2Future Challenges Concerning the JPO Trial System

The patent trial system has been improved in recent years in various ways including
integration of the invalidation trial system and the opposition system and legalizing
determination of patent invalidity in infringement proceedings. In addition, courts have madeefforts to improve the framework, such as granting the Tokyo District Court and the Osaka
District Court exclusive jurisdiction over litigation related to patents and other intellectual
property, introducing the expert commissioner system and establishing the Intellectual Property
High Court.
However, there are problems that remain unresolved even after these improvement efforts, so
there is a need to examine the direction which should be taken in resolving these problems and to
identify and examine the relevant issues for that purpose.
Among these various problems, this study focused on the following four problems: limitationon the scope of proceedings in litigation for rescinding a JPO trial decision; court judgments on
infringement litigation supposing patent corrections; prevention of the rehashing of invalidation
trials; and institutional characteristics of patent trials as compared with other administrative
trials. Examinations were carried out by the committee based on the results of questionnaire andinterview surveys of companies and overseas surveys, and the direction for solving these
problems and the relevant issues were discussed.

Thus, in order to resolve these problems, there is a

Introductionneed to examine the relevant issues and the
A number of improvements have been made to

direction to take so that the problems can be

the patent trial system of the Japan Patent Officeresolved in the future.

(JPO) by the 2003 and 2004 revisions of the Patent

In this study, we focused on the following

Act and other laws, including integration of the

problems among such unresolved problems, andinvalidation trial system and the opposition system

identified the issues and examined the direction toand legalizing the determination of patenttake so that the problems can be resolved whileinvalidity in infringement proceedings. In addition,

taking into account the results of a questionnairecourts have made efforts in the area of intellectual

survey of users and an overseas survey.

property (IP) litigation so as to establish aframework for improving specialized processing
capability, such as granting the Tokyo District Court

I

and the Osaka District Court exclusive jurisdiction
over litigation related to patents and otherintellectual

property,

introducing

the

of
for

expertcommissioner system, establishing the Intellectual1

Scope of Proceedings and Other Issues
Concerning Litigation for Rescinding a
JPO Trial DecisionThis section examines “(A) the limitation on
the scope of proceedings in litigation for rescinding a
JPO trial decision” and “(B) the outcome of litigation
for rescinding a JPO trial decision to invalidate a

Property High Court and improving the judicial
research official system.
From the viewpoint of a quick resolution of IP
disputes, however, there are problems that remainunresolved even after the establishment or
improvement of such systems and frameworks.

1
IIP Bulletin 2007

Limitation
on
the
Scope
ProceedingsinLitigation
Rescinding a JPO Trial Decisionpatent in the case where the patent claims haverescinding a JPO trial decision to invalidate abeen corrected (narrowed down),” by also focusing

patent in the case where a JPO trial decision on

on the relation with the important issue, which iscorrection for narrowing the patent claims has“(C) whether or not assertions related to patentbecome final and binding during the pendency ofinvalidity can be made in infringement litigation.”litigation for rescinding the JPO trial decision to

The issues (A) and (B) both relate to the coreinvalidate the patent,” the stance taken by the 1999

parts of the system of litigation for rescinding a JPO

Supreme Court judgment (mentioned later) lacks atrial decision, which supports the Japanese patent

legal basis and is extremely questionable in terms ofsystem. While the relationship between the JPO

actual propriety, so it should be reviewed in sometrial and the litigation becomes a major issue in

way as soon as possible.

litigation for rescinding a JPO trial decision, the key

The “catch-ball phenomenon” that occurs

point would be whether advance examination andbased on the ideas underlying the 1976 Supreme

determination by a JPO trial should be required

Court Grand Bench judgment and the 1999

regarding a reason for invalidation or reason for

Supreme Court judgment has notable adverse

refusal that has not been examined and determined

effects such as causing a delay in the procedure. If

in the JPO trial (i.e. (A)) and regarding corrected

this is left as it is, it could directly risk the existence

patent claims that have not been examined andof the JPO trial system and the system of litigation

determined in the invalidation trial (i.e. (B)).

