Procedural Rules for Center’s Advisory
Opinion Chapter 1: General Provisions
Article 1 (Purpose)
These rules provide for the matters necessary to conduct proceedings in order to issue
an advisory opinion (hereinafter, the “Advisory Opinion”) by the Japan Intellectual
Property Arbitration Center (hereinafter, the “Center”).
Article 2 (Types of Opinions)
The Center’s Advisory Opinions shall be of two types, depending on the parties’ choice:the unilateral opinion which shall be given based on the allegations and evidentiarymaterials presented by the applicant; and the bilateral opinion which shall be given
based on the allegations and evidentiary materials, presented by both the applicant
and the respondent as identified in the submitted application.
Article 3 (Matters to be Considered)
The applicant may make an application for an Advisory Opinion with regard to anyof the matters as provided in Items (i) through (iv):(i)

whether or not a specific product or method falls within the technical scopeof the patent invention or registered utility model;(ii)whether or not a specific design falls within the scope of the registered
design and similar design thereto;(iii)

whether or not a specific mark falls within the scope of the trademark rightor effect of the right based on defensive trademark registration; or(iv)

whether or not there are grounds for invalidation in the patent orregistration with regard to a specific patent, utility model registration,
design registration, or trademark registration (including defensive
trademark registration, hereinafter, the same) provided, however, that
this shall be limited to the application for an Advisory Opinion basedon the grounds specified by the applicant.
Chapter 2: Procedure1Article 4 (Application)(1) The applicant shall submit one original of a written application to the Center
which includes the following items, with the number of duplicates equal to thetotal number of respondents and panelists:(i)the name (or title, hereinafter, the same), domicile(or

residence,hereinafter the same), and contact information (telephone number, fax
number, e-mail address) of the applicant, and name of the applicant’srepresentative if the applicant is a juridical person;(ii)

the name and domicile of the respondent, and name of the respondent’s
representative if the respondent is a juridical person;(iii)

the names, domiciles, and contact information (telephone numbers, fax
numbers, e-mail addresses) of agents, if any;(iv)

the gist of the application;(v)

the grounds for the application; and(vi)

identify whether the applicant requests a unilateral opinion or a bilateral
opinion.

(2) The grounds for the application as provided in Item (v) of the preceding
Paragraph shall include the following items, depending on the types of mattersrequested:(i)

The Advisory Opinion with regard to the matters as provided in Article
3 Items (i) through (iii) (hereinafter, the “Scope Determination”):(a)the circumstances which have led to the application for an Advisory
Opinion,(b)

file history of the patent, utility mode registration, design
registration, or trademark registration subject to the Advisory
Opinion,(c)

explanation of the patent invention, registered utility mode,
registered design, or registered trademark (hereinafter the “Subject
Matter”) subject to the Advisory Opinion,(d)explanation of the specific product or method, design or mark(hereinafter, the “Subject Product, etc.”) on which the Advisory
Opinion is requested,(e)comparison between the Subject Matter and Subject Product, etc.,

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and
(f)

the applicant’s allegations with respect to common points anddifferent points, etc.

(ii)

The Advisory Opinion with regard to the matter as provided in Article
3 Item (iv) (hereinafter, the “Invalidation Determination”):(a)the circumstances which have led to the application for an Advisory
Opinion,(b)

file history of the patent, utility mode registration, design
registration, and trademark registration subject to the Advisory
Opinion,(c)

explanation of the Subject Matter,(d)comparison between the Subject Matter and references, etc., and(e)the applicant’s allegations that there are grounds for invalidationin the Patent or Registration.
(3) The applicant shall attach the following items to the written application:(i)the certificate of qualification for the applicant’s representative if theapplicant is a juridical person;(ii)

the certificate of qualification for the respondent’s representative if the
respondent is a juridical person;(iii)

the document which proves an agent’s representative capacity, if an agent
has been appointed;(iv)

documentary evidence; and(v)

duplicates of documentary evidence (the number of duplicates shall be thesum of the number of respondents and panelists).

