Prohibition of Correction Trial before
JPO after Action or cancelation of Trial
Decision by JPO before IP High Court
&
Introduction of Advance Notice of Trial
Decision by JPO and Request for
Correction thereupon
AIPLA MWI Pre-Meeting January 22,
2012 Fujiko Shibata
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1
Correction Trial before JPO (1)
Article 126 (1) The 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; provided,
however, that such correction shall be limited to
the following:
 (i) restriction of the scope of claims;
 (ii) correction of errors or incorrect translations;
 (iii) clarification of an ambiguous statement; &
 (iv) change dependent claim to independent claim.
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Correction Trial before JPO(2)

Article 126 (2) A request for a trial for
correction may not be filed from the time the
relevant trial for patent invalidation has become
pending before the Patent Office to the time the
trial decision has become final and binding; if
the trial is filed for each claim, until all of the
trial decision has become final and binding.
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3
Correction Trial before JPO(3)
Patent Issue
Trial for Correction
A Request for a trial of
correction may not be filed
Trial Invalidation of Patent
Pending
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Trademarks
Final & Binding
Trial Decision
4
Request of Correction in Trial for
Invalidation of a Patent Before Revision
Patent Issue
A Request for a trial of correction may not be filed
Trial Invalidation of Patent
Pending
Trial Decision
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Trademarks
Final & Binding
Trial Decision
5
Catch Ball Phenomenon !
Before Revision
Actions Against Trial Decision
Trial Decision
TIP
ATD
Trial Decision
Trial for Correction
TIP
30day 90day
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Trademarks
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Prohibition of Request for Trial of
Correction before IP High Court
Decision
Advance Notice
of Trial Decision
Actions Against Trial Decision
Trial Decision
Request for Trial for
Correction
TIP
30day
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Trademarks
7
Correction Trial before JPO(3)

Article 126 (3) When the claims attached to
the request are corrected, a request for
correction under paragraph (1) may be filed
for each claim. In such a case, when the
claims contain a group of inventions having a
relationship as provided by Ordinance of the
Ministry of Economy, Trade and Industry, the
request shall be filed for each group of
inventions.
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Correction Trial before JPO(4)

What is the “group of inventions”?





(a) Independent claim & dependent claims
(b) Independent claim & multi-dependent
claims
(c) Independent claims & dependent claim
(d) Combination of (a) to (c)
Unit of request for trial for correction or
request for correction!
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9
Correction Trial before JPO(4)
Claims
(a)
1
(b)
2
3
1
(c)
2
1
3
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Trademarks
2
3
10
Summary-1


1. After pending of the action against
trial decision, the request for trial of
correction was prohibited.
2. In the trial of invalidation of patent,
announcement of decision is made
before the decision and patentee may
file the request for correction.
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Summary-2


If the claims include the group of
inventions, the patentee should correct
the claims for each group of inventions.
If the request for trial of correction is
filed, it shall be withdrawn for any of
the groups.
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Thank you for your attention!
Fujiko Shibata
[email protected]
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