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Patent System Q&A
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7. APPEALS SYSTEM
- Note that divisional applications cannot normally be filed during the appeal stage. However, they can be filed (only) if the original examiner or board of examiners issue an office action during the pre-examination or appeal (Points (ii) above).
- The official fee for requesting an appeal trial is currently JPY49,500 + JPY5,500 per claim. KIPB charges a basic flat-rate fee for filing Appealsdepending on complexity. Contact us for details.
Can you give me an overview of the Appeals system? (timeline/costs/requirements, etc.)?
An applicant who has received a Decision of Rejection and is dissatisfied with the Decision has the right to file an Appeal against the Decision within 3 months (4 months for overseas residents) of the transmittal of a Decision of Rejection (non-extendable)*. An Appeal Board of 3 or 5 new examiners will be appointed for the purpose of the Appeal. They will consider if the original examiner conducted his / her examination appropriately. Appeals are conducted on a document basis in principle - no oral proceedings are conducted.
Amendment & Pre-examination
The applicant has the option of filing amendments to the specification, drawings, claims etc. pertaining to the Appeal request. Amendments should be filed at the same time as the appeal request. If amendments are filed, the original examiner will conduct a preliminary re-examination before the appeal proper, and will
(i) revoke the original decision and make a decision to grant; or
(ii) issue a new ground for rejection (office action) to which the applicant can respond; or
(iii) decide to uphold the original decision and report findings to the Appeal board which will then begin the Appeal examination.
However, it is important to note that amendments that broaden claims are not permitted. Only amendments for the following purposes can be made at this stage:
i) cancellation of claims,
ii) further restriction of claimed elements (i.e., limitation of claim(s) to components defined in claim(s) before the amendment),
iii) correction of errors; and/or
iv) clarification of ambiguous recitations (that have been rejected in the office action).
Appeal
The Appeal proper begins if no amendments are filed or the pre-examination Examiner has referred the case to the Appeal Board. The Appeal board will issue (i) an allowance, (ii) a new ground for rejection (office action) to which the applicant can respond, or (iii) a decision to maintain the original rejection. Appeal Board rulings can be expected within 6 months to a year.
Is it possible to file auxiliary requests?
No, only one amended set of claims may be filed.
It may be possible to request an interview with an examiner before filing the appeal to discuss the amendment.
As stated above, examiner(s) may also issue an office action during the preliminary re-examination or appeal proper, offering a chance for further amendment, but applicants and their agents have no control or guarantee over this.
Can I file a divisional application as a precaution when filing an appeal for an original application?
Yes, we strongly recommend doing so to maintain the prosecution of your invention regardless of the result of the appeal, especially if you are unsure whether an appeal will succeed or restrict the scope of your invention.
According to rules introduced on April 1, 2023, applicants can also request the temporary suspension of the examination of the divisional application until the result of the appeal for the parent.
This provides applicants with opportunities to develop more efficient and effective claim strategies for the divisional application based on the official outcome of the appeal.
For details, see 5.11 Precautionary divisional applications when filing an appeal for parent
Power of Attorney
A Power of Attorney is also required when filing an appeal. As of June 2021, signatures of representatives of applicants are no longer required on POAs for appeals. Applicants only need to provide the name and job title of a representative to their Japanese agent, who can then file the POA on the applicant’s behalf.
*The applicant also has the right to file a divisional application during the same time period for responding to the Decision of Rejection (with or without filing an appeal for applications on or after April 1, 2007.)
Is there an accelerated appeal examination procedure?
Yes. Although appeal examinations are generally conducted in chronological order (i.e., on the dates on which requests for appeal are received), appeals can be accelerated if an application falls in one or more of the following categories: working invention-related applications, internationally filed applications, academic body applications, small/medium business and individual applications.
According to the JPO, where an accelerated appeal examination is requested, an appeal decision is made and dispatched within 3.7 months (on average) from the date that accelerated appeal examination is requested, and appeal proceeding becomes possible (2017 figures).
A "Written explanation of the needs of the accelerated appeal examination" should be filed with the request for an accelerated appeal examination, in which circumstances related to the filing of the accelerated appeal examination are described, the prior art documents disclosed, and an explanation of the similarities between the invention and the prior art provided (unless the distinguishing features of the claimed invention are already described in the specification.)
There are no extra official fees for requesting an accelerated appeal.
What options do I have if my appeal is rejected?
If a decision to maintain the original rejection is reached by the Appeal Board, the applicant may then institute the lawsuit to the Intellectual Property High Court. For the purposes of the suit, the applicant is considered the plaintiff and the Patent Office commissioner acts as defendant. The scope of the suit is restricted to whether the appeal procedure was undertaken appropriately or not. No amendments or divisional applications are possible.
The applicant should file suit within 30 days from the date the appeal decision was transmitted. Failure to do so results in the application deemed as abandoned and non-revivable.
The court will usually reach a decision within 6 to 12 months from initiating the suit. Fees for suits against an appeal decision can be expensive. Our attorney fees include fees that are consignment on success. Please contact us directly for more details.
It is possible to file appeals to the Japanese Supreme Court against IP high Court decisions in some instances, as the last resort. Greater restrictions and costs apply.
Is it worth filing an appeal after so many rejections?
It can be. Grant rate via appeal is fairly high compared to other main jurisdictions.
In 2020 for instance, around 50% of all applications rejected at the examination stage were subsequently granted in a pretrial re-examination conducted by the original examiner (automatically initiated whenever appeal stage amendments are made. See 7.1 Overview) Furthermore, approx. 70% of those applications rejected in the pretrial re-examination were allowed at the appeal trial proper (conducted by 3 or 5 new examiners).