2

Desirable Trial System for Early Acquisition of Rights

The number of requests for a trial against an examiner’s decision of refusal is increasing
every year, creating concern that the waiting period for proceedings will become longer. Therefore,
it is necessary to consider a desirable system with a view to increasing the speed and efficiency ofproceedings. This research study considered the future direction of a desirable trial system bystudying, organizing and analyzing users’ needs with regard to the current system and theoperation thereof, as well as the systems of other major countries, in order to promote the earlyacquisition of rights. The themes taken up in this research study are the advisability of the time
limit for filing a request for a trial against an examiner’s decision of refusal, the way to state the“grounds for a request” in the written request for such a trial, and the use of reexamination before
a trial, interrogation before a trial, the remand system and accelerated proceedings. Divisional
applications, continuation applications and requests for continued examination were also
considered. In particular, with regard to the time limit for filing a request for a trial against an
examiner’s decision of refusal, the majority took the ground that it is appropriate to extend thetime limit to around 90 days, as the current period of 30 days is not sufficient to consider the
propriety of filing a request for a trial, in light of the questionnaire survey results, systems inother countries and time limits in other appeal systems in Japan.

I

Introduction

against an examiner’s decision of refusal. It
is thus necessary to consider the system witha sufficient understanding of those users’
needs and in light of consistency withsystems in other countries.
With awareness of the issue above, thisresearch study aims at considering the future
direction of a desirable trial system bystudying, organizing and analyzing users’
needs with regard to the current system andthe operation thereof, as well as the systemsof other major countries, in order to promote
early acquisition of rights.

The JPO is steadily increasing the speed
and efficiency of patent examination byincreasing the number of examiners andexpanding the outsourcing of prior art
document search. Thereby, the number ofcases examined is increasing year by year.
Along with this, the number of requests for a
trial against an examiner’s decision of refusal
is on the increase; however, it is not easy toincrease the number of trial examiners.
Although the average waiting period for theproceedings of a trial against an examiner’s
decision of refusal was 27.1 months in 2006,
there is concern that the waiting period forthe proceedings will become longer due toincrease in the number of requests filed. Suchprolongation of the waiting period is notdesirable from the perspective of users’ needs
for early acquisition of rights. Consequently,
it is also necessary to consider a desirable
system of trial against an examiner’s decisionof refusal from the viewpoint of increasing
the speed and efficiency of the proceedings.
On the other hand, there are various
users’ needs with regard to the system of trial

II

Regarding the Time Limit for Filinga Request for a Trial against an
Examiner’s Decision of Refusal

1Time Limit for Filing a Request for a
Trial against an Examiner’s Decisionof Refusal – From Users’ Perspective –

●

10 ●

IIP Bulletin 2008

With regard to the time limit for filing arequest for a trial against an examiner’s
decision of refusal, which is prescribed under
the current law as within 30 days from thedate on which a certified copy of theexaminer’s decision of refusal has been
served, some users say that the current time
limit is sufficient. However, there is an
opinion that the period of 30 days is too shorttaking into account the time that is requiredfor procedures taken in relation to therepresentative and additional tests, etc. thatare necessary to prove the effect of theinvention in question. In addition, some pointout that there are, under the present
circumstances, cases where a decision to filea request for a trial is made without
considering the content of amendments to be
made.
Therefore,
deliberations
wereconducted on the extension of the time limit
for filing a request for a trial against an
examiner’s decision of refusal to within threemonths from the date on which a certified
copy of the examiner’s decision of refusal has
been served. If this is the case, the time limit
will be longer than the current one (60 days,
including the time limit for amendments),
and applicants will be given sufficient time toconsider the content of the examiner’s
decision of refusal, the propriety of filing arequest for a trial and the content of theexaminer’s decision of refusal. Therefore,
users can enjoy great benefits. In terms ofthird parties’ burden of monitoring until an
examiner’s decision of refusal becomes final
and binding, extension of the time limit towithin three months from the day of service
will not have much influence.
With regard to the time limit foramendments to the description, etc.,
deliberations were also conducted on the ideaof setting a time limit separately from thetime limit for filing a request for a trial, as
under the current law. However, in the casewhere the time limit for filing a request for a
trial is set as within three months from thedate on which a certified copy of an
examiner’s decision has been serviced, there
seems to be no problem with stipulating thatamendments to the description, etc. shall bemade at the same time as filing a request fora trial. This is because applicants can securea longer period for consideration than the
period for consideration under the current
law (60 days in real terms, including the time●