for rescinding JPO trial decisions, which support

In order to evaluate and understand thesethe foundation of the patent system, and could evenissues precisely, it is essential to carry out a basic

affect the existence of the whole patent system. It

legal study including comparative law, in-depth

also seems that the awareness that such reviews

analysis of administrative procedure law going backare essential is rapidly spreading among legal

to general theories, as well as an analysis andscholars and lawyers who are well-versed in thisexamination not only from the theoretical aspect,issue. At the same time, there seem to be somebut also from the aspect of actual propriety.

people who are hesitant about immediately

Therefore, we made a comprehensive examination

changing the stance of the 1976 Supreme Court

from multiple perspectives based on this.

Grand

Bench

judgment,

which

has

been

With regard to “(A) the scope of proceedings inmaintained for more than a quarter of a century,

litigation for rescinding a JPO trial decision,” thebut as mentioned above, it is an urgent matter.

uniform limitation on production (of new reasons for

From a practical viewpoint, while (A) is naturally

refusal/invalidation) (limitation on the scope of

an important issue, rectification of (B) is considered

proceedings) indicated in the 1976 Supreme Court

to be a more pressing issue that needs to be

Grand Bench judgment (mentioned later) not only

addressed first.

lacks a legal basis, but is peculiar from acomparative law perspective, and is also extremely

2

Limitation on the Scope of Proceedings in
Litigation for Rescinding a JPO Trial
Decision: From a Practical Viewpoint
This section examines the legal principles
underlying the judgment of the Grand Bench of theSupreme Court in the knitting machine case(hereinafter referred to as the “principle of the 1976
Supreme Court Grand Bench judgment”) and thejudgment of the Supreme Court in thelarge-diameter, square steel pipe case (hereinafter

questionable in terms of actual propriety. In
addition, it has an essential problem in terms ofcompliance with important court judgments such as
the Supreme Court judgment for the Kilby case andlegislation of Article 104-3 of the Patent Act(particularly the latter). Accordingly, the 1976
Grand Bench judgment, which lacks a legal basis,should be changed as soon as possible.
As for “(B) the outcome of the litigation for2
IIP Bulletin 2007

referred to as the “principle of the 1999 Supreme

invalidation, because even if a new reason were

Court judgment”) from a practical viewpoint.

produced, the trial decision would be rescinded andEven if the holding in the 1976 Supreme Court

the patentee would be given an opportunity forGrand Bench judgment could not be upheld in its

correction. Therefore, there is no need to limit

entirety, it would be necessary to impose certain

production of a new reason in such a case. However,conditions from the viewpoint of a procedural

if production of new publicly known prior art orguarantee such as giving opportunities forsuch is allowed in litigation for rescinding a JPO

amending or correcting patent claims.

decision of approval of a request for trial, theWith regard to a limitation on the production ofpatentee will be deprived of an opportunity fora new reason for refusal in litigation for rescinding acorrection, so this case should be treated in

JPO decision rendered in a trial against an

accordance with Article 159(2) of the Patent Act

examiner’s decision of refusal, the limitation shouldfrom the viewpoint of a procedural guarantee.

apply to cases that correspond to Article 159(2) of

While efforts are also being made to resolve

the Patent Act in principle, such as cases where athis issue fundamentally from an interpretative

reason for refusal has been produced based on

approach, there is the possibility of resolving theevidence that had not been produced in the JPO

issue through legislation. Such legislative measureexamination or trial, in which case there is a need to

could be taken from two directions: (i) discretionary

provide another opportunity for amendment. It isremand; and (ii) allowing amendment or correction

construed that, in any other cases, such as thein the litigation phase. From the perspective of anfollowing, there is no need to limit the production ofexpeditious resolution of invalidation trials, it would

a new reason for refusal in litigation for rescinding a

be reasonable to allow amendment or correction

JPO trial decision because an opportunity forafter the filing of litigation for rescinding the JPO

amendment has already been provided: (a) the casetrial decision.

