8 Procedures for Proceedings in Inter Partes Trials
Based on the provisions of Article 104-3 of the Patent Act, which was introduced in April 2005, thedefense of patent invalidation has been judged in patent infringement suits. In response to this situation,
the Japan Patent Office has included trial cases that are filed while the infringement suit is pending into thesubjects that are to be judged at an early stage, contributing to the prompt solution of conflicts.
On the other hand, key measures of the “2009 Plan for the Promotion of Intellectual Property”
stipulated to “examine in order to obtain a definitive conclusion within fiscal year 2010 with respect tocountermeasures for issues pertaining to the ‘double track’.” In discussing on this issue, it is necessary toresearch and review more prompt and accurate procedures for proceedings in inter partes trials.
Based on this context, for this research and study, oral interviews were conducted with companies andtheir agents, statistics and analyses pertaining to relationship between inter partes trials and lawsuits weregathered, and research was done into prompt and accurate procedures for proceedings in inter partes trials
that improve the degree of satisfaction of the system’s users, in order to identify their needs in inter partes
trials (trials for invalidation).

Ⅰ Introduction
1

conclusions at the proceedings for the
infringement suit. However, when discussing theideal way to use the system in FY2010, it wasnecessary to conduct sufficient research andreview this fiscal year in order to find the way toestablish procedures for proceedings in order tohave more prompt and accurate inter partes trials
than under the current system.
Moreover, with regard to the oralproceedings of inter partes trials, it has become
an important duty for the chief trial examiner who
presides over trial cases to proceed with theproceedings in a way that ensures both parties are
satisfied the chief trial examiner’s procedures forthe proceedings (direction of the proceedings).
Based on this background, it was necessary
to perform an immediate review of prompt andaccurate procedures for the proceedings in interpartes trials for raising sufficiency of the system’susers. The present research study is conducted
for the purpose of gathering basic materials forthe review.

Background and purpose of this research

Based on the provisions of Article 104-3 ofthe Patent Act, which was introduced in April
2005, whether a patent in question is found to beinvalid by a patent invalidation trial (or defense ofpatent invalidation) has been judged in a lawsuit
pertaining to infringement of patent rights(hereinafter referred to as “patent infringementsuit” in this report). In response to this situation,
the Japan Patent Office has included trial casesthat are filed while the infringement suit ispending into subjects to be judged at an earlystage,
promotedtheenhancement
andstreamlining of proceedings in inter partes trials(trials for patent invalidation), and contributed tothe prompt and appropriate solution of conflicts.
On the other hand, with regard to conflictsettlement schemes for judging the validity of apatent, the “key measures” of the “2009 Plan for
the Promotion of Intellectual Property” stipulated
to “examine in order to obtain a definitive
conclusion within fiscal year 2010 with respect tocountermeasures for issues pertaining to the‘double track,’ which means that a suit can bebrought against the validity of a patent by both atrial for patent invalidation and a patent
infringement suit.”
With regard to the “double track,” in cases
where a patent infringement suit and an interpartes trial are conducted in parallel, efforts havebeen made to have inter partes trials by the
Patent Office, which is a government agency
specialized in technology, lead a prompt andaccurate conclusion in order to make use of the2

Research Study Method(1) Research, analysis, and review
In order to identify users’ needs concerning
procedures for proceedings in inter partes trials inJapan, oral interviews were conducted with 20
users in total, including law firms, patent attorneyfirms, and companies with experience of interpartes trials and the results were organized andsummarized as the results of the oral interviews
in Japan.
An investigation of publications was
conducted and summarized with regard tooutlines for procedures in intellectual property● 1 ●IIP Bulletin 2010

Ⅱ Imperative Functions of Inter
Partes Trials

suits in Japanese courts, inter partes trials
pertaining to patents in major overseas countries,
and trial systems pertaining to patent invalidation.
In addition, in order to identify the
relationship between trials for patent invalidationand judicial decisions, with regard to the data fromtrials for patent invalidation that were filed in thepast five years, the existence of relative
judgments or the context of each trial wereanalyzed and the term from filing of the relative
judicial decisions to the filing of trials for patent
invalidation are also analyzed. The results of theanalysis were summarized as objective data.
With regard to the form of trial decisions intrials for patent invalidation, the use rate of theterms and expressions that are used with thesame definition was reviewed in 50 cases thatwere chosen randomly from the bulletin ofdecisions in trials for patent invalidation, and theresults were summarized as objective data.

