The Japan Patent Office (JPO) appeal board functions as the court of first instance, and appeal decisions made on an appeal against a Final Decision of Rejection made by the JPO are subject to review by the Intellectual Property High Court (IPHC). The IPHC is a special branch of the Tokyo High Court that handles both ex parte and inter partes cases. If the IPHC finds that an appeal decision made by the JPO erred, and a judgment to rescind the Appeal Decision is finalized, and the procedure is returned to the JPO’s three-examiner Appeal Board for re-examination.
The average duration from commencement to disposition for ex parte suits handled by the IPHC in 2013 was 7.6 months. It was 12.4 months in 2003, and the duration has been declining steadily every year, according to the report made by the Administrative Bureau of Supreme Court of Japan in 2014.
According to the statistics reported by the JPO in 2013, 174 ex parte suits were filed with the IPHC in 2012. In the same year, 115 cases were dismissed and 37 cases were successfully returned to the JPO. This makes the average success rate of 24% in 2012. According to the report, the success rate in 2010 was approximately 22% and it was approximately 20% in 2011.
Procedures and Time Frame
The following are the proceedings and the time frames pertaining to a procedure at the IPHC.
(1) A Complaint and a Power of Attorney must be filed within 120 days from the delivery date of the Appeal Decision.
(2) The JPO must respond to the Complaint.
Time frame: Approximately within 1 month from the date a copy of the Complaint is received.
(3) An Appellant’s First Appeal Brief including arguments and documentary evidence must be filed as a second step. All of the reasons for seeking rescission of the JPO’s Appeal Decision must be presented in this Appeal Brief.
Deadline: A Notice that sets the deadline will be issued by the IPHC. Approximate time frame for filing the Appeal Brief is approximately 2 months after filing the Complaint
(4) In response to (3), the Japan Patent Office is required to file a Counter Brief.
Time frame: Approximately 1 month after the filing of the Appellant’s First Appeal Brief
(5) Attend a First Oral Hearing, which is a first preparatory procedure towards the main Oral Hearing.
Time frame: Approximately 1-2 weeks after receipt of the JPO’ s Counter Brief
(6) Prepare and file The Appellant’s Second Appeal Brief (optional)
The court may request the Appellant to file a Second Appeal Brief to supplement the First Appeal Brief or to counter-argue the JPO’s brief.Time frame: Approximately 1-2 months after the First Oral Hearing
(7) Attending a Second Preparatory Oral Hearing, which is the second preparatory procedure towards the main Oral Healing. During this Hearing, a technical presentation using PowerPoint etc. is presented generally.
Time frame: Approximately 2 weeks after the filing of the Appellant’s Second Appeal BriefThird Preparatory Oral Hearing is possible according to Judge’s discretion.
(8) Attending the Main Oral Hearing
Closing procedure of the Oral HearingsTime frame: Approximately 1-2 weeks after the Second Oral Hearing
(9) A decision is made by the judges at the IPHC
Time frame: Approximately 2-3 months after the Main Oral Hearing
Please note that the above time frames for each proceeding are based on our past cases in general; actual time frames may however vary depending on the complexity of the case.
* The information provided on this website is for informational purposes only and is not intended as legal advice.