where the evidence has already been produced inWith the aim of eliminating the adverse effects

the JPO examination or trial, but the reason hasof the catch-ball phenomenon caused by the 1999

not been determined in the examination or trial; (b)Supreme Court judgment principle, a system for thethe case of switching between the primary anddiscretionary rescission of a JPO trial decision wassecondary cited references; and (c) the case of

introduced with the 2003 revision of the Patent Act.

determining the inventive step after revising an

In judicial practice, however, the other party often

error in the finding of differences between thedoes not accept the discretionary rescission and theinvention at issue and the cited reference. In

court makes a determination on the rescission bycontrast, it is construed that production of a newcarefully examining the contents of the request forreason for refusal should be limited when thethe trial for correction, so the adverse effects of thereason is based on evidence that has not beencatch-ball phenomenon have not been completely

produced in the JPO examination or trial, because

dealt with yet.

there would be a need to provide anotheropportunity for amendment.
Meanwhile, in the case of litigation forII

Court Judgments on Infringement
Litigation
Supposing
PatentCorrections

1

Patent Infringement Litigation and Patent
Corrections
This section inquires into the relationshiprescinding a JPO decision rendered in a trial forinvalidation, there is no problem in terms ofprocedural guarantee for the person who was theplaintiff at the time of the JPO trial decision of
non-acceptance of a request for trial (the requesterof the JPO trial) to produce a new reason for3
IIP Bulletin 2007

between patent infringement litigation and patent

final and binding, because patent infringement cancorrections.

be found and the patent can be judged to be valid.

With regard to the relationship between Article

In the case of (2), it can be construed that the claim

104-3(1) of the Patent Act and a request for

can be dismissed before the correction becomes final

correction in patent invalidation trial proceedings or

and binding, because the defendant’s article

a request for a trial for correction, even when there(process) will no longer fall within the technicalis a reason for invalidation, if a correction is allowed

scope of the patented invention in question even if

and the right becomes valid, the court should be

the patent becomes valid through the correction.

able to examine and determine the correction as

When the determinations differ, the traditional

well. The court should be able to examine andview is to carry out a retrial if a JPO trial decision todetermine whether or not the correction should beinvalidate the patent becomes final and binding

allowed irrespective of whether or not the JPO has

after a court judgment to uphold the claim hasgiven a determination on the correction.

become final and binding in patent infringement

Since patent infringement litigation and alitigation. However, an opposing view is possible, so

request for a JPO patent invalidation trial would bethis issue should be reviewed in the future.

uniformly determined by the Intellectual Property

Meanwhile, a retrial will not be carried out if a JPO

High Court in the end, the determinations in thetrial decision denying the invalidation of the patent

litigation and the trial are not likely to differ

in question becomes final and binding after a court

ultimately unless there is a long time span between

judgment to dismiss the claim due to patent

the times these proceedings were carried out. The

invalidity has become final and binding.

same applies to corrections. However, as it is

In addition, when a correction narrowing thedesirable to avoid differences in the terminations in

scope of patent claims is allowed after a court

the first-instance phase or the JPO trial phase as

judgment to uphold the plaintiff’s claim has become

well, and because there is sometimes a long time

final and binding in patent infringement litigation,

span between the time of patent infringement

and the defendant’s article (process) no longer falls

litigation and the time of a request for a JPO patent

within the technical scope of the patent as a result,invalidation trial in the Intellectual Property Highthe outcome based on the traditional view would be

Court, it is necessary to make determinations by

to hold a retrial. However, an opposing view ispaying sufficient attention to the trial decision and,possible. Meanwhile, a retrial should not bein some cases, the court could also look at the trend

permitted when a correction is allowed after a courtof trial decisions.