1

Analysis of objective data

According to the objective data, it was found,among cases where trials for patent invalidation
were filed, that no patent infringement suit was
filed or that trials for patent invalidation were filed
prior to the patent infringement suit in aconsiderable percentage of cases (approximately
75 percent). This means that the objective data
supports the fact that trials for patent invalidation
are widely used in categories other than those inwhich trials for patent invalidation are used as adefense in response to the filing of a patent
infringement suit (trials for patent invalidationthat are highly related to the patent infringementsuit). It is necessary to note this point.
On the other hand, within the range of thissurvey, the objective data did not show significant
characteristics by field or significant changes ortransitions by time as to the relationship between
trials for patent invalidation and patent
infringement suits.

(2) Analysis and summary
Based on the results obtained from thevarious surveys, analyses, and reviews as statedin (1) above, the procedures for proceedings ininter partes trials in Japan were analyzed and theresults of the analysis were comprehensively
summarized.
With regard to the oral interviews in Japan, awide variety of opinions were gathered dependingon the status and experience of the respondents.
Some questions received common and similar
opinions from many respondents; while different
opinions were allowed for specific cases. Based onthese trends, this research study attempted totake into account a wide range of opinions ascomprehensively as possible. Opinions that werecommon or similar to a comparatively large
number of respondents and that were considered
to be important to examine for establishing afuture system are extensively cited and reviewed.
In this regard, when summarizing theopinions of respondents, attorneys who arefamiliar with the Patent Act and the Code of Civil
Procedure were asked to join in this operation inorder to analyze them from fair and broader
perspectives.
With regard to the part pertaining to the oralinterviews in Japan, please note that attorneys,
patent attorneys, and persons who hold bothlicenses are treated as “agents” and, as stated in(1) above, the sample number is 20 (16 agents and
4 companies).

2

Analysis of the results of the oralinterviews in JapanThe results of the oral interviews in Japan do
not completely conform to the objective data of 1.
above.
According to the results of the oralinterviews with agents, there were many answers
stating that trials for patent invalidation are often
used as a means of defense in cases where apatent infringement suit has been filed.
However, it is possible to understand that
this results show that a company consults with anagent often in cases related to patent
infringement suits and the results are notnecessarily contradicting with the results in 1.
above.
This was also found in the responses
concerning the experiences of persons in charge
in companies that there are many trials for patent
invalidation that do not always have a relationshipwith patent infringement suits (on the whole,when compared with the responses of agents, inthe results of the oral interviews with companies,
the responses tend to be that there are many
trials for patent invalidation that do not always
have a relationship with patent infringement
suits).
Moreover, in the results of the oral
● 2 ●IIP Bulletin 2010