limit for filing a request for a trial (30 days)).
Incidentally, there seems to be little need toallow applicants to make amendments morethan once because the period of three months
is enough to consider the content of
amendments.
With regard to the time limit for
supplement of grounds for a request, there is
an idea that it is not necessary to provide
applicantswiththeopportunity
tosupplement grounds for a request for a trial
after filing the request because they areprovided with the opportunity to sufficiently
consider grounds for a request as well as thecontent of amendments they make within thetime limit for filing a request for a trial if thetime limit is extended to within three months
from the date on which a certified copy of an
examiner’s decision of refusal has been
serviced.
However,companies
that
supplement grounds for a request within the
period designated in terms of a JPO
invitation for amendment will have to carryout consideration, for which they have spent
four to five months, within three months.
Therefore, the time limit will be significantly
shortened compared to that in the current
situation. Regarding grounds for a request, it
seems to be desirable to maintain the system
under the current law in which applicants
can change or amend the gist of grounds for arequest for a trial after filing the request and
the JPO issues an invitation for amendment
where a supplement of grounds is not
submitted even when a certain period has
lapsed after the filing of a request for a trial.

2

Time Limit for Filing a Request for a
Trial against an Examiner’s Decisionof Refusal – From Representatives’
Perspective –It is desirable to extend the time limit forfiling a request for a trial against an
examiner’s decision of refusal compared tothe current time limit (for example,
extending it to within 60 or 90 days from thedate on which an examiner’s decision has
been rendered) because it will become
possible to decide whether to file a request
11 ●IIP Bulletin 2008

for a trial with more care. However, sincepatent rights are effective to third parties, it
is undesirable to extend this time limit
without reason, taking into account third
parties’ burden of monitoring. Therefore, inconsideration of practices, etc. in othercountries, it is probably appropriate to set
the time limit as within around 60 or 90 days
from the date on which an examiner’s
decision has been rendered.
There is also the idea of the system inwhich applicants submit a written request
for a trial and a written amendment within aperiod set as above. However, from therepresentatives’ perspective, as it is notuncommon that an applicant decides to file arequest for a trial at the last minute before
the time limit, if it becomes necessary to filea written request for a trial and a written
amendment together within a prescribedperiod, there will be a risk of occurrence ofthe situation where the representative
prepares and submits a written amendment
without sufficient consideration due to lack oftime for consideration even if the prescribedperiod is extended from 30 days at present to
60 or 90 days. For this reason, from therepresentatives’ perspective, it is desirable toadopt a system that allows making
amendments, for example, within 30 days
from the date of filing a request for a trial, inthe same way as the current system.
With regard to the time limit for
supplement of grounds for a request, it isdesirable to leave the time limit as it is under
the current system, taking into account theneed to collect data and materials tounderpin a request for a trial prior to filingthe request as well as the possibility of theneed to conduct additional tests, experiments,
etc. However, it is considered to beappropriate to set a time limit for
supplement of grounds as within a prescribedperiod from the date of filing a request for a
trial (for example, 60 days), in replacement of
the current system in which an invitation for
amendment is issued when a supplement ofgrounds has not been submitted even after acertain period has lapsed after the filing of arequest for a trial.