judgment to dismiss the claim due to patent

Individual cases that particularly present

invalidity has become final and binding.

problems are as follows: (1) the case where thedefendant’s article (process) falls within the2

DeterminationofCorrections
inInfringement Litigation
This section examines past court judgments inorder to ascertain how “corrections of rights” aredetermined in infringement litigation related topatents, etc. and how they affect the relevant court
judgments.
First, since past court judgments have been
sufficiently investigated and examined in the“Study on Court Judgments Related to Correctionsof Rights in Infringement Litigation,” which is antechnical scope of the patented invention inquestion both before and after the correction and aninvalid patent becomes valid through the correction;and (2) the case where an invalid patent becomesvalid through the correction but the defendant’s
article (process) which had fallen within the scope ofthe technical scope of the patented invention inquestion no longer falls within that scope after thecorrection. It is construed that, in the case of (1), theclaim can be upheld before the correction becomes4
IIP Bulletin 2007

article compiled by the Third Subcommittee of thelitigation, so today it also seems better to have theFirstIntellectual

court determine corrections to a reasonable extent.

Property Association, consideration was given to the

In that case, it is hoped that unified determinations

contents thereof.

are made between the JPO and the court throughPatentCommittee,

Japan

This study examines past court judgments byeven closer coordination with each other so as todividing them into four categories. The examination

avoid any differences in the determinations assuggests that the courts tend to make some kind ofmuch as possible.

determination on corrected patent claims evenwhen the correction has yet to become final andbinding, when the outcome does not differ beforeIIIand after the correction or when there is no dispute

PreventionofInvalidation Trials

Rehashingofbetween the parties over said correction.
Then,

additional

investigation

and1“Rehashing of Invalidation Trials”
This section examines the “rehashing ofinvalidation trials” (requesting invalidation trials
multiple times) from the viewpoint of the proprietyof the current provisions of Article 167 of the Patent
Act and whether or not any further regulation isneeded.
Article 167 of the Patent Act provides for theprohibition of double jeopardy in order to preventthe rehashing of invalidation trials. In general civil
procedure, on the other hand, rehashing isprevented based on res judicata, prohibition ofreinstitution of the suit in the case where the action
has been withdrawn after the final judgment on thecentral issue in the suit, and fair and equitableprinciples. In comparison, Article 167 provides the
subjective scope of the effect to regulate requests fortrials to cover all people, but limits the objective
scope of the effect to requests for invalidation trials
on the basis of the same facts and evidence.
This is reasonable to some extent as the broad
subjective scope and the narrow objective scope arebalanced. In actual JPO trials or litigation, whether
or not certain facts and evidence correspond to the“same facts and evidence” is concretely determinedin a manner that leads to a reasonable conclusionfrom a practical viewpoint, rather than one basedon the formal unity of facts and evidence. It would
also appear that no serious problems have occurredin actuality from a party requesting invalidation
trials multiple times.
When examining Article 167, careful study

examination of past court judgments were carriedout in order to ascertain the trend after theenforcement of the Act for Partial Revision of the
Court Act, etc., which introduced Article 104-3 of the
Patent Act.
According to the results of the investigation,
the courts had made some kind of determination on
the correction in almost all cases even when thecorrection had yet to become final and binding,when a JPO trial for correction had actually been
carried out or a request thereof had actually beenmade. Conversely, the cases in which the court had
not made a determination on the correction werewhen the request for a trial for correction had
already been withdrawn or when such a request
had not yet been made.
There

were

a

few

cases

where

the

determinations differed between the court and the
JPO trial, which were cases where a reason forinvalidation existed for corrected patent claims that
became final and binding. The reason for thisincludes the fact that the evidence for determining
whether the corrected invention is independently
patentable differs.
Overall, however, there were hardly any cases
where differences were found in the determinations.
At present, it is considered to be very unlikely forthe determinations to differ in the end.
Also, it is more favorable to be able to resolve
cases as expeditiously as possible at one time,
considering the overall burdens associated with5
IIP Bulletin 2007

should be made by sufficiently considering thedealing with the proceedings. This seems to be therelevance with the following: the fact that there is aonly case where the same person has requested

strict restraint on making an amendment that

invalidation trials four times, and the reason for thiswould add a reason for invalidation after requesting

repetition is unknown. The requester of invalidation

a JPO trial; and the fact that the 1976 Supremetrials could have been aware of all the reasons for