(4) An agent shall be a person who is admitted as a representative under the laws
and regulations or whom the Center considers proper.
Article 4-2 (Receipt of Application)(1)

The Center shall receive the application when it finds that the application
satisfies the requirements defined in the preceding Article and the applicationfee defined in Article 17 (1) has been paid; provided, however, that the Center
may, in its discretion, reject the receipt of the application in case where the3

Center finds that the application is inappropriate for Advisory Opinion. When theCenter decides to reject the receipt of the application the Center shallimmediately notify the decision to the applicant.
(2)

The procedure of the Advisory Opinion shall commence upon the Center’s receiptof the application for Advisory Opinion.

Article 5 (Acceptance Confirmation Procedure in Bilateral Opinion)(1)

The Center shall, promptly after receipt of an application for a bilateral
opinion, notify the respondent that such application for a bilateral opinion has
been made, send it duplicates of the written application and documentary
evidence, and require that the respondent answer in writing whether or not
it intends to be present at the proceedings or not.

(2)

The panelists shall request a submission of a written answer, and shalldesignate a deadline for submitting such written answer.

(3)

In the case where the respondent does not submit a written acceptance within
the reply deadline from the date of its receipt of notice of the application
for an Advisory Opinion, the Center may deem this as the respondent’s refusal
to accept.

(4)

The Center shall request giving a due period for the applicant to answer inwriting on its choice to request for a unilateral opinion or to withdraw theapplication in case where the respondent does not accept to be present at theproceedings (including the case defined in the preceding Provision).

(5)

The application is transitioned into that for a unilateral opinion if the unilateral
opinion is chosen in the preceding Provision.

(6)

The Center may, in its discretion, deem that the application is withdrawn in thecase where the applicant does not answer within the due period for answer
defined in Provision 4.

Article 6 (Written Answer)(1) The written answer as provided in the preceding Article, Paragraph (2) shall
include an answer to the gist of the application described in the written application,affirmation or denial with regard to the grounds for the application, and the
respondent’s allegations, and one original copy thereof shall be submitted with thenumber of duplicates equal to the total number of applicants and panelists.
(2) Paragraph (1), Items (i) through (iii), Paragraph (3) (excluding Item (iv)) and4

Paragraph (4) of Article 4 shall apply mutatis mutandis to submission procedureof the written answer.
Article 7 (Appointment of Panelists)(1) The Center shall promptly appoint one attorney-at-law and one patent attorneyfrom a list ofpanelist candidates which the Center maintains at all times(hereinafter, the “list”) when it receives an application for a unilateral opinion(including the case where an application for a bilateral opinion is transitioned intothat for a unilateral opinion) or the respondent accepts to be present at theproceedings in an application for a bilateral opinion. This applies to the casewhere the number of panelists is lacking for reasons of death or resignation ofpanelists, and similar scenarios.
(2) Where the Center has received a motion related to the circumstances in thepreceding Paragraph, from any of the panelists, it shall appoint one additional
panelist from the list.
Article 8 (Obligation to Disclose Information Regarding other Interests)(1) The applicant may, upon written application, and the respondent may, upon
written acceptance, designate a person whom they consider to be an interested
third party in connection with the case, by making such designation of suchinterested persons in writing. The Center shall not disclose the written
designation of particular interested persons to others including the other party
to the relevant case but only to the panelist candidates.
(2) A panelist shall, upon its appointment, submit to the parties to the Advisory
Opinion (hereinafter, the “Parties”) and the Center, a written document withrespect to the panelist’s interests and shall without delay, fully disclose any
circumstances likely to give rise to justifiable doubts as to its impartiality or
independence where such circumstances exist or has occurred.
Article 9 (Challenge of Panelists)(1) Where circumstances exist with respect to a panelist that give rise to justifiabledoubts as to the panelist’s impartiality or independence, the parties may request
to challenge such panelist.
(2) The Center shall decide that the grounds for a challenge exist when it determinesthat there are sufficient grounds for the request as provided in the preceding
Paragraph.

