BASIC INFORMATION ON THE JAPAN PATENT OFFICE AND THE
INTELLECTUAL PROPRETY HIGH COURT IN JAPAN, AND STATUTORY
RELATIONS
BETWEEN
THEM
Dec.1,
2014
＠Skolkovo Innovation Center
Senior Director
Takeshi NIINOMI
Trial and
Appeal Board Department,
Japan Patent Office
Ⅰ．History of industrial property systems in Japan
１．Patent
Law
(1) Patent Monopoly Law, which is deemed to be the first Japanese patent law, was
promulgated on Apr.18, 1885.
Apr.18 is the Day of Invention in Japan (Unfortunately, it is not a national holiday.)
＊
UK:
DE:
Statute of Monopoly 1624
Comprehensive Patent Law 1877
(1) The present Patent Law was enacted in 1959, followed by frequent amendments.
This law was originally strongly influenced by German Patent Law.
２． Utility Model Law
(1) The first Utility Model Law of Japan was enacted in 1905. The purpose of this law was to
supplement Patent System and stimulate inventive activities in Japan. The law modeled a
similar system in Germany.
(2) The present Utility Model Law was enacted in 1959, at the same time with the Patent
Law. After the amendment in 1994, a utility model registration application is to be
registered without substantial examination.
３． Design Law
(1) Design Bylaws , which is deemed to be the first Japanese design law, was enacted in
1884.
(2) The present Design Law was enacted in 1959, at the same time with the Patent Law and
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the Utility Model Law.
４．Trademark Law
(1) Trademark Bylaws, which is deemed to be the first Japanese trademark law, was enacted
in 1884.
(2) The present Trademark Law was enacted in 1959, at the same time with the Patent Law ,
the Utility Model Law and the Design Law.
＊
Other categories of intellectual property rights are under the jurisdiction of
other
ministries. (example: Copyright - Ministry of Education, Culture, Sports, Breeder's Rights the Ministry of Agriculture, Forestry and Fisheries, Layout-Design Exploitation Rights for
Semiconductor Integrated Circuits - other bureau of the Ministry of Economy, Trade and
Industry.)
Ⅱ．Japan Patent Office
１．Organization
(1) Position in the central government
Japan Patent Office (hereinafter referred to as “the JPO”) is an agency of the central
government, which consists of Cabinet Office and 12 ministries, and an external bureau of
the Ministry of Economy, Trade and Industry.
The title of the top of the JPO is Commissioner.
(2) There are 7 departments under Commissioner – Policy Planning and Coordination
Department, Trademark and Customer Relations Department, Patent and Design
Examination Department (Physics, Optics, Social Infrastructure and Design) , Patent
Examination
Department(Mechanical
Technology)
,
Patent
Examination
Department(Chemistry, Life Science and Material Science) , Patent Examination
Department (Electronic Technology)
and Trial and Appeal Department.
Trial and Appeal Department has 38 Boards of Trial and Appeal, and each Board of Trial
and Appeal consists of several administrative judges.
I, currently, is a member of Trial and Appeal Department.
２．Personnel
Regular staff members are 2,837 people, in total. In addition, the JPO hires lots of people
such as technical advisors , computer operators and part-term staff.
(1) Examiners:
2,280 people.
Examiners for Patent and Utility Model: 1,702 people.
Examiners for Design: 49 people.
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Examiners for Trademark: 142 people.
(2) Administrative Judge: 387 people.
(3) General Staff: 557 people.
３．Basic Statistics（figures of calendar year 2013.
＊Japanese fiscal year starts April,
when cherry blossoms are in bloom, until march, next year.）
(1) The Number of Applications
Patent:328,436 /
Utility Model:7,622/ Design:31,125/
Trademark: 117,674
(2) The Number of Requests for Examination
Patent: 240,188
＊
In the case of a patent application, a request for examination shall be submitted
within 3 years from the application date in order to obtain a patent. About 70% of patent
applications are requested for substantial examination.
(3) The Number of Registrations
Patent: 277,079/
Utility Model: 7,363/
Design: 28,288/
Trademark: 103,399
(4) The Number of Demands for Trial Against Examiner’s Decision of Refusal
Patent: 24,644/
＊
Design: 363/
Trademark: 1,012
With respect to a patent application, if an amendment to the specification at the
timing of the demand for trial, the case is once returned to an examination department
and an examiner shall examine the case again(Patent Law §162).During the calendar
year of 2013, 12,998 cases were granted patent in this examination stage.
(5) The Number of Demands for Trial for Invalidation
Patent: 247/
(6) The Number of
Utility Model: 4/
Design: 20/
Trademark: 96
Demands for Trial for Correction
Patent: 238
(7) The Number of Demands for Trial for Cancellation
Trademark: 1,190
(8) The Number of Requests for Advisory Opinion
Patent: 29/
＊
Utility Model: none/
Design: 14/
Trademark: 7
Advisory opinion is made with respect to the technical scope of a patented invention etc.
Advisory opinion is not an administrative disposal.
