JAPAN Law and Practice Contributed by: Yoshiyuki Inaba, Hiroshi Nemoto, Makoto Okada and Atsushi Sato, TMI Associates
1.8 Remedies Against Refusal to Grant an Intellectual Property Right Patents An applicant may file an appeal with the JPO against a rejection decision issued by a JPO examiner. A panel of three appeal examiners will then review the patent application to determine whether the rejection decision was appropriate. When filing an appeal against the rejection, the applicant can amend the claims, specifications, or drawings. If any amendments are made, the application will first be re-evaluated by the ini- tial examiner who issued the rejection decision before it is sent to the appeal board. If the initial examiner finds that the amended application has been sufficiently improved, they may issue a decision to grant the application without further involvement from the appeal board. However, if the initial examiner still believes the application should be rejected, it will be forwarded to the appeal stage for exami- nation by the panel of appeal examiners. Utility Models No remedy is available or applicable for utility model applications because the Utility Model Act does not require a substantive examination for the granting of a utility model right. 1.9 Consequences of Failure to Pay Annual Fees If a patent owner or a utility model owner fails to pay the annual fees by the specified deadline, they can still make a late payment by paying a surcharge in addition – and equal to the annual fee – within the six-month grace period after the expiry of the deadline. Furthermore, if the patent owner or the utility model owner is unable to meet the payment
deadline, they can still make an additional pay- ment to restore the patent right or the utility model right, except in the case of a “willful” fail- ure to meet the payment deadline. This addi- tional payment can be made within two months of the applicant’s ability to make the payment or within one year after the payment deadline, whichever comes first. 1.10 Post-Grant Proceedings Available to Owners of Intellectual Property Rights Both patent and utility model owners may file a request for a trial to correct the description, scope of claims, or drawings attached to the application. The purpose of the correction is limited to the following: • restriction of the scope of claims (including deletion of claims); • correction of errors or incorrect translations; • clarification of ambiguous statements; and/or • dissolution of the claim citation relationship. The correction cannot be made beyond the scope of the matters disclosed in the description, the scope of claims or the drawings attached to the application. Utility model owners are allowed to make a request for correction only once, except for the deletion of claims, whereas patent owners may request a trial for correction as many times as they wish, except where the patent has been invalidated by an invalidation trial or revoked by a patent opposition. Patentees may not request a correction while a patent opposition or invali- dation proceeding is pending but may instead request a correction in the proceedings of the patent opposition or patent invalidation trial.
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