December 1, 2020
On the Attempt to Hold Planning Dialogue Proceedings in Invalidation Trials at the JPO

Miyoshi International Patent Office
Patent Attorney: Shizuo Toyooka
The Japan Patent Office has announced that it will commence with an attempt to hold"planning dialogue proceedings" from April 2020 in order to further enhance the proceedings ofpatent invalidation trial cases, although it is inevitable that the start will be delayed due to theeffects of the COVID-19 pandemic.
In current proceedings, an open oral hearing is held at the time when a written reply issubmitted by a patentee or a rebuttal is submitted by an appellant, and thereafter a trial decisionor an advance notice of the trial decision is delivered. However, in some cases the party's
allegations have not been fully exhausted and the issues have been arranged again.
The "planning dialogue proceedings" are to deliver a trial decision or an advance noticeof the trial decision after the first oral questioning in which a proceedings plan, etc. is createdupon the delivery of a written demand for an invalidation trial, the second oral questioning inwhich the party's allegations are presented and issue arrangements are conducted upon thedelivery of a written reply, and the third oral questioning in which the issues are finally confirmed.
The oral questionings are questionings conducted orally by a Trial and Appeal Board to bothparties, and only the statements recorded based on agreement become allegations made by theparties.
It is understood that the party's allegations can be fully exhausted by making theproceedings plan and clarifying the contents of the written demand for an invalidation trial at thefirst questioning, having the contents of the written reply and a correction request explained at thesecond questioning, and finally confirming the issues at the third questioning.
In the proceedings of a lawsuit for cancelling a trial decision at the Intellectual Property
High Court, after the plaintiff's submission of their first brief, the first private oral preparatory
proceedings are carried out, and a progress schedule is adjusted by clarifying the issues. The
second oral preparatory proceedings are then carried out after the defendant's submission of theirbrief and the plaintiff's submission of their second brief. Then, after a technical explanatory
session is held as necessary, the oral preparatory proceedings are closed, and an open oral hearing

is held before a judicial decision is delivered.
It is understood that the current "planning dialogue proceedings" of the Japan Patent
Office are based on the aforementioned proceedings of a lawsuit for cancelling a trial decision.
In the current invalidation trials an open oral hearing is held, whereas in standard attempts only aprivate oral questioning is held, which may be inconvenient for interested parties other than anappellant. Thus, since it is explained that an open oral hearing may be held instead of a privateoral questioning, the third oral questioning should be held as an open oral hearing, especially intrials that attract public attention.
In the past, I once suggested that the proceedings in the oral preparatory proceedings
conducted at the Intellectual Property High Court should be referred to in order to improve theefficiency of the proceedings of invalidation trials (Patent News No. 11754). However, as 14
years have passed since then, nobody remembers my suggestion, and the nuance of the suggestionis also slightly different in the present, but I am wondering whether the attempt to hold planning
dialogue proceedings will be successful or not.
This article was appeared in the June 15, 2020 issue of Keizai Sangyo Shinpo.
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