Ⅲ．Intellectual Property High Court
This is, probably, a very interesting part for Russian judges. So I pick up some articles from
homepages announced by the Intellectual Property High Court (hereinafter referred to as
“the IP High Court”)
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and quote them here for your reference. Quoted parts are in《》.
（http://www.ip.courts.go.jp/）
１．History
Before the establishment of the IP High Court, IP-related cases were dealt by specialized
divisions in the Tokyo High Court .
Amid the lingering slow economy in 1990s, there has been increasing awareness in Japan
that it is necessary to revitalize the Japanese economy by promoting the creation, protection
and use of intellectual property at a national level. From the perspective of enhancing the
dispute resolution function of litigation related to IP rights ("IP-related litigation"),the Law
for Establishment of the IP High Court was established in June 2004. Under said Law, the
IP High Court was created on April 1, 2005, as a special branch of the Tokyo High Court.
２．Jurisdiction over IP-related Litigation
(1) IP-related civil cases
《Some of the IP-related civil cases, namely, actions relating to patents, etc. (so-called
technology-related actions relating to patents, utility model rights, layout-design
exploitation rights for semiconductor integrated circuits, or the rights of authors for a
computer program work), need to be handled by a court that has a well-established
specialized judicial system, due to the especially strong technical nature of such cases.
For this reason, such action relating to a patent, etc. is under the exclusive jurisdiction of
the Tokyo District Court or the Osaka District Court, both of which have divisions
specialized in IP-related civil cases (Section 6 paragraph (1) of the Code of Civil Procedure).
Any appeal related to such action would be handled by the IP High Court (Section 6,
paragraph (3) of the Code of Civil Procedure, Section 2, item (i) of the Law for Establishment
of the IP High Court).
Among IP-related civil cases, so-called non-technology-related actions relating to design
rights, trademark rights, the rights of authors (excluding the rights of authors for a
computer program work), publication rights, neighboring rights, or breeder's rights; or
infringement of business interests caused by unfair competition, are under the jurisdiction
of fifty district courts located throughout Japan while the Tokyo District Court or the Osaka
District Court also has non-exclusive jurisdiction. Any appeal against such action will be
under the jurisdiction of one of the eight high courts located throughout Japan, that
corresponds to the district court in charge of the first instance. The IP High Court will be in
charge of any case that is under the jurisdiction of the Tokyo High Court (Section 2, item (i)
of the Law for Establishment of the IP High Court). 》
(2) Suits against trial decisions made by the JPO（＝Administration cases）
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《 Any suits against trial decisions made by the JPO that are under the exclusive
jurisdiction of the Tokyo High Court will be handled by the IP High Court (Section 2, item
(ii) of the Law for Establishment of the IP High Court).》
＊ See the attached document1.
３．Organization of the IP High Court
《(1) The IP High Court has been designated as a special branch of the Tokyo High Court
and is recognized to have unique power over certain judicial administrative tasks, such as
assignment of court cases, which are closely related to the exercise of its special functions. In
this way, the IP High Court is considered to have a higher level of independence in
comparison with other ordinary branches of high courts.
(2) The IP High Court consists of the Litigation Department, which comprises four ordinary
divisions and the Special Division (Grand Panel), and the IP High Court Secretariat, which
is in charge of administrative affairs.
(3) The IP High Court consists of the Chief Judge, other judges, judicial research officials
dealing with IP cases, court clerks, and court secretaries. Technical advisors may also be
involved in IP cases as part-time officials on a case-by-case basis.
The judges are legal experts, appointed from among those who have passed a bar exam and
completed the required legal apprenticeship in principle. On the other hand, judicial
research officials and technical advisors consist of those who have specialized knowledge on
technical fields.》
＊１
Trial of a case is done by a body consisted of 3 judges. Each of 4 divisions is composed
of a director (who serves as the chief judge of a trial body), 2 or more judges, court
secretaries and a court clerk.
＊２
So far, the IP High Court gave rulings to 9 Grand Panel cases . The Grand Panel
consists of 5 judges. ((Patent Law §182-2).
＊３
Some of staff members the JPO and patent attorneys, who are well-experienced in
practice, serve as judicial research officials for a definite period of time.
The Code of Civil Procedure provides the job scope of judicial research official.（§92-8）
＊４
About 200 technical advisors are appointed. In the year of 2013, technical advisors
committed 122 cases of IP-related appeal cases.
The Code of Civil Procedure provides the commitment of technical advisor.（§92-2）
４．Basic Statistics（figures of calendar year 2013）
(1) The Number of IP-related civil cases to be treated by the IP High Court
Newly Accepted: 114/
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Disposed: 99/
Average Trial Period: 6.7months
＊１
The attached document2 shows breakdown per category of rights thereof
＊２
The Number of IP-related civil cases to be treated by whole district courts
Newly Accepted: 552/
Disposed: 608/ Average Trial Period: 15.7 months
(2) The Number of suits against appeal/trial decisions made by the JPO
Newly Accepted: 353/
Disposed: 429/ Average Trial Period: 7.6 months
Ⅳ．Relations between Trial and Appeal Department of the JPO and the IP High Court
Here, I will make an explanation mainly about patent.