interviews with agents, there were also
responses stating that there are opportunities to
use trials for patent invalidation in addition topatent infringement suits, or that a value is given
to the significance that trials for patent
invalidation exist for other reasons in addition to a
defense in patent infringement suits.
Multiple responses noted that there arecases where trials for patent invalidation are usedin order to proceed advantageously in licensing
negotiations. And there are also responses stating
that, in cases where conflicts over patents haveoccurred in foreign countries, trials for patent
invalidation may be filed against Japanese patents
corresponding to the foreign patents in question
from a strategic perspective (some responses said
that there are cases where trials for patent
invalidation are used for the purpose of making
Japanese patents fall into the same range as theforeign patents in question).
In addition to the abovementioned responses,
some noted cases where trials for patent
invalidation were used to invalidate a patent that
had become an obstacle when entering a market;
cases where trials for patent invalidation wereused for the purpose of restricting the claims ofanother company’s patent in order to avoid asituation where a company’s product is within thetechnical scope of another company’s patent; andcases where trials for patent invalidation wereused in order to clarify claims on the patent inquestion and to dispel questions over whether acompany’s own product infringes anothercompany’s patent in cases where their own
products were likely to be in the technical scopeof another company’s patent, due to a lack ofclarity in the claim.
As stated above, according to the results of
the oral interviews in Japan, it is found that users
do not file patent infringement suits or have highdemand for filing trials for patent invalidation
prior to the suits.
Differences by field or industry were notclarified; provided, however, some responses
referred to the point that it is valued forinvalidating patents completely more than for the
purpose of negotiation in the chemical field, andother responses noted that there are many casesof filing trials for patent invalidation alone without
filing a patent infringement suit in the field ofpharmaceuticals and medical equipment andtherefore that field has a particularity as comparedwith other fields:

3

Imperative functions of inter partes
trialsWhen discussing the imperative functions oftrials for patent invalidation or discussing theestablishment of a future system of trials forpatent invalidation, it is necessary to review
issues of the “double track” as they are seen andby taking sufficiently into account the relationshipwith patent infringement suits.
On the other hand, in a high percentage ofcases, a patent infringement suit is not filed or atrial for patent invalidation is filed prior to the suit,and users are aware of the unique significance ofthe existence of trials for patent invalidation.
Therefore, it is highly necessary to deepen theanalysis of those functions unique to trials forpatent invalidation.
Consequently,
whenconsidering
theimperative functions of trials for patent
invalidation and discussing the establishment of
an individual system, as mentioned below, wemust consider also whether patent infringement
suits and systems in countries conform to thesignificance of the system or to the significance ofa function that is unique to trials for patent
invalidation, while respecting the results of thecomparison of patent infringement suits andsystems in said countries and of various oralinterviews.

Ⅲ Well-Organized Proceedings
1

Necessity of well-organized proceedings

According to the results of the oral interviews
in Japan, the demand for well-organizedproceedings is found to be high with regard tocertain cases, such as cases requiring adjustment
with a patent infringement suit.
As for opinions against well-organizedproceedings, many of them concern the point of
whether the burdens required for preparation are
greater since document preparation time isshorter than the current status, or that rigid
well-organized proceedings will not result in a
one-time solution. On the other hand, as to trials
for patent invalidation, the opinion thatwell-organized proceedings are not necessary islimited based on the tendency of the overall
responses.
As mentioned above, the majority of theopinions considered well-organized proceedings
themselves favorably. Therefore, with regard tocertain cases, there is considered to be a demand● 3 ●IIP Bulletin 2010for introducing well-organized proceedings
proactively in order to accelerate proceedings andto secure the predictability of procedures.
2

clear standards or models.
Therefore, there is room for examination ofwhether it is possible to propose a method ofwell-organized proceedings that is to some extent
categorized.
In this regard, since the subject ofproceedings for litigation rescinding a trial
decision on patent invalidation is limited to thetrial decision on patent invalidation, the procedure
has been categorized to a considerable extent.
And the point that the subject of the proceedings
is targeted to an extent applies to trials for patent
invalidation to some extent.
Therefore, it is considered that thecategories of the schedules of proceedings in atrial procedure can be of some help in examining
well-organized proceedings for a trial for patent
invalidation. For example, two methods, Method
A and Method B, are presented as models of alitigation rescinding a trial decision on patent
invalidation at the Intellectual Property High
Court (currently, the method is limited to MethodA).
In this respect, the “oral argument,” amongprocedures for litigation rescinding the trial
decision on patent invalidation at the Intellectual
Property High Court, is generally a procedure toconfirm the documents that have been submitted.
Therefore, reference procedures as closer topreparatory procedures and oral proceedings intrials for patent invalidation are “preparatory
proceedings.”
The following two categories are considered
to be typical methods of well-organizedproceedings in a trial for patent invalidation: (1) acategory where preparatory procedures and oralproceedings are each scheduled respectively one
time, which corresponds to Method A (in which
preparatory proceedings are scheduled to be held
twice); and (2) a category that has no preparatory
procedures, but is scheduled to hold oralproceedings only once, which corresponds to
Method B (in which only preparatory proceedings
are only scheduled once).
In order to fulfill proceedings and gain
satisfaction from users, the abovementioned
methods (1) or (2), in which a panel of a trial isscheduled to have an opportunity to hear opinions
directly from parties, should be the principle. On
the other hand, it cannot be denied that somecases may be satisfied only with documentary
proceedings depending on the content of the case(the following is considered to be a typical case: acase where a written answer is not submitted).
Therefore, it is necessary to consider a third