5Article 10 (Cross Application for Invalidation Determination in Bilateral Opinion)(1) The respondent may make an application for an invalidation determination(hereinafter, the “Cross Invalidation Determination”) with regard to Subject Matter
against the applicant in the proceedings of the Scope Determination.
(2) The examination of an application for a Cross Invalidation Determination and theexamination of an application for an Advisory Opinion, which has been applied for,shall be conducted in consolidation.
Article 11 (Principle of Oral Hearing)
The panelists shall hold oral hearings to give the parties an opportunity to express
their opinions on the matters on which the issuance of Advisory Opinion is requested
provided, however, that this shall not apply to the case where the applicant has
represented that an oral hearing is unnecessary, and the panelists considered it proper,in case of the unilateral opinion.
Article 12 (Duration of Examination)
The Center aims to complete these proceedings within three months from the dateof the Center’s receipt of an application for a unilateral opinion, and within fourmonths from the date the Center receives a written answer in case of the bilateral
opinion.
Chapter 3: The Center’s Advisory Opinion
Article 13 (Written Advisory Opinion)(1) The conclusion of the Center’s Advisory Opinion shall be notified in writing andwritten Advisory Opinion shall be sent to the applicant in a unilateral opinion andto both parties in a bilateral opinion.
(2) The reasons for the panelists’ opinion shall be described in the written Advisory
Opinion.
(3) Disclosure of the written Advisory Opinion to any third party shall be done solely
at the parties’ discretion, and the Center shall not bear any responsibility forsuch disclosure by the parties.
(4) A description of the written method for such Advisory Opinions shall be provided indetailed rules, issued separately.
Article 14 (Nature of Advisory Opinion)

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The Advisory Opinion is an opinion of the panelists appointed by the Center, andit shall have no binding force on any person.
Article 15 (Appeal)
No appeal may be entered against an Advisory Opinion.
Article 16 (Withdrawal)
An applicant may withdraw its application for a unilateral opinion at any time, until
the written Advisory Opinion has been sent, and an applicant may withdraw its
application for a bilateral opinion, at any time before the respondent’s acceptance,or with the respondent’s consent after its acceptance.
Chapter 4: Fees
Article 17 (Fees)(1) The parties shall pay the fees as provided in the appendix.
(2) Where the respondent, who has received an application for a Scope Determination,
gives notice the Center that it will make an application for a Cross Invalidation
Determination within two months from the date of receipt of service of a written
application, and it submits a written application for an Invalidation Determination
before the conclusion of the examination of said Scope Determination, the Cross
Invalidation Determination application fee as provided in the appendix shall apply
to the application fee.
(3) The application fee as provided in Paragraph (1) shall be paid promptly after
application, and the fee for hearing dates shall be paid promptly after each hearing.
(4) In the case the fee is not paid, or the fee paid is lacking, the Center may request theparties to pay the shortfall within one week from the date of receipt of notice, andin the case where the applicant does not make such payment within this period, theapplication may be deemed to be withdrawn.
(5) The fee paid to the Center shall not be reimbursed, including the case wherean application is withdrawn provided, however, that in the application for abilateral opinion, where the respondent’s refusal of acceptance is verified, andwhere the applicant did not choose to apply for a unilateral opinion, thebalance after deducting a reception/acceptance confirmation procedure fee of
31,500 yen from the application fee which the applicant has paid shall bereimbursed to the applicant, and where the applicant chose to apply for a7unilateral opinion, the difference between the paid application fee and theapplication of a unilateral opinion if it had been made initially, shall be reimbursed
to the applicant.
Article 17-2 (Reduction of Fees)(1) In the case where either or both the applicant and respondent of the Center’s
Advisory Opinion (in the case of the bilateral opinion) have difficulty paying theregular fee, a motion for reduction of the fees to be paid by such party may be madeby said party’s submission of a written motion for reduction.
(2) Materials, which indicate the circumstances relating to the difficulty in paying theregular fee, shall be attached to the written motion for reduction.
(3) Where a written motion for reduction has been submitted, the steering committeeof the Center shall examine whether or not there are grounds for the motion, andissue a ruling with respect to payment of fee.
(4) At the examination as provided in the preceding Paragraph, various factors suchas monetary capacity, scale of operation, and other financial circumstances ofthe person who made the motion for reduction, existence or nonexistence of
public need, particularity of the case, and economic benefits which lay behindthe case, etc. shall be taken into consideration.
(5) In issuing the ruling as provided for in Paragraph (3), in addition to or in placeof granting a reduction ruling, a ruling to allow payment of fees in installments
or a ruling to admit rescheduling of due date for payment of fee may be issued.
(6) The motion for reduction as provided in Paragraph (1) shall, in principle, be madebefore the submission of a written application for an Advisory Opinion by theapplicant, or before the submission of a written acceptance by the respondent of theCenter’s Advisory Opinion (in the case of the bilateral opinion).
(7) The applicant, where it submits a written motion for reduction at the same time
as a written application for an Advisory Opinion, unavoidably, shall pay half
the amount of the regular application fee to the Center as a temporary applicationfee.
(8) Where a written motion for reduction has been submitted at the same time asa written application for an Advisory Opinion without temporary payment ofapplication fee, the Center shall receive only the written motion for reduction, andwhen the fee which has been determined through the examination on the written
motion for reduction is paid, it shall receive the written application for an Advisory
Opinion.