Court Grand Bench judgment limits the reasons toinvalidation from the start and revealed them one

be examined in litigation for rescinding a JPO trial

by one, or the requester could have kept on

to reasons for invalidation that have been madediscovering a new reason for invalidation after

subject to the request for trial.

having requested an invalidation trial.
(c) The four requests for invalidation trials are notbased on the same facts and evidence.

2

Case Example of Rehashing of Disputes
and Prevention ThereofThis section focuses on a patent dispute related
to a “recording paper” as a case example of therehashing of a dispute, and examines thepreventive measures.
The same person has requested aninvalidation trial four times for this patent. In
addition, two civil actions have been filed for thesame patent, with the requestor of the invalidation
trials and the patentee as the parties to the suit.
Among the four invalidation trials, the JPO
rendered a decision of non-acceptance of the request
for the trial in the first three trials, and the Tokyo
High Court upheld this trial decision in thelitigation for rescinding the JPO trial decision. In
contrast, in the last case, the Tokyo High Court
rescinded the JPO’s trial decision of non-acceptanceof the request for trial.
The dispute can be characterized by thefollowing four points:(a) The same person has contested the validity ofthe same patent multiple times.
(b) Among the four requests for invalidation trials,
the time span between the first and the second
requests was only slightly less than four months, so
a joinder of proceedings may have been possible.
However, even if the number of invalidation trials
were reduced in this way, when the reason forinvalidation differs as in the case between the firstinvalidation trial and the second invalidation trial,
the joinder cannot be expected to have much effecton simplifying the proceedings or considerably
reducing the actual burden on the patentee for(d) Whereas the JPO rendered a decision of
non-acceptance of the request for trial in all four
invalidation trials, the Tokyo High Court upheld thefirst three JPO trial decisions and rescinded thefinal fourth trial decision.
According to the results of a questionnaire
survey conducted by the committee, there is notnecessarily a large demand for revising the current
system that allows the same person to request
invalidation trials multiple times. Nevertheless,possible measures for preventing the rehashing ofdisputes are examined below.
Possible measures for limiting multiple
requests for invalidation trials, irrespective ofwhether the requester is the same person ordifferent persons, include the following: (a) limiting
the number of times trials can be requested; (b)limiting the period during which trials can berequested; (c) limiting the persons eligible to request
trials; and (d) rejecting any later requests for trials
in certain cases even when they are not based on
the same facts and evidence, by revising Article 167of the Patent Act. Moreover, the following can beconsidered as possible measures for limiting
multiple requests for invalidation trials by the same
requester: (e) limiting the number of times trials
can be requested; (f) rejecting any later requests fortrials in certain cases even when they are not basedon the same facts and evidence, if the requester isthe same person; and (g) increasing the amount of
the fee for requesting a trial for the second request
onward when the requester is the same person.
However, all of these measures have the6

IIP Bulletin 2007

problem of increasing the risk for existence ofevidence rule, the court does not conduct thepatents that incorporate reasons for invalidation asfact-finding

a result of limiting requests for invalidation trials.

whether or not the administrative organ has

Therefore, this problem needs to be carefully

presented sufficient grounds for a person who

examined. With regard to this point, the final

makes reasonable judgments to affirm theoutcome of the dispute over the recording paper

conclusion given by the administrative organ. Thus,

patent cannot be predicted, but it would bein practice, the court carries out the proceedings

necessary to closely watch the outcome of the fourth

mainly based on the records of the administrative

request for invalidation trial.