Typical cases where well-organizedproceedings are desired

It cannot be denied that the amount ofacceleration in well-organized proceedings or
regular proceedings that is desired by the parties
may vary by case.
In this regard, one of the cases for which
well-organized proceedings are particularly
desired (or expected), and which is referred to in
the results of the oral interviews in Japan, is thecase where a patent infringement suit is also
under procedure. And another is a case where aforeign company is a party or where a conflict in aforeign country is also under procedure.
3

Typical cases where
procedure is desired

preparatory

According to the results of the oralinterviews in Japan, both positive and negative
opinions were obtained with regard to preparatory
procedures for reducing the burden of oralproceedings. However, depending on the specificcases, there are many opinions stating that the
preparatory procedure is effective.
Therefore, it is considered that thenecessity of preparatory procedure shall not
be judged uniformly, but be judged byindividual and concrete cases.
Based on these findings, the cases where a
preparatory procedure is desired (or expected) inparticular are those cases with complicated andmultiple issues and cases where technicalunderstanding is difficult or important.
4

Categorizationofproceedings method

well-organizedWith regard to the existence and method ofwell-organized proceedings and preparatory
procedures, it is preferable to have a choice basedon the parties’ intentions depending on thecontent and characteristics of the individual andconcrete cases.
Meanwhile, with regard to the method ofwell-organized proceedings, it is likely to be
pointed out that the responses of the Patent
Office become inconsistent in cases where themethod of well-organized proceedings isestablished by each panel of a trial without having● 4 ●IIP Bulletin 2010

method category that has no preparatory
procedures or oral proceedings, but concludes
proceedings
only
throughdocumentary
proceedings.
In addition, according to the results of theoral interviews in Japan, there were many
responses stating that holding oral proceedings
once is sufficient in principle. Therefore, theabovementioned categories (1) through (3) aresufficient as basic categories and it is acceptable
to hold hearings twice or more depending on thecontent of each case.
With regard to well-organized proceedings intrials for patent invalidation, the “Scheduling
Manual of Trails for Patent Invalidation (forjudges)” has been established. The manualpresents several patterns of proceedings by thecategory of examination, such as the “Schedule ofProceedings for Complicated Cases.” Then, as
future issue, consideration should be given tosegmenting and publicizing the existing models
that are presented in the “Scheduling Manual of
Trails for Patent Invalidation (for judges)” by theabovementioned categories (1) through (3) basedon the analysis stated before.
5

the other party’s opinions, etc.
(2) Flexible rescheduling in response toirregular cases
In the results of the oral interviews in Japan,
there was a concern that in cases where aschedule of proceedings is presented, if it isfollowed rigidly, it will not result in one-time
solution.
In concrete terms, some responses
suggested requiring a flexible response if any
irregular circumstances arise.
Therefore, in order to respond to the concernthat it will not result in one-time solution as muchas possible, when following a schedule ofproceedings, it is necessary to follow it flexibly,
including by changing the schedule, in cases
where any irregular circumstances occur, inparticular, where new evidence or claims arisethat were not presented when establishing theschedule of proceedings, making it necessary to
prepare new counterarguments against them, etc.
(3) Reducing the time required foradministrative processing by the Patent
OfficeAccording to the results of the oralinterviews in Japan, there were responses thatbasically stated their satisfaction with the speedof proceedings, while there were also requests toshorten the time necessary for the Patent Office’s
administrative processing. Therefore, thesepoints should be improved.