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(9) Where the respondent has submitted a written motion for reduction at the sametime as a written answer, unavoidably, the Center shall receive only the written
motion for reduction, and only when the respondent has agreed to the result of theexamination on the written motion for reduction, shall it receive the written
answer.
(10)Where the panelists have confirmed from the facts presented that it is notburdensome for the person, who has received a ruling to reduce the fee to be paid,
to pay the regular fee, after its payment of the reduced fee, the panelists may ordersuch person to make additional payment(s) of the difference between the regularfee and the fee which has been already paid.
(11)

The panelists may, in the case where additional payment has been orderedpursuant to the provision of the preceding Paragraph, and where such additional
payment is not made, suspend or terminate the Advisory Opinion proceedings.
Chapter 5: Management of Case
Article 18 (Management of Case)(1) Management of the Advisory Opinion case shall be conducted by a steeringcommittee or a branch steering committee of the Center (hereinafter, the “Steering
Committee”) and its office work shall be conducted by a secretariat of the Center.
(2) The Steering Committee shall, when an application for an Advisory Opinion
is made, promptly appoint a case manager to manage the case.
(3) The case manager may attend hearings as necessary.
Chapter 6: Confidentiality
Article 19 (Confidentiality Obligations)
The Advisory Opinion proceedings and the records thereof shall be maintained
behind closed-doors, and panelists, panelist candidates, assistants of panelist, casemanagers, members of a steering committee, officers and staff of secretariat of
the Center, the parties, and agents thereof shall not disclose or use the existence,content, and result of the Advisory Opinion (including the facts relating to theproceedings and the facts which come to be known through the proceedings),
without the consent of all parties to disclosure or use. This shall also apply to such
persons who have left these services provided, however, that the Center may, inthe case where it is necessary for enlightenment and research, etc. of the9resolution of disputes relating to intellectual property, disclose the above without
specifying specific content such as the names of parties, the patent, utility mode
registration, design registration, or trademark registration (including defensive
trademark registration) which are subject to the application, etc.
Supplementary Provisions
These rules shall come into force effective March 1, 2004.
Supplementary Provisions
These amended rules shall come into force effective November 1, 2004.
Supplementary Provisions
These amended rules shall come into force effective January 16, 2006.
Supplementary Provisions
These amended rules shall come into force effective January 9, 2007.
Supplementary Provisions
These amended rules shall come into force effective February 6, 2007.

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Appendix

Table of Center’s Advisory Opinion Proceedings Fees (Tax Included)(1) Basic Fee
Table 1: Unilateral Advisory Opinion
Item
Application Fee
Fee for Oral Hearing

Amount315,000 yen
105,000 yen

Table 2: Bilateral Advisory Opinion
Item
Application Fee

Amount(including/Acceptance

Reception

420,000 yen(31,500 yen)Confirmation

Procedure Fee)
Cross
Invalidation
Determination Application Fee
Fee for Oral Hearing

210,000 yen
Each party:105,000 yen(2) Additional Application Fee
One half of the application fee as provided in each table above (with regard toan application for a Cross Invalidation Determination, the same amount as theapplication fee thereof) shall be added up for each additional matter as provided
in Article 3, and for each additional number of Subject Matter or Subject Product, etc.
and calculated as follows.
(i)

Number of Subject Matter(a)Patent or utility mode registration: Number of patent claims or utility
mode registration on which an Advisory Opinion is requested (Evenin the case where one claim refers to one or more other claims, it
shall be counted as one.)(b)

Registered design: Number of registered designs on which an

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Advisory Opinion is requested.
(c)

Registered trademark: Number of categories of designated goods ordesignated services of the registered trademark on which an Advisory
Opinion is requested.

(ii)

Number of Subject Product, etc.
Number of products, methods, designs, or trademarks specified in a
written application for an Advisory Opinion.

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