〈日本知財学会誌〉Vol. 12 No. 1― 2015 : 40 49【Original Papers】-

Effect of Attorney Groupings on
the Success Rate in Cases Seeking toOverturn Trial decision of refusal of
Patent Applications in Japan
Nobuaki Arai (Arai, Hashimoto, Hosaka & Associates, Tokyo/Japan)
Hironori Takuma (Chiba Institute of Technology)
Hideo Kameyama (Tokyo University of Agriculture and Technology)【Abstract】 This study focuses on the importance of specialized legal representation in cases represented by groups ofattorneys seeking to overturn trial decision of refusal of patent applications filed in Japan. Accordingly, the effect of
attorney groupings on the percentage of such cases in which the plaintiff was successful has been analyzed. As a resultof this analysis, it was discovered that groups composed exclusively of patent attorneys won the highest percentage ofcases related to patent applications. Groups composed of a mixture of patent attorneys and lawyers who were notspecifically patent attorneys (herein referred to as “lawyers”) had the second-highest success rate, and groups
composed exclusively of lawyers had the lowest. Moreover, it was revealed that the success rate for patent applications
rises with increases in the number of patent attorneys within the range of one to three patent attorneys. However, as
the number of patent attorneys increases to four and more, the success rate in such cases decreases. These results
suggest that in cases seeking to overturn final decisions of refusal of patent applications, attorney groupings have an
important effect on the success rate. Additionally, it was confirmed that the most advantageous representation forplaintiffs in these cases is no more than three patent attorneys, with no lawyers who are not patent attorneys.
【KEYWORD】 Groups of Attorneys【Date of receipt】 2014.2.3

1.

Trial Decision of Refusal

Case

Plaintiff

Success Rate

【Date of approval】 2015.3.10

the decision of such examination.

Introduction

This is referred toas a case for revocation of an examination decision.
In Japan, when patent applicants1 are foreign, with no1.1.

Purpose of Study

address or residence in Japan, they are prohibited fromIn order for patent applications to result in the suc-filing cases seeking revocation of examination deci-

cessful acquisition of patents, patentability must be al-sions made by the panel unless attorneys who have ad-

lowed based on examinations at the Japan Patent Officedresses or residences in Japan handle such filing on(JPO), except in cases in which the non-substantive

their behalf 2.

examination system is adopted.

When patentability isexpertise in cases seeking revocation of examination

not so allowed, the court may be petitioned to revoke

decisions, the majority of foreign patent applicants ap-

40

ISSN 1349-421X



In light of the complexity and need for© 2015IPAJ

All rights reserved.

This paper was duly reviewed and accepted by the anonymous referees who wereappointed by the IPAJ’s editorial committee.

Effect of Attorney Groupings on the Success Rate in Cases Seeking to Overturn Trial decision of refusal of Patent Applications in Japan

point patent attorneys3, and/or lawyers who are notrepresentatives.

specifically patent attorneys in Japan as counsel. Add-

the cause-and-effect relationship between the success

ing to the complexity, the invention that is the subject

rate in cases seeking revocation of examination deci-

However, an empirical analysis ofof cases seeking revocation of examination decisions

sions regarding patent applications and the number ofcannot always be described in a clearly defined manner,

attorneys has been performed.

because such inventions often involve intricate and ab-cases in which revocation of examination decisions wasstract technical concepts.

This study related toThus, it is possible forsought in the form of ex parte appeal and inter partes

even a single invention to be understood in different

appeal, and concluded that the greater the number ofways by different parties involved.

representatives (i.e., lawyers), the lower the success

It should also be

noted that the functions of patent attorneys and law-rate (Aoki and Sasahara, 2012).

Aoki and Sasahara

yers are different, and involved fundamentally different(2012) also noted that there had been very few previ-backgrounds and skills ; a primary task of patent attor-

ous studies of the relationship between administrativeneys is to submit applications, and a primary operation

litigation and the characteristics of representatives.

of lawyers is to handle legal cases.

