Each country’s patent system has an examination stage and an appeal stage. Patent appeals in Japan, however can play a vital role in strategy. The idea that the decision in an examination will be reconsidered in the appeal is common throughout the world. However, in terms of the actual process, specifically the Examination / Appeal relationship, it should be noted that the roles played in Japan are slightly different than elsewhere.
In the case of the United States, if a final refusal (Office Action) is made in an examination, when consulting with US patent attorneys they generally recommend filing a “Request of Continued Examination” (RCE), and do not recommend filing a request for appeal. Therefore, as for the United States, it seems that there is a mentality that patents should be obtained in the examination stage, and that filing appeals is not a very effective way.
On the other hand, there is no “RCE” system in the Japan. There is a “divisional application” system. By using the “divisional application”, it is possible to pursue patent rights at the examination stage even if a final refusal is made.
However, the divisional application system in Japan is just to “divide the invention”, and we are not able to pursue the patent regarding the rejected invention as it is. Also, the requirements of divisional applications are strict. Therefore, if you want to pursue a patent on a rejected invention in Japan, you must file a request for appeal.
Since the appeal process incurs almost the same amount of fees as the examination (JPO examination fees and attorneys fees), large companies that must acquire patents in large quantities generally tend to avoid appeals. On the other hand, in the case of SMEs and individual inventors, there is generally an intention to “want to acquire patent even if a considerable investment is made”. In most cases, a request for appeal (appeal to decision of refusal: Article 121 of the Japanese Patent Law) is filed against the final refusal in the examination.
We have experience with a large number of appeal cases (appeals against decisions of refusal) at our office – many of which were SME cases. As a result, we put forward the following points of clarification.
1. The hurdles for obtaining rights in examination and appeal are often different.
Even if they are rejected in the examination stage, they are very often patented in the appeal. This tendency is the same not only for patents, but also for design and trademark cases. That is, in the examination stage, the examiner conducts him/herself by applying the examination guidelines uniformly. However in the appeal stage a more flexible operation based on the examination guidelines, but also according to each specific case is performed. This point is particularly remarkable and important in the case of a refusal due to a lack of inventive step.
2. Interviews with the appeal examiners work very effectively.
Interviews with the examiners can also be conducted during examination if the applicant wants. However, interviews at the appeal are overwhelmingly more influential and effective than at the examination stage. In a past patent case that had been rejected three times in the examination stage, the inventor gave a powerful presentation to the three appeal examiners in the interview, which led to the swift acquisition of the patent. Therefore, in Japanese patent examinations, even if the examination is finally rejected, do not give up and actively use the appeal process.
Once again, patent professionals should bear in mind during the examination phase that patent appeals in Japan can be a very important part of strategy.