Unlike in other countries, in Japan JPO appeals are more advantageous than examinations. In general, there is a higher possibility of successful acquisition of rights at the appeal stage than at the examination stage. Understanding the JPO Japanese Appeal System and the Differences From Other Countries – the Four Appeal Stages – is vital.
All countries have the appeal system to fight refusal to grant IP rights sought – ie. to seek a reversal. Initially, in most countries, it is believed that the best situation for any IP applications – ie. patents, trademarks, designs – is to gain patents or registrations at the examination level without filing appeals due to the cost and the time involved.
In any country, an “examination” is a kind of battle, and it is difficult to gain a patent and registration by only utilizing standard procedures following an order from a PTO, without fighting. Please note that in the JPO’s Japanese intellectual property system “designs” are also thoroughly examined before registration, and also novelty and creativity are examined.
This is also the case for the Design Patent system in the U.S., but not so for the Community Design system in the EU.
From my experience, there are almost no cases of patents, trademarks, or design examinations, in Japan and abroad, where notice of reasons for refusal are not sent, and so, such patents and registrations are not made.
In such cases, for the most part, US Attorneys recommend a Request for Continued Examination (RCE), and not filing an appeal, to fight a “Final Office Action”. Conversely, in the case of Japan, there is no RCE system. Therefore, there is no choice but to file an appeal in order to challenge a decision of refusal.
Thus, there is a significant difference in the two countries’ systems: whereas in the United States there is an RCE which is cheaper than an appeal and has some likelihood of success, in Japan, although it does cost money, it is usually highly recommendable to file an appeal.
The challenge of acquiring patents, designs and trademarks in Japan can be done at four stages: “examination stage”, “appeal stage” at the JPO, “IP high court stage”, and “Supreme Court” stage. Of these, the Supreme Court does not conduct substantive appeals, so in effect, it is possible to dispute the acquisition of rights in three stages: “examination,” “appeal at the JPO” and “IP High Court.”
Furthermore, at the Intellectual Property High Court, the reversal rate of decisions at the appeal stage is only about 10 to 15%. Conversely, the reversal rate at the appeal stage at the JPO with respect to the decision of refusal at the examination stage is about 70%: this is data published by the JPO. This is consistent with the experience of our office over the past 20 years; ie. that the rate of success is far higher at the appeal stage than at the IP high court.
Please note that, in Japan, generally, large companies tend not to use the appeal system due to the cost.
In my opinion, examinations are basically conducted uniformly, and based on the JPO’s examination guide manual. On the other hand, at the appeal stage, examinations are conducted rather individually and more substantively. That is the main reason that in Japan JPO appeals are more advantageous than examinations.
It is noteworthy, however, that in recent years and during the COVID pandemic, even at the examination stage, applicants have been encouraged to conduct interviews with examiners online with web conferencing applications and/or via telephone interviews based on drafts of amendments to overcome the rejection.
Through these changing procedures, it seems that the acquisition rate at the examination stage is now higher than before. This trend is very favorable for the applicants for both domestic and foreign companies. Once again, understanding the JPO Japanese Appeal System and the Differences From Other Countries – the Four Appeal Stages – is vital.