Moreover, with regard to cases seeking revocation

Based on the differences and complexities men-of examination decisions that invalidated patents, as ationed above, the use and composition of attorney

result of analyzing changes in the rate at which exami-

groupings may have some influence on the successnation decisions were upheld over three years fromrate in cases seeking revocation of examination deci-

2006 through 2008, Kobayasi et al. (2009) suggested

sions, which can be of great importance to patentthat in cases where the patent holder won, the number

applicants.

However, there are few studies of thisof persons who were employed to dispute the inven-

If the use and composition of attorney group-

tive step became increasingly large, while no changes

ings does influence the case success rate for plaintiffs,

were observed concerning court judgments on the in-proposals to use appropriate attorney groupings would

ventive step.

be of significant assistance for increasing the patent

tiff success rate in appeals of trial decision of refusal

acquisition rate.

(herein after “trial decision”) relating to refusal of therate.

Furthermore, with regard to the plain-

Therefore, the following hypothesis for this study

inventive step, Kawada and Inoue (2011) reported thathas been established : The use and composition of at-among 100 decisions made by the Intellectual Property

torney groupings by patent applicants influences caseHigh Court in 2010, 15 (15%) were revoked, andsuccess rate.

among 111 decisions made by the Intellectual Property

This hypothesis is substantiated here-

inafter.

High Court in 2011, 20 (18%) were revoked.
Concerning the patent attorney system in Japan,

1.2.

Previous Studies

Arai (2005) states that quantitative improvement of

There have been a limited number of previous stud-

professional representatives has been attempted,

ies concerning the relationship of attorney use to civilamong the intellectual property strategies adopted in

infringement cases.

Japan.

However, there have not been

Such an attempt was made because supporting

any prior studies on the relationship of attorney use tooperations were found to be necessary for the aspects

administrative litigation cases seeking revocation ofof acquisition of rights, use of rights, and dispute

examination decisions.

resolution.

The existing studies men-tioned above do not appear to have targeted cases in

Bausch (2009) examined the role of pat-ent attorneys in the formulation of international intel-

which patent attorneys are the sole representatives, or

lectual strategies at all levels.

cases in which both patent attorneys and lawyers arestatements relate to license negotiations and litigation,

Specifically, Bausch’s

41

〈日本知財学会誌〉 Vol.12 No.1― 2015

as well as patent applications, in the home countries ofCommissioner of the JPO is a defendant ; a typical ex-

applicants ; international applications regarding which

ample of this kind of decision is a decision made as apriority was claimed under the Paris convention ; andresult of an examination relating to efforts to overturnmeasures against invalidation assertions by third par-a final rejection7.

ties following patents.

cation of inter partes appeal decisions in which the

The structure of this paper is as follows.

The other type of case seeks revo-

First, theCommissioner of the JPO is not a defendant ; A typicalbackground and research method are explained inexample of inter partes reexamination decision is a de-Chapter 2.

cision made as a result of an examination for invali-

Observations follow in Chapter 3, anddation 8.

Chapter 4 contains the study’s conclusions.

2.

Background and Research Method

This paper targets ex parte appeal cases

seeking revocation of trial decisions concerning final
rejections of patent applications.

For comparison,cases seeking revocation of trial decisions concerning
final rejections of trademark applications are referred

2.1.

Backgroundto as well.

A three-tiered judicial system has been adopted in

As described in 1.1, power of attorney in cases seek-

Japan, meaning that trials can be conducted in up to

ing revocation of examination decisions is given to Jap-

three instances per case4.

anese patent attorneys.

However, with regard to

Such power of attorney has acases seeking revocation of examination decisions

history of nearly 70 years ─ from 1948 to the present

made by the Japan Patent Office, the first instance is─ and is an important condition for patent attorneys

omitted, and an action is filed directly with the Intel-

who protect applicants and undertake application-relat-

5

lectual Property High Court (Fig. 1) .