trial. There are two systems that are associatedproceeding

again,

but

examines

with the substantial evidence rule: a system to block
the invocation of a certain scope of new evidence
after the administrative trial proceedings and a

IV Institutional Characteristics of Patent
Trials as Compared with Other
Administrative Trials

system that requires the administrative trial organ
to investigate any evidence of which the invocation
is not blocked by carrying out (another) proceeding(which is effectively a requirement for a remand). It

1

Administrative Trial System
Administrative trials are generally carried out
by an expert administrative organ such as anadministrative committee based on proceedingsthat are equivalent to judicial proceedings to
examine administrative dispositions or rulings on
appeals against such dispositions. There are various
kinds of administrative trials under the current law,and their organization and procedures vary.
Administrative trials can be divided into theprocedure for judging disputes and the procedure
for active enforcement of administrative power.
This section investigated and summarized thetrials by the JPO (trial against an examiner’s
decision of refusal, trial for invalidation and trial forcorrection), trials by the Fair Trade Commission,
marine accidents inquiries, reconsiderations
regarding national taxation-related penalties, andthe trials related to the surcharge system under the
Securities Exchange Act, from such viewpoints as
the proceedings, trial organization and the past trial
results.

should be construed that the application of thesubstantial evidence rule and these systems require
statutory legal basis. Under the current law, there
are such provisions in the Anti-Monopoly Act, Land
Use Planning and Control Procedure Act, and theRadio Act (only the substantive evidence rule).
However, there are no such provisions for patent
trials under the current Patent Act.
The introduction of the substantive evidence
rule and these systems in patent trials is examined
below.
First, from an analytical point of view, it ispossible to stipulate legally the substantive evidence
rule for patent trial decisions for which theadministrative organ has no discretion. The scope of
the application of the substantive evidence rule inthis case is the process until concrete facts are foundbased on the evidence. However, there is a strong
tendency in Japan whereby judges conductfact-findingforthemselves

even

when

the

substantive evidence rule is legally stipulated. In
addition, it is rare for the fact-finding to become thesubject of a dispute in patent trials. Therefore, the2Administrative Trials and Substantial
Evidence Rule
One of the characteristics of administrative
trials that adopt quasi-judicial proceedings is the“substantial evidence rule” in their relationshipwith litigation proceedings. Under the substantial

substantive evidence rule may not be verysignificant in actuality. Indeed, as fact-finding andcomparison of the facts with laws and regulations
sometimes cannot be distinguished clearly in actual
cases, so there is a possibility that the substantial
7

IIP Bulletin 2007

evidence rule will also be applied in the process ofcomparing the facts with the requirements underlaws and regulations.
Secondly, in the case of not legally stipulating
the substantive evidence rule, it is possible tostipulate legally a system that blocks the productionof new evidence or the claiming of new facts after apatent trial decision. Such a system may in fact bemore significant than the substantive evidence rule.
Nevertheless, while the scope of facts that can beclaimed in patent trials is broad, there are limits tothe scope of facts that can be investigated by thetime of the patent trial, so there may be not manycases where later claim of facts could be blocked on
the basis that those facts could have been claimed
during the trial proceedings.
Thirdly, with regard to patent trials for which
neither the substantial evidence rule nor any othersystems to block evidence or claims after the trial
proceedings is legally stipulated at present, it isquestionable whether there is a legal basis forlimiting the scope of proceedings of litigation for
rescinding JPO trial decisions and requiring a
remand to the JPO trial proceedings when there is
any new fact or evidence only because patent trial
proceedings are quasi-judicial proceedings.
Note that this summary outlines the contentsof the report that has been written by multiplecommittee members based on the discussions andpresentations made by members at committee
meetings, and the matters contained in thissummary are not necessarily the unified view of thecommittee as a whole.
(Researcher: Yusuke IKESHIMA)8IIP Bulletin 2007