Notes for the operation of well-organizedproceedings(1) Establishment of flexible schedules forcases
In the results of the oral interviews in Japan,
there was a request to present a flexible schedule
for proceedings by taking into consideration thespecial circumstances of each case.
There is the opinion that sufficient time isnecessary for the preparation of documents,
particularly for cases in which a foreign company
becomes one of parties. Another opinion statesthat especially long meeting times are necessary
for cases where an intervener(s) exists. Also, an
opinion notes that it is necessary to have specially
sufficient preparation time for cases that require
observations, etc. of experiments against theallegations of the other party.
Therefore, when operating with a schedule ofproceedings, it is necessary to present theschedule of proceedings flexibly in considerationof the parties’ attributes, the existence ofinterveners, the volume and content of predicted
counterarguments,
and
other
specialcircumstances. When establishing a schedule, it
should be noted that the schedule will reflect theintentions of the parties to their satisfaction, forexample by making opportunities for hearing of

Ⅳ Direction of Proceedings
1

Ex officio principle(1) Typical cases where the ex officio
principle (collecting publicly known
examples) is desired
According to the results of the oralinterviews in Japan, expectations were seen for
the ex officio principle.
One is the case where the ex officio principle
is executed by collecting publicly-known
publications from the standpoint of providing
assistance in cases where, because the applicant
is a small or medium sized enterprise, etc., its
capability to collect various kinds of materials,
including foreign publicly-known publications, isinsufficient and apparent evidence was overlooked.
The other case is where the ex officio principle is
executed
complementarily
bycollecting
publicly-known publications in cases where claims● 5 ●IIP Bulletin 2010

are expected to be brought up again (or are in theprocess of being repeated) since the discussions
on patent validity have not been carried out
thoroughly.

disclosure of conviction by judges in a patent
infringement suit, in light of the uniqueness ofprocedures in trials for patent invalidation and the
expectations of users concerning them.
In this regard, as a case where disclosure ofconviction is particularly desired (or expected),
one of desirable way to have a disclosure ofconviction is considered to be the disclosure ofconviction that organizes issues in order to solve
acknowledgement conflicts between hearing
examiners
andparties(inparticular,
misunderstandings on technical understandings
or issues), as it is found in the results of the oralinterviews in Japan. Another desirable way fordisclosure of conviction is to have the disclosureof conviction in order to provide opportunities forcounterarguments before granting a trial decisionthat is different from the issues. Moreover, incases where the conviction is changed again after
the disclosure of conviction, a further desirable
way for disclosure of conviction is to have it inorder
toprovideopportunities
forcounterarguments.

(2) Notes on the ex officio principle(collecting publicly known examples)
There are some concerns over executing theex officio principle concerning the collection of
publicly-known publications.
In particular, from the perspective of gaining
the satisfaction of the parties, in cases where theex officio principle is executed by collecting
publicly-known publications, it is necessary toprovide a demandee sufficient time forcounterargument, or sometimes to provide theopportunity for further discussion (for example,
second opportunity to engage in oralproceedings).
In fact, in the results of the oral interviews inJapan, there were many opinions stating thatsufficient time for counterargument or additional
opportunities for discussion should be provided incases of executing the ex officio principle.
Moreover, as noted in the results of the oralinterviews in Japan, it is preferable to execute theex officio principle at an early stage of theprocedures (at least, before oral proceedings). In
particular, in cases of collecting publicly-known
publications that may drastically change thedirection of allegations (or change major
examples) by their own authority, it is important
to execute the ex officio principle by collecting
publicly known references at an early stage inorder to avoid disrupting the stability ofprocedures.
2(2) Notes on disclosure of conviction
In the results of the oral interviews in Japan,
several requests related to the method of
operating disclosure of conviction were presented.
An operation is desired to narrow the issues bydisclosing convictions at each stage of theprocedures
andprovidestime
forcounterarguments after the disclosure ofconviction. With regard to the timing of thedisclosure of conviction, it is preferable todisclose convictions at the earliest stage possible(before oral proceedings).