3

●

12 ●

IIP Bulletin 2008

Time Limit for Filing a Request for a
Trial against an Examiner’s Decisionof Refusal – On the Whole –(1) Need to review the time limit for filing arequestThe system of trial against an examiner’s
decision of refusal is a system in which apatent applicant who has received an
examiner’s decision to the effect that a patentapplication is to be refused (examiner’s
decision of refusal) requests review of thedecision through a trial, which is a higher
procedure.
Toappropriately
respondtoanexaminer’s decision of refusal, the applicant
who has received said decision has to conduct
careful and comprehensive consideration inlight of the content of the relevant invention,
the possibility of acquisition of rights
through amendments to the description, etc.,
the current status of working of the relevant
invention and the possibility of its working in
the future, market trends and so on.
Although a patent applicant who hasreceived an examiner’s decision of refusal
may file a request for a trial against an
examiner’s decision of refusal while
maintaining the description, etc. as they are,amendments to the description, etc. are madein quite a lot of cases. Careful considerationis required in making amendments on thisoccasion because this is highly likely to be
the last opportunity to make amendments to
the relevant patent application. The
necessity of filing a divisional application is
also examined in addition to a request for a
trial. Due to the revision of the law in 2006, it
has become possible to file a divisional
application without filing a request for a trial
against an examiner’s decision of refusal.
This option is also considered.
The number of cases for which a trial
against an examiner’s decision of refusal isfiled has been on a remarkable increase inrecent years. Thus, it is increasingly
necessary that the time limit for filing arequest for a trial is long enough as a period
in which applicants take such actions. A
sufficiently long time limit is not only

desirable from the perspective of due process
but also will contribute to speeding up theproceedings of trials and realizing earlyacquisition of rights.
(2) Results of consideration of a desirable
system(i) Time limit for filing a request for a trial
against an examiner’s decision of refusal
There was an opinion that the current
time limit is long enough. In addition, somepointed out that third parties’ burden ofmonitoring will increase if the time limit forfiling a request is extended. However, themajority took the ground that it isappropriate to extend the time limit toaround 90 days, as the current period of 30days is not sufficient to consider the
propriety of filing a request for a trial, in
light of the questionnaire survey results,
systems in other countries and time limits inother appeal systems in Japan.
(ii) Time limit for amendments of thedescription, etc.
Under the current system, the time limit
for filing a request for a trial and the time
limit for amendments to the description, etc.
are stipulated separately, and it is possible toamend the description, etc. within 30 days
from the date on which a request for a trial
has been filed. With regard to theappropriateness of maintaining the systemthat allows applicants to make amendments
after filing a request for a trial even where
the time limit for filing a request for a trial
against an examiner’s decision of refusal isextended to around 90 days, there were thefollowing two opinions: (A) Such a system isdefinitely necessary since there may be cases
in which a decision to file a request for a trial
is made at the last minute before the time
limit even where the time limit has been
extended; (B) There will be no problem with
conforming the time limit for submission of awritten amendment to the time limit forfiling a request for a trial because it will
become possible to spend more time than thecurrent time limit for amendments tocarefully consider amendments if the time
limit for filing a request for a trial is●extended to around 90 days. Many committee
members agreed to opinion (B).
(iii) Time limit for supplement of grounds fora request
With regard to the supplement ofgrounds for a request for a trial after filingthe request, committee members agreed that
it is desirable to allow such supplement as
under the current system.