There are two

ed operations. Additionally, trials of refusal, which arereasons for this : first, examinations performed by the

preliminary steps in cases that aim to overturn trial

Japan Patent Office are conducted based on procedures

decisions, are mostly performed by a patent attorney.

similar to court trials (Japan Patent Office, 2013) ; andPatent attorneys also provide representation for patentsecond, cases relating to intellectual property are high-applications before such requests.

ly technical (Japan Patent Office, 2013).

There aresaid to be efficient and economical for patent attorneys,

two types of cases in which revocation of examination

who are familiar with the content of applications and6

the technologies of the corresponding technical fields,

decisions is sought in Japan .

One type of case seeks

revocation of ex parte appeal decisions in which theFig. 1to be representatives for these plaintiffs.

Relationship between Japan Patent Office and Courts

Japan Patent Oﬃce
Decision of
RefusalApplication

CourtsAppeal against
Decision of RefusalIntellectual Property
High Court

Examination

Decision of
Grant

42

Thus, it can be

Appeal Decision ofInvalidation

Supreme CourtEffect of Attorney Groupings on the Success Rate in Cases Seeking to Overturn Trial decision of refusal of Patent Applications in Japan

In many cases, lawyers who are not patent attorneys

As a result, data was acquired on a total of 284 cases

begin to represent clients at the stage at which revoca-

seeking revocation of examination decisions. A single

tion of examination decisions are sought, joining thecase dismissed because of elapse of the term for action

patent attorneys who have represented such clients at

was excluded from the total.

earlier stages.

obtained on 283 cases in total.

This is because lawyers are experts inConsequently, data waslitigation, so they can help achieve smooth progress

Data was visually and manually classified into thethroughout the litigation process by working together

following categories, among others : (i) revocation ;with patent attorneys.

(ii) dismissal ; (iii) percentage of all plaintiffs that

Moreover, after examination

decisions have been made by the Patent Office, patent

were foreigners ; and (iv) attorney groupings.

attorneys sometimes withdraw, and only lawyers rep-tabase was then created for analysis.

resent relevant cases at the stage of seeking revoca-

2.2.2.2. Data Collection related to Applications

tion of examination decisions.

for Trademark Registrations

Such cases are quiterare, however.

A da-When searching for specific precedents in the trademark precedent database, focus was on the terms

2.2.

Research Method

2.2.1.

“trademark right” and “cases seeking revocation of ex-

Databases Usedamination decisions,” and the keywords “designated

The following databases were used for data colle-

representative” and “dissatisfaction 20” were used.

ction : the “astamuse project patent precedent data-

The term “dissatisfaction 20” is a combination of “dis-base”9 and “astamuse project trademark precedent da-satisfaction,” which refers to trial decisions, and “20,”10tabase,” both of which are the property of the astamuse

the first two digits signifying the years since 2000.

company, Ltd., which has its head office in Tokyo, Ja-

The period targeted for research is the same as thatpan.

used for the patent-related research described above.

2.2.2.

Data Collection

2.2.2.1.

As a result, data was acquired for a total of 61 cases

Data Collection related to Patentseeking revocation of examination decisions, and thenApplications

visually and manually classified into the categories of

To search for specific precedents in the patent prec-(i) revocation ; and (ii) dismissal.

As describededent database, focus was placed on the terms “patent

above, a database was then created for analysis.

right” and “cases seeking revocation of examination

2.2.3.

Important Matters regarding Data

decisions,” as well as the keywords “designated repre-

The patent and trademark precedent databases weresentative,” “decision of rejection,” and “inventive

based on the data provided by the Supreme Court instep.” The term “designated representative” refers to

PDF format.

11

It should be noted that there is a possi-

a staff member designated by the Commissioner ofbility that such databases did not cover all decisions.

the JPO as the person who conducts a case for revoca-

Furthermore, although effort was made not to mis-tion of examination decisions, or the like.

count when compiling the database, the aforemen-This key-

word never failed to emerge in searches about cases of
revocation of ex parte appeal decisions.

tioned classification was undertaken manually.

