Intellectual Property Information

New Appeal-Correction Trial system under revised Japanese Patent Law
(Effective from January 1, 2004)

If you are a patentee of Japanese Patent and your patent is decided as invalid by the trial examiners of the Invalidity Trial in the Japanese Patent Office (JPO), you might consider an appeal to the Intellectual Property High Court (renamed from Tokyo High Court) for overcoming this decision. In this case, please keep in mind the following steps which have been changed in part from those in the old system.

1. You appeal to the Intellectual Property High Court.

2. If you would like to correct (or amend) claims of your patent, you must prepare a written demand for a Correction Trial including corrected claims to be filed to the JPO. Please note that you have to demand the Correction Trial within 90 days from the date of appeal.

3. You submit to the Court a copy of the written demand for Correction Trial before or after it is filed to the JPO. Please submit before filed if you would like to proceed promptly.

4. The judges in the Court normally decide to remit the Appeal case to the Invalidity Trial in the JPO.

5. In the JPO, the trial examiners of the Invalidity Trial commence a trial examination. Simultaneously, the trial examiners designate for you a period of time for filing a demand of correction. Accordingly, you are given a further opportunity for correcting claims.

6. Within the designated period of time, you may file the demand of correction quoting claims, specification and drawings attached with the original written demand of Correction Trial. Alternatively, you may file the demand of correction likely with modified corrected claims. Even if you do not file the demand of correction within the designated period of time, the demand of correction is regarded as being made with quoting claims, specification and drawings attached with the original written demand of Correction Trial. However, you should file the demand of correction if you would like to proceed promptly. Whether you file or not, the original Correction Trial is regarded as being abandoned.

7. The corrected claims in the demand of correction are considered in the Invalidity Trial proceedings.