III Regarding “Grounds for a Request”
Stated in a Written Request for a
Trialagainstan
Examiner’s
Decision of RefusalWith regard to the way to state grounds
for a request for a trial against an examiner’s
decision of refusal, Article 46 of theOrdinance for Enforcement of the Patent Act
stipulates merely that grounds shall be
stated in items.
However, it is necessary to consider (i)whether or not it is better, from theperspective of increasing efficiency of trials
and promoting early acquisition of rights, tocarry forward establishment of rules for theway to state grounds for a request, and (ii) if
so, what rules are appropriate.
With regard to a problem similar to this,the United States Patent and Trademark
Office (USPTO) made public its proposed
rules, including provisions in detail on thecontent to be stated in a supplementary reply
brief, in the Federal Register dated July 30,
2007, in preparation for a rapid increase in
the number of appeals in the future. Many
public comments were made thereon.
This report examines the content of the
proposed rules of the United States andconsiders problems with establishment ofrules in Japan.
The proposed rules in the United States
aim at establishing certain rules for the
purpose of clarifying at the examination
stage the facts that are not disputed andthose that are to be disputed. In addition, theproposed rules also aim at establishing a rulethat grounds newly claimed at the appeal
stage and those not shall be distinguishedfrom each other. With regard to the way to
13 ●IIP Bulletin 2008

state grounds for filing a request for a trial
against an examiner’s decision of refusal in
Japan, establishing such rules as proposed in
the U.S. proposed rules is expected tocontribute to increasing the efficiency of
trials. Therefore, it is conceivable toprescribe such rules in regulations, etc.
However, although the U.S. proposed
rules suggest establishing rules for detailed
format, including font and margins, inaddition to the above-mentioned matters,
many public comments have been made to
the effect that detailed formalization isunfavorable as it causes a cost increase.
Therefore, establishing detailed rules in that
direction is considered to be undesirable.
Moreover, even if rules are only
established in terms of the above-mentioned
points, it is considered to be difficult torealize operations following the rules without
giving any incentive. Therefore, it isnecessary to consider such methods asfollows: a formality check is conducted whena written supplement of grounds for arequest for a trial is received, and if it fulfills
the formality requirements, it is madesubject to trial at an early date; otherwise,that effect is notified to the applicant, andthe written supplement is not made subject
to trial at an early date if the applicant does
not accept amendments.

filed, and the procedure of reexamination
before a trial was taken. Then, for 45% of
these cases, registration before a trial(registration at the stage of reexamination
before a trial) was effected without making atransition to the trial proceedings.
(2) Consideration of expansion of cases
subject to reexamination before a trial
Reexamination before a trial functions to
reduce the number of cases examined intrials. The following points were considered:(i) whether or not it can be applied to cases inwhich no amendment was made after thefiling of a request for a trial and (ii) whether
or not it thereby can further reduce thenumber of cases examined in trials.
(3) Consideration of enrichment of thecontent stated in a certified copy of an
examiner’s decision of refusal
The content stated in a certified copy of an
examiner’s decision of refusal was consideredas it is a matter that affects the amendment
procedure, which is a prerequisite forreexamination before a trial. Under thecurrent practice, statements therein areoften too simple. Therefore, applicants andrepresentatives expressed a wish for
improvements.

2

IV Regarding
Reexamination
Interrogation before a Trial
1andReexamination before a Trial(1) The system of reexamination before atrial was adopted at the time of revision of
the law in 1970 (Article 162 of the Patent
Act). It is an important system in actual
practice, and it is considered to be exerting
the effect of promoting early acquisition ofrights and reducing burden in trials. In termsof the status of use of the system, in 2006, arequest for a trial was filed for 45% of thecases in which an examiner’s decision ofrefusal was rendered. For 82% of these cases,
amendments were made within 30 days fromthe date on which a request for a trial was●