The keyword“inventive step” was used in association with data.

2.3.

Data Processing

Data was collected on decisions to revoke resulting

Using the collected data, the following were researc-

from trial decisions relating to rejection of inventive

hed : the case success rate for plaintiffs ; the percent-step among all trial decisions made from January 2008

age of plaintiffs that were foreigners ; attorney group-

to January 20, 2013 that were recorded in the database.

ings ; the relationship between the case success rate43

〈日本知財学会誌〉 Vol.12 No.1― 2015
Table 1

Plaintiff Success Rate
PatentDecision

Number of cases

Rate (%)

Number of cases

Rate (%)

Revocation(in favor of plaintiff)

64

22.5

26

42.6

Dismissal(against plaintiff)

219

77.1

35

57.4

Withdrawn
Total

1

0.4

0

0

283

100

61

100

for plaintiffs and attorney groupings ; and the relationship between the case success rate for plaintiffs andthe number of attorneys. The results will be reported
in this order.
2.3.1.

Trademark2.3.2.

Relationship between Plaintiff Success
Rate and Attorney Groupings

2.3.2.1.

Patent Applications

Fig. 2 shows the percentage of trial decisions that

Plaintiff Case Success Rate

were revoked in which the representatives in patent

Table 1 shows the case success and failure rates forapplication cases were only patent attorneys (i.e., one

plaintiffs, calculated as percentages of all decisions.

or more such attorneys), only lawyers (i.e., one or

As shown in the Table, decisions to revoke resulting

more such lawyers), and mixtures of patent attorney(s)from trial decisions relating to rejection of inventive

and lawyer(s).

step accounted for 64 cases (22.5%) out of the total of

revocation was 25.4%, when only patent attorneys rep-

As shown in Fig. 2, the highest rate of

283 cases.

Despite parameter differences, these re-resented cases ; the second-highest rate was 20.8%,

sults seem low compared with the 42.6% success rate

when patent attorneys and lawyers represented cases

for plaintiffs in cases concerning applications for trade-

together ; and the lowest rate was 11.1%, when only

mark registration.

lawyers represented cases.

However, these results showed aThat is to say, the suc-more favorable rate for plaintiffs than the results

cess rate for cases in which only patent attorneys

shown by Kawada and Inoue (2011, 2012).

In anyserved as representatives was about 2.3 times higher

case, as instructed by Kawada and Inoue (2011),

than the rate for cases in which only lawyers served aswhether or not the success rate in cases was highrepresentatives, and about 1.8 times higher than thewould become an important point for patent applicantsrate for cases in which both patent attorneys and law-

who made requests that were not accepted to judge

yers served as representatives.

whether or not they should submit their disputes to

2.3.2.2.

the court as plaintiffs.

Applications for Trademark Registration

Fig. 3 shows the percentage of examination deci-

Incidentally, the plaintiff success rate in cases con-sions that were revoked in which the representatives

cerning administrative litigation including intellectualin trademark application cases were only patent attor-

property cases and other administrative cases by coun-neys (i.e., one or more such attorneys), only lawyers

try, which were 17.4% for Japan (2000), 21.0% for Eng-(i.e., one or more such lawyers), and mixtures of pat-land (2000), and 10.6% (1999) for Germany (i.e., theent attorney(s) and lawyer(s) in relation to applications

Administrative Court) (The figures for the U.S. andfor trademark registrations.

