High Court by way of lodging a trial for canceling appeal decision within 120 days from the date of receipt of the appeal decision.
Outline Flow of Appeal Proceedings/Suit (inter partes)
1 An invalidation trial may be demanded any time after the registration, even after the expiration thereof.
A trial for cancellation of registered trademark not in use may be demanded where the registered trademark is not in use for three consecutive years.
A trial for cancellation of registered trademark due to misuse by owner may be demanded any time after the registration, but not after the expiration of five years from the cessation of the misuse by owner.
A trial for cancellation of trademark registered without authorization of proprietor of the trademark cannot be demanded after the expiration of five years from the date of registration of the trademark.
2 Request for Correction may be made only in patent invalidation trials and utility model invalidation trials.
3 A notice of closure of proceedings is issued in invalidation trials, but not in cancellation trials.
4 Where, as a result of trial examination by the Board, any reason for invalidation is found, a notice of closure of proceedings is issued, followed by a trial decision (demand approved).
5 Where, as a result of trial examination by the Board, no reason for invalidation is found, a notice of closure o proceedings is issued, followed by a trial decision (demand dismissed).
6 The trial decision (either demand approved or dismissed) may be appealed to the Intellectual Property High Court by way of lodging a trial for canceling trial decision within 120 days from the date of receipt of the trial decision.
Detailed Flow of Patent Opposition Proceedings
1 Opposition may be filed within six months of the publication of the patent.
2 Where, as a result of trial examination by the Board, no reason for revocation is found, opposition decision to maintain the patent is issued.
3 Where, as a result of trial examination by the Board, any reason for revocation is found, a notice of reasons for revocation is issued.
4 The opposition decision to revoke the patent may be appealed to the Intellectual Property High Court by way of lodging a trial for canceling opposition decision within 120 days from the date of receipt of the opposition decision.