IIP Bulletin 2008

Interrogation before a Trial(1) Interrogation before trial is a system
under which, with regard to cases for which
reexamination before a trial has beenreleased, a report on the results ofreexamination before a trial prepared by an
examiner is sent to the demandant to provide
the demandant with the opportunity to offer
a counterargument by a written reply. The
operation of the system was started in July
2004 on a trial basis and is still ongoing.
In general, a “report on the results ofreexamination before a trial” presents moreabundant views compared to the content of acertified copy of an examiner’s decision ofrefusal. Applicants can understand thepoints of dispute more clearly by seeing areport on the results of reexamination before
14 ●a trial, and it is meaningful to submit awritten reply at that stage. In addition, it isalso expected that the applicant accepts therelevant examiner’s decision of refusal andloses the intention to continue subsequent
trial procedures. In terms of the current
status of use of the system, interrogation isconducted for 20 to 25% of the cases for which
a report on the results of reexamination
before a trial has been made.
(2) The advantages and disadvantages ofsuch interrogation before a trial wereconsidered.
However,notmany
disadvantages for demandants were assumed.
Therefore, it is considered to be important tomake public the purpose of this system andthe advantages for demandants in order toincreasetheeffectivenessof
this“interrogation” procedure.

V

Regarding Remand

In a trial against an examiner’s decisionof refusal, it is possible, under the current
law (Article 160 of the Patent Act), to remand
the case to the examination stage in the caseof rescinding the examiner’s decision ofrefusal. However, a trial decision to the effectthat the case is to be remanded has rarely
been rendered in the JPO’s actual operations(a few cases per year).
However, use of this remand system isconsidered to contribute to early acquisitionof rights in some cases. For example, in thecase where an examiner rendered a decisionof refusal without sufficient prior art
document
researchandpatentability
determination at the examination stage anda request for a trial was filed accordingly, it isexpected that substantive procedure will
progress faster by remanding the case to theexamination stage for prior art document
search, etc. by the examiner rather than bycarrying forward the proceedings by the trial
examiner.
Given this factor, a questionnaire survey
was conducted regarding the use of theremand system in light of the perspective ofspeeding up acquisition of rights, with the●aim of confirming users’ needs. According to
the results thereof, users are concerned thatremand will rather cause delay in theacquisition of rights, and they rather expect
improvement of the quality of examination
owing to remand. This is because, due to along waiting period for the proceedings of atrial, around two years in the current
situation, if a case is remanded as a result of
the proceedings to the examination stage
without being ruled, the case has to be
examined again by the examiner, and theprocedure for the acquisition of rights islikely to become excessively longstanding andcomplicated.
On the other hand, users hope that
corrections of inappropriate examiner’s
decisions of refusal through trials will not be
confined to each individual case but be
appropriatelyreflected
in
subsequentexaminations so that examiner’s decisions ofrefusal similar to them will be not rendered.
In addition, with regard to a trial decision to
the effect that the case is to be remanded,transparency of determinations made within
the JPO can be increased by clarifying
reasons for remanding a case in a written
trial decision. This will lead to improvementof the quality of examination departments inthe future, and also promote applicants toeasily accept the situation at the examination
stage. Thereby, it may be possible to restrain
increase in the number of requests for a trial.
In addition, the results of surveys on theremand systems in major countries were
examined from the perspective of comparison
with the legal system and its operation in
Japan.
With regard to the issue of whether or
not remand contributes to early acquisition ofrights, the opinion that the remand systemshould be actively used was not expressed in
discussions at the committee based on the
results of the user questionnaire survey andother surveys because the remand system israther likely to cause delay in acquisition ofrights under the current situation of
examinations and trials in Japan.
Use of the remand system is worthy ofreconsideration in the future since the
15 ●IIP Bulletin 2008

remand system is expected to contribute toboth early acquisition of rights andimprovement of the quality of examinations if
the processing period for examinations/trials
is shortened.

VI Regarding Accelerated Proceedings
1

Identification of the Problems

The accelerated proceedings system is asystem in which the proceedings of a trial arepromptly carried out in preference to other
trials, upon application of the demandant,
under the prescribed conditions. It brings
many benefits to demandants. In this section,
the status of use of this system was examined,
and problems with the system were also
considered as the use rate was low.