France are unknown.) (Supreme Court, 2002).

highest rate of revocation was 21.3%, when only pat-

As shown in Fig. 3, theent attorneys represented cases ; the second-highest
rate was 11.5%, when only lawyers represented
cases ; and the lowest rate was 9.8%, when patent at44

Effect of Attorney Groupings on the Success Rate in Cases Seeking to Overturn Trial decision of refusal of Patent Applications in Japan

Fig. 2

Revocation and Dismissal Rates for Attorney Groupings (Patents)

（%）
100
90
80
70
60
50
40

Dismissal

30

Revocation

20
10
0

Fig. 3

Cases solely
represented
by patent
attorneys

Cases solely
represented
by lawyers

Cases jointly
represented
by patent
attorneys andlawyers

Revocation and Dismissal Rates for Attorney Groupings (Trademark)

（%）
100
90
80
70
60
50

Dismissal

40

Revocation

30
20
10
0

Cases solely
represented
by patent
attorneys

Cases solely
represented
by lawyers

Cases jointly
represented
by patent
attorneys andlawyers

torneys and lawyers represented cases together.

success rate for joint representation by patent attor-

That is to say, the success rate for cases in which only

neys and lawyers, which accounted for the second-

patent attorneys served as representatives was about

highest position in patent application cases, was in

1.6 times higher than the rate for cases in which only

third place.

lawyers served as representatives, and about 2.2 times

2.3.3.

higher than the rate for cases in which both patent at-

Relationship between Plaintiff Success
Rate and Number of Attorneys

torneys and lawyers served as representatives. Here,As shown in Fig. 4, with respect to the patent case,in cases of applications for trademark registration, thethe success rate for cases without representation by45

〈日本知財学会誌〉 Vol.12 No.1― 2015

Fig. 4 Relationship between Plaintiff Success Rates and Number of Attorneys(Patent Attorneys)
（%）
35.0
30.0
25.0
20.0
15.0
10.0
5.0
0.0
0

1

2

3

4

5

6

patent attorneys (i.e., zero attorneys) was 11.1%,

the lawyers are different in level, and the revocation

which was the lowest rate.

and dismissal rate might depend on the difference ofThus, it was discoveredthat the success rate in cases with representation by

the specialties.

attorneys was higher than that for cases without repre-

with a little experiences of cases about intellectual

sentation by attorneys.

property rights.

Next, the plaintiff successrate for cases with representation by two attorneys
was higher than that for cases with representation by asingle attorney.

3.

Because there may be some lawyer

Observations

Moreover, the plaintiff success rate

for cases with representation by three attorneys was

The results arising from this study support the hy-higher than that for cases with representation by two

pothesis that the composition of attorney groupings

attorneys.

chosen by patent applicants influence plaintiff successOn the other hand, the success rate forcases with representation by four attorneys was mark-rate.

edly lower.

vided below.

The reason why the success rate for cas-

The grounds for the related arguments are pro-es with representation by four attorneys was markedly

There were 283 cases submitted from January 2008

lower than that for cases with representation by five

until January 2013 seeking revocation of trial decisions

attorneys will be described in the following section of

because of the lack of the inventive step.

“3. Observations”.

es, it was observed that the plaintiff success rate clear-

In addition, it should be noted that the number ofIn such cas-ly varied in accordance with differences in attorney

patent attorneys listed in Fig. 4 might be different fromgroupings.

the number of patent attorneys who substantially andtation by patent attorneys alone was about 2.3 times

actually worked for the cases.

This is generally be-higher than that for cases with representation by law-cause individual attorney is concerned with many otheryers alone, and about 1.8 times higher than that forcases at the same time.

cases with joint representation by lawyers and patent

Therefore, it is rare that plu-

The success rate for cases with represen-

ral attorneys participate in one case simultaneously.

attorneys (Fig. 2).

Also, it should be noticed that the specialties among

be the most effective for plaintiffs (i.e., patent appli-

46

These facts suggest that it would

Effect of Attorney Groupings on the Success Rate in Cases Seeking to Overturn Trial decision of refusal of Patent Applications in Japan

cants) to use only patent attorneys as attorneys in or-

vention seeking a patent ; and (2) for patent applica-

der to acquire the highest case success rates.

tions, the success rate for cases with representation byHere, the reason why appointment of patent attor-

lawyers alone was in the lowest position, but for trade-neys is advantageous in terms of case success rate ismark registration applications, which are not deeply

reviewed.