Disclosure of conviction(3) Notes for the operation of issue memos
According to the results of the oralinterviews in Japan, the previous presentation
concerning matters for a trial panel (presentationof issue memos) was generally accepted favorably.
On the other hand, the results presented
several requests concerning the method for
performing disclosure of conviction. It ispreferable to perform the disclosure of convictionin order to improve the frequency of sending
issue memos above the current status and to
perform it in order for the content of the issue
memos to become relevant.
In connection with the way to perform thedisclosure of conviction, it is preferable to do it bypresenting the conviction by means of issue memos.

(1) Typical cases where disclosure ofconviction is desired
According to the results of the oralinterviews in Japan, pros and cons were found,and requests for disclosure of conviction vary by
respondent.
As shown in the results of the oral interview
with agents, a trial for patent invalidation is not asystem for settlements. Disclosure of conviction
in a trial for patent invalidation is thus notnecessarily the same as the disclosure ofconviction by judges in a patent infringement suit.
We should then examine where thedisclosure of conviction in a trial for patent
invalidation becomes necessary, with a different
approach than the method or functional theory of● 6 ●IIP Bulletin 2010

3

whether technical explanations are (or possibly
should be) necessary as measures to reduce theburden from the preparation of oral proceedings.

Other (overall direction of proceedings)

As included in the results of the oralinterviews in Japan, requests for an overall
direction of proceedings extend over a broad
range. One of the desires is to improve thecommunication system between parties and the
Patent Office. Another desire is to have the chief
trial examiner provide appropriate direction basedon the conditions on time limits and theopportunity to submit documents.

3

Necessity of oral proceedings

In the results of the oral interviews in Japan,
there were many responses to confirm thenecessity of oral proceedings in general terms.
A case that was pointed out in the results of
the oral interviews in Japan as a case where oralproceedings are not necessary was the casewhere oral proceedings were held formally in a
simple case, etc.
On the other hand, a case that was stated to
be preferable (or expected) to holding oralproceedings was the case where a patent
infringement suit is under procedure at the sametime.
With regard to the judgment as to whether
oral proceedings are to be held or not, there is an
opinion that wishes to include the intentions of
the parties. Therefore, it is considered, forexample, that there is a room for examination
with regard to establishing a schedule ofproceedings based on the responses of parties tothe necessity of oral proceedings at the beginningof procedures.
2

procedure

of

oral

According to the results of the oralinterviews in Japan, some specific requests on theprocedures of oral proceedings are presented.
First, it is preferable to specify a standard form
for oral proceedings to some extent. Moreover, incases where a foreign company is one of theparties, the due date for the submission of
documents before oral proceedings should beconsidered. The issues should be organizedproactively at or immediately before oralproceedings. In addition, there were opinions torequest that the chief trial examiner prohibit
irregular statements, or to request specification of
the end of oral hearings. Therefore, theprocedures of oral proceedings should becontrolled appropriately by the chief trial
examiner.
In cases where multiple trials are underprocedure at the same time, appropriate direction,such as the consolidation of the trials, etc., should
be provided depending on each case.

Ⅴ Oral Proceedings
1

Notes for theproceedings

4

Notes for the form of written statements

In the results of the oral interviews in Japan,
some specific requests on the form of written
statements were presented. In particular, withregard to important matters, etc. related to issues,
they should be stated in the written statements asmuch as possible.
Moreover, it is also preferred that thecontent of written statements can be confirmed
by making copies or using projectors, etc. These
points should also be considered.

