Appeals and Trials

• 12-1. What is a trial for invalidation?
• 12-2. What is an appeal against an examiners' decision of refusal?

 12-1. What is a trial for invalidation?

A “trial for invalidation” is a means established to legally invalidate a patent right (or a utility model right, design right, or trademark right) that was granted for an invention (or trademark, etc.), but which should have been rejected by law. Under such circumstance, a trial for invalidation declares that the patent right or registration right never existed in the first place.

Patent rights and other rights that were invalidated are regarded to have never existed and the validity of such rights will be extinguished retroactively to the time when such rights became effective.

Please note that under Article 8 of the Patent Act, persons who do not live or who are not domiciled in Japan cannot conduct any procedures directly with the JPO and must appoint a representative in Japan. (This provision also applies to utility models, designs, and trademarks under their respective acts.) We highly recommend that you appoint a patent attorney as your representative and consult with your representative about the procedures in detail.

See FAQ 1-6: "How can I get a list of patent attorneys in Japan?"

 12-2. What is an appeal against an examiners' decision of refusal?

In general, when people disagree with legal judgments they generally file a lawsuit in a court of law. However, in order for applicants to correct any errors that they feel occurred in their examination process, and which ultimately led to a decision of refusal, an “appeal/ trial” system was set up under the Patent Act, Design Act, and Trademark Act to respond to these cases. Applicants who wish to contest a decision of final refusal, which they consider to have been determined in error, are required to file an appeal against the examiner’s decision of refusal to the Japan Patent Office instead of filing a lawsuit in a court of law. This action is called an appeal against an examiner’s decision of refusal.

An applicant can file an appeal against an examiner’s decision of refusal to the Japan Patent Office within 3 months from the day on which a certified copy of the decision of final refusal is received. (This is based on Article 121 of the Patent Act, Article 46 of the Design Act, and Article 44 of the Trademark Act)

Please note that under Article 8 of the Patent Act, persons who don't reside or who are not domiciled in Japan cannot conduct any procedures directly with the JPO and must appoint a representative in Japan. (This same type of provision applies to utility models, designs, and trademarks under their respective acts.) We highly recommend that you appoint a patent attorney as your representative and consult with your representative about the procedures in detail.

See FAQ 1-6: "How can I get a list of patent attorneys in Japan?"