According to the 2012 report of Yamada

related to technical findings, such success rate changed

and Inoue, reasons for revocation of trial decisions re-position with that for cases with representation by alating to rejection of inventive step can be roughly di-

combination of patent attorneys and lawyers (Fig. 3).

vided into the following categories : (1) erroneousWith regard to the number of attorneys, in light ofidentification of inventions being applied for ; and (2)the expertise needed and the advanced level of knowl-

existence of motivations, factors that prevent patentedge that is relevant in intellectual property cases,

approval, and unprominent effects.

Category (1)there is no need to explain the reason why cases con-above can be further subdivided into : (i) misunder-

ducted with the involvement in attorneys have a higher

standing of the nature of the invention ; (ii) mishan-

success rate than those conducted without.

dling of papers related to cited inventions ; and (iii)more attorneys that are involved (up to three attor-

misunderstanding of how the nature of the inventionneys), the higher the case success rate becomes.

corresponds with and differs from cited invention(s).

This is because a team of three or fewer attorneys is

Category (2) above can be further subdivided into : (i)appropriate, as the attorneys complement each other,The

whether or not there could be results or opportunities

and a synergistic effect regarding knowledge and expe-(i.e., motivations) relating to the invention being ap-

rience leading to better results can be easily obtained.

plied for ; (ii) whether or not there is difficulty (i.e.,

Attorneys often engage in a great deal of discussion

reasons that preclude patents from being granted) con-with inventors and applicants, and formulate casecerning a combination of cited inventions used to satis-

strategies.

fy the condition that the invention being applied for canable to complement each other.

be easily conceived of ; and (iii) whether or not advan-

volving four or more attorneys, attorneys can begin totageous effects (i.e., prominent effects) of the inven-bring up unnecessary points and deviate from the topic

tion applied for would be unexpected by those skilledof discussion.

in the art.

ment cannot be reached tend to occur easily. This canUnderstanding of the nature of the inven-

Three or fewer attorneys are arguably
However, in cases in-

As a result, situations in which agree-tion, motivation, elements that would prevent patents

cause a lower case success rate for plaintiffs.

from being granted, and prominent effects have deep

cause of this, greater numbers of attorneys can lead torelationships with technical findings.

lower case success rates for plaintiffs.

Such matters

Be-

Regarding rea-can be easily understood by person skilled in the art onsons for this Aoki and Sasahara (2012) observe that fora daily basis.

typical disputes, increasing of the number of attorneys

Moreover, technical findings are impor-tant to the case.

Therefore, the fact that appointmentof patent attorneys is advantageous can be affirmed

may cause worse teamwork, or may cause poor performance in trials, due to moral hazard within a team.

based on the following : (1) as stated in 2.1, patent at-

In order to clarify the reasons of the above conclu-

torneys make a request for trial decision as a prelimi-

sion, we conducted interviews with ten patent attor-

nary step in a case for revocation of an examination de-neys and two lawyers.

cision, and they also provide representation regarding

all of the attorneys agreed that a well-known proverb

the patent application before such a request in mostsaying that In addition, “Two heads are better thancases.

Thus, patent attorneys have many opportuni-

ties to gain technical knowledge about the specific in-

According to the interviews,

one.” could be applied to the conclusion as a major
reason.

This is because if there is only one head it
47

〈日本知財学会誌〉 Vol.12 No.1― 2015

may fail to find important solutions with which the oth-may cause worse teamwork, or may cause poor perfor-

er head can provide.

mance in trials, due to moral hazard within a team.

Therefore, we believe that themore attorneys that are involved (up to three attorneys), the higher the case success rate becomes.
Furthermore, in order to find out some reasons why

As we discussed above, it is the reasons why is the
success rate for cases with representation by four attorneys lower than that for cases with representationis the success rate for cases with representation by

by five attorneys.

four attorneys lower than that for cases with represen-

the success rate for cases with representation by five

tation by five attorneys, we asked to the twelve inter-

attorneys lower than that for cases with representation

viewees mentioned above to provide us with theby three attorneys.

reasons.