Notes for reducing the burden from the
preparation of oral proceedings

Ⅵ Form of Trial Decision of Trials
for Patent Invalidation

According to the results of the oralinterviews in Japan, there were opinions that theburden from the preparation of oral proceedings
was both large and small.
With regard to the use of issue memos,
hearings on unclear matters, and theimplementation of preparatory procedures, there
were many opinions that they contributed toreducing the burden from the preparation of oralproceedings on the whole, although opinions on
their necessity are different in each case.
It is desirable to clarify first of all where theemphasis is placed in oral proceedings and

1

Ideographs and words used in trial
decisions

According to the objective data, it is foundthat inconsistent expressions are seen in a trial
decision. For example, with regard to “expression
pertaining to publications,” expressions for“publications,” “cited examples,” or “cited
documents” were stated without particulardistinction. Apparent misuses were detected, for● 7 ●IIP Bulletin 2010

example that because the validity of a right for
which an examiner’s decision has been made ischallenged in a trial for patent invalidation, it
should be stated as “in the present court,” but it
is stated as “in the present application.” Moreover,there are statements that are not based on thebooklet of examples of ideographs and words for
public documents.
In this regard, in the results of the oralinterviews in Japan, there are opinions that point
out inconsistencies between judgments or the factthat ideographs and words in trial decisions are
not inconsistent.
Therefore, based on the objective data andthe results of the oral interviews, with regard to
ideographs and words in trial decisions in the
future, the following improvements are desired:(i) amending apparent misdescriptions; (ii)considering descriptions in accordance with thebooklet of examples of ideographs and words for
public documents; (iii) facilitating uniform
ideographs and words among trials decisions, etc.
2refer to a preliminary claim which is used in are-examination in the United States or in filingobjections with EPO (European Patent Office), etc.
when considering the establishment of system of
trials for patent invalidation.
In particular, the preliminary claim that isused when filing objections, etc. with EPO
attracts a lot of attention since it is closely related
to issues associated with the restriction ofopportunity and the frequency of amendment. In
this regard, there were many opinions that agreewith the introduction of the preliminary claim in
the results of the oral interviews in Japan.
In the results of the oral interviews in Japan,
specific requests were presented even in cases of
introducing preliminary claims that are used infiling objections with EPO.
When introducing preliminary claims to be
used for filing objections with EPO, the number of
amendment proposals should be restricted.
Moreover, consideration was given as towhether the system should restrict the timing ofamendments (on the other hand, there are
opinions stating that a system to restrict thetiming of amendments is not necessary).
Whether it is possible to establish or operatea system to enhance opportunities for ademandee’s counterarguments in lieu of accepting
the preliminary claim system should be thesubject of exhaustive discussions.
In addition to the abovementioned, there are
opinions that expect the establishment of asystem that does not allow requesting a trial for
amendment after filing an action in lieu of
accepting the preliminary claim system (it isnotable that there are opinions against thisopinion).
(Resercher: Akira YASUTAKE)

Content of trial decisions

In the results of the oral interviews in Japan,
the following specific requests on the content of
trial decisions are presented.
First, a considerable number of opinions
stated that a summary of the parties’ allegations
is essential for understanding the content of trial
decisions, but statements on that point wereinsufficient. Therefore, the parties’ allegations
shall be summarized to the extent necessary andsufficient in a trial decision.
Moreover, there were many opinions
indicating that were insufficient statements of thethinking process. Therefore, the thinking process
should be stated to the extent necessary andsufficient in a way that conforms to the parties’
allegations.
Another opinion complains that only one
judgment is stated for multiple grounds forinvalidation. From the perspective of the parties’satisfaction, it is desirable to indicate judgmentson all of the grounds for invalidation to the extent
possible.

Ⅶ IdealDefenseofCounterarguments (Particularly
Regarding the Introduction of
Foreign System)
In the results of the oral interviews in Japan,
there were some opinions indicating the need to● 8 ●IIP Bulletin 2010