１．Suits against trial decisions made by the JPO(Judicial Review)
(1) Against a trial decision by a trial body which consists of 3 administrative judges of the
JPO , the demander of the trial may file an action before the IP High Court. (Patent Law
§178(1))
In the case where a trial body of the JPO renders a trial decision of refusal and an action
seeking for its recession is filed before the IP High Court, 2 or 3 administrative judges are
appointed to be agents for the defendant, namely Japanese government. The agents are in
charge of litigation activities for the action. In the case of an action with respect to a trial for
invalidation or cancellation (trademark), both parties of the trial contend before the IP High
Court.
(2)《With regard to a patent, utility model right, design right or trademark right, these rights
arise upon registration at the JPO. Any person who is dissatisfied with a JPO examiner's
decision of refusal or who seeks to invalidate the registration of such rights may, under
certain conditions, file a request for a trial with the JPO. In the case where the JPO makes a
decision in such trial, and if the person is dissatisfied with the JPO decision, he/she may file
an administrative suit to seek the recession thereof. This is called a suit against a trial
decision made by the JPO.
Suits against trial decisions made by the JPO are under the exclusive jurisdiction of the
Tokyo High Court (Section 178, paragraph (1) of the Patent Law, etc.). These suits would be
handled by the IP High Court, which is a special branch of the Tokyo High Court (Section 2,
item (ii) of the Law for Establishment of the IP High Court). Any person who is dissatisfied
with a judgment handed down by the IP High Court may file a final appeal with the
Supreme Court.
In this way, in the case of a suit against a trial decision made by the JPO, unlike an ordinary
lawsuit, proceedings at a district court are omitted. This is because the JPO trial procedure
is conducted as quasi-judicial proceedings, which require a high level of fairness similar to
that required in judicial proceedings and also because the JPO decision is made based on
specialized, technical knowledge possessed by the JPO. 》
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(3) Where the IP High Court hands down a judgment recessing a trial decision and the
judgment becomes final and binding, another trial body JPO shall perform the trial thereof
again. A final and binding judgment of a court binds the trial by the subsequent trial body of
the JPO. (Patent Law §181(1)(2))
２．Invalidation Trial(Dual(Double) Tracks of Invalidation Trial)
《It was controversial as to whether it is possible to dispute the validity of a patent in a
patent infringement suit. In the "Kilby case" (decided on April 11, 2000), the Supreme Court
held that it is an abuse of a right to file a claim based on a patent for which a reason for
invalidation clearly exists even though the patent has not been rescinded through a JPO
trial procedure. The subsequent addition of Section 104-3 to the Patent Law provided
statutory grounds for disputing the validity of a patent in a patent infringement suit. The
validity of a patent may be disputed in the course of the JPO trial procedure as well.
Therefore, the validity of a patent may be disputed either by raising a patent invalidity
defense in a patent infringement suit or by following the JPO trial procedure. 》
(1) Invalidation Trial by the JPO
After a patent is granted, a request for a trial for patent invalidation may be filed.（(Patent
Law §123(1))。
The patentee( demandee ) in a trial for patent invalidation may file a request for a correction
of the description, scope of claims or drawing(s) attached to the application only within the
time limit designated by the other provision of the Patent Law．(Patent Law §134-2(1))
＊ A patentee may file a request for a trial for correction with regard to the correction of the
description, scope of claims or drawings attached to the application unless the request may
not be filed from the time the relevant trial for patent invalidation has become pending
before the JPO to the time the trial decision has become final and binding．(Patent Law
§126(1)(2))
(2) Invalidation Trial by the IP High Court
As already described, in the course of litigation concerning the infringement of a patent
right, defendant may claim the invalidity of the patent right. (Patent Law §104-3(1))
(3) Major Differences between trials of invalidity before the JPO and the IP High Court
○ The effect of a decision of invalidity:
The effect of a final and binding invalidation
decision of a trial at the JPO is retrospective. (Patent Law §125)
Invalidation judgment at
the IP High Court is effective only between the parties of the lawsuits concerned.
○ Ex officio examination: During a trial by a board of trial and appeal of the JPO, the board
may perform an ex officio examination. (Patent Law §153(1))
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○ Correction: During a trial for a patent invalidation by a board of trial and appeal of the
JPO, the patentee( demandee ) may ,though within a very limited occasion, file a request for
a correction of the description, scope of claims or drawing(s) attached to the application．This
is very important means of defense of right. (Patent Law §134-2(1))
＊ Sometimes, the JPO and the IP High Court bring about different conclusions about the
validity on the same right, and this provokes controversy.
３．Notification
The IP High Court and the JPO(Commissioner) are obliged to notify a certain information
each other after a lawsuit is filed with respect to industrial property right. (Patent Law §180,
§182, §168, and so on.).
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《Document1》
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《Document2》
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