All attorneys have provided us with sub-In addition, it is the reasons why is

In any case, this study has not enabled definition of

stantively the same conclusion in individual expres-the mechanism by which the appropriate number of at-sions.

torneys can be determined, which would serve to en-

Namely, an argument of intellectual property

matters performed by four attorneys usually produces

hance the case success rate for plaintiffs.

two or more different opinions, and it is often difficult

remains to be addressed in the future.

to determine participant’s policies using decision bymajority owing to the even number.

In addition, in Ja-

4.

This issue

Conclusionpan, it is considered that it is good to argue with threepeople in total in order to obtain better ideas, whereas
English-speaking people say two.

They say this isThis study focused upon the importance of attorneygroupings for cases seeking revocation of trial deci-

because the third person would act as an umpire before

sions in Japan.

the arguments conducted by the two attorneys in the

portance on the case success rate for plaintiffs.

group, and the umpire would generally lead the arguments to favorite solutions.

It also analyzed the effect of such im-

With regard to cases seeking revocation of trial deci-

As we discussed above,sions concerning patent applications, the effect of

it is assumed that the argument performed by four at-groups of plaintiff attorneys on the percentage of cases

torneys tends to lower the success rate for cases ow-

in which the plaintiff was successful was analyzed. As

ing to the lack of majority votes and umpire person.

a result of analysis, the highest rate of revocation was

On the other hand, if five attorneys simultaneously

25.4%, when only patent attorneys represented

join the argument, it seems to be better than four at-cases ; the second-highest rate was 20.8%, when pat-torneys in finding their policies, because they can use

ent attorneys and lawyers represented cases together ;decision by a majority vote.

and the lowest rate was 11.1%, when only lawyers rep-

However, in general, it isnatural and possible for three of five attorneys to argue

resented cases.

That is to say, the success rate forabout the matters around the same table, but it is quite

cases in which only patent attorneys served as repre-

unlikely for all of the members.

This is because thesentatives was about 2.3 times higher than the rate fornumber of three is, as mentioned above, a good num-cases in which only lawyers served as representatives,

ber to argue about the matters in view of the nature ofand about 1.8 times higher than the rate for cases in

the intellectual property matters and individual time

which both patent attorneys and lawyers served asschedules of each attorney and so on.

representatives.

Therefore, it isnature that the three attorneys discuss and obtain their

It was also revealed that, within the range of 1 to 3

policies in advance, and it is also true that the three at-patent attorneys used for a patent application, higher

torneys will be annoyed by negotiations with the othercase success rates accompany increases in the number

two attorneys about the already-discussed policies. Itof patent attorneys. However, the use of four or more48

Effect of Attorney Groupings on the Success Rate in Cases Seeking to Overturn Trial decision of refusal of Patent Applications in Japanpatent attorneys results in lower case success rates.
The aforementioned results suggest that in regards
to cases seeking revocation of trial decisions concerning patent applications, attorney groupings have important effects on the case success rate for plaintiffs.
Moreover, it has been confirmed that it is advantageous for plaintiffs if only patent attorneys are representatives, and if the number of such patent attorneys
is three.
NOTE
1 A patent applicant is called an appellant at a trial stage.
2 Article 8 of the Japanese Patent Law.
3 Article 178 of the Japanese Patent Law.
4 Article 77 of the Japanese Constitution, Article 2 of theJapanese Court Law.
5 Article 178 of the Japanese Patent Law.
6 Article 179 of the Japanese Patent Law.
7 Article 121 of the Japanese Patent Law.
8 Article 123 of the Japanese Patent Law.
9 “astamuse project patent precedent database” (http://
tokkyo.hanrei.jp/) visited on October 8, 2014.
10 “astamuse project trademark precedent database”(http://shohyo.hanrei.jp/) visited on October 8, 2014.
11 “designated representative” (https://www.jpo.go.jp/shiryou/
kijun/kijun2/pdf/sinpan_binran/80-01.pdf) visited on October 8, 2014.

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