2

Status of Use

As for actual showing in 2006, thenumber of processed cases of trial against an
examiner’s decision of refusal was 15,000
while the number of applications foraccelerated proceedings was 233. Therefore,
the use rate was about 1.5%. Compared toaccelerated examination, the use rate ofaccelerated proceedings is low. In addition,
among cases which have been subject toaccelerated examination at the examination
stage, the rate of those for which an
application for accelerated proceedings has
also been filed in the relevant trial against an
examiner’s decision of refusal was about 11%.
It is unlikely that early processing becomes
unnecessary at the trial stage despite thatearly processing was desired at theexamination
stage.
Therefore,
theabove-mentioned use rate seems to be
excessively low. Consequently, it is necessary
to consider reasons for such a low use rate.

3

Consideration

No major problem was specifically listed
through consideration of the application
requirements, application procedures andother matters. The necessary procedures●

IIP Bulletin 2008

have been relaxed, and in particular,
regarding cases for which accelerated
examination has been conducted, only very
simple procedures are necessary. However,
the accelerated proceedings system is not
sufficiently in use.
Though it is necessary to take into
account an appropriate use rate toadequately
meet
requestsforearlyacquisition of rights, it is estimated that
there will be no problem if the number oforders for accelerated proceedings is between
200 (at present) and 500.

4

Summary

The above-mentioned low use rate seems
to be attributable to low awareness of thepoints as follows among demandants.
a. Demandants lack awareness of thecurrent situation where the period ofproceedings is prolonged.
b. Demandants lack awareness of the factthat the procedures for filing anapplication for accelerated proceedings
are simple.
c. Demandants lack awareness of theeffectiveness of use of accelerated
proceedings, including information on
the average period of proceedings in thecase of accelerated proceedings.
Given such conditions, it is desirable topublicize the accelerated proceedings system
by making it easier to search the web pagethat introduces accelerated proceedings andto see the way to take procedures (format) on
the JPO’s website.

VII Regarding Division, Continuation
Application
andRequestforContinued Examination
All of them are systems adopted in the
United States. Continuation application is asystem that allows applicants to refile,mainly in response to the last office action,
an application as a new continuation
application (a new application number isassigned) while leaving the content of theapplication as it is. Request for continued
16 ●examination (RCE) is a system that allows
applicants to request the examiner to conduct
examination again from scratch. The content
of the examination procedure under thissystemissimilartothat oftheabove-mentioned continuation application. In
addition, a continuation-in-part application
can be said to be a continuation application towhich new matters have been added. In
terms of the content, it is similar to adomestic application containing a priority
claim in Japan. For example, it is conceivableto file, after filing an application, acontinuation-in-part application by adding
working examples or experiment results tothe content of the application filed or bychanging the scope of claims of theapplication filed. For parts changed from theoriginal application, their novelty andinventive steps are determined based on the
time
when
the
continuation-in-partapplication was filed.
There are doubts about the need forthese systems in Japan. For example, if thecontinuation
application
systemisintroduced, applicants will become able tointentionally postpone the conclusion of
examination. Thereby, third parties’ burdenof monitoring is expected to increase. This isconsidered to be unfavorable from theperspective of fairness.
The divisional application system isconsidered to have become a user-friendly
system because the time requirement was
relaxed through revision of the law of thistime (in particular, it has become possible tofile a divisional application (i) after an
examiner’s decision to the effect that a patent
is to be granted is rendered and (ii) without
filing a request for a trial against an
examiner’s decision of refusal). Incidentally,
possible cases in which a divisional
application is filed are:(i) the case where an application violates
the requirements of unity of invention;(ii) the case where, in response to reasons forrefusal (inventive step, etc.), an
applicant acquires a patent for the part,for which patentability has beenrecognized, by filing a divisional●

application, and disputes over the part,for which patentability has been doubted,
by filing another divisional application;and(iii) the case where an applicant responds torestriction on amendments; that is,where an applicant files a divisional
application, in which the scope of claimsof the original application is changed or
expanded, due to restriction on thecontent of amendments.
(Senior Researcher: Sachiko NAKAMURA)

17 ●IIP Bulletin 2008