We have a lot of experience of litigations regarding IP disputes. We can provide our clients with our professional opinions on the litigation. There are several types of IP litigations in Japan, but all of the disputes are finally handled at the IP high court of Japan.
1. Administrative Case
A board of appeal at JPO (Japan Patent Office) handles an appeal proceeding.
(a) A trial against a decision of rejection
Under the patent act, applicant who received a final decision of rejection in the examination stage can file a request for trial against a decision of rejection. Exactly, this is not litigation but administrative procedure which is handled at Japan Patent Office, not a court.
We can provide you with professional opinions of the possibility to win. In most cases, we recommend to file an amendment for claims in order to overcome the rejection. Such the opinions are based on the result of our study of the prosecution history. If amendment is filed at the time of filing the request for trial against a decision of rejection, an examiner who handled the case in the examination stage will be supposed to handle the case again. At this time, a board of appeal is not organized. If the examiner sees that the amended claim can overcome the rejection, he or she will cancel the previous decision of rejection, and grant a decision of grant a patent.
However, if the examiner can't change his mind, he/she will report the result of the examination to the commissioner of JPO, then a board of appeal which is organized by three appeal examiners, will soon after designated by the commissioner of JPO. The board of appeal will handle the case based on the result of the previous examination. The board of appeal will finally issue a decision on appeal, which is grant or rejection. If the result is a decision of rejection, applicant can bring the case into IP high court of Japan for cancel the decision on appeal. The IP high court will handle the case after that. Of course, we can deal with the case at the IP high court as your representative.
(b) Appeal for Opposition and Invalidation
We can also handle both of an opposition case and appeal case for invalidation. An opposition term for patent is limited to 6 months from the date of publication after grant a patent while an invalidation term is no time limitation at all; it is possible to file a request for invalidation even after the patent right is expired. The ground of opposition and the ground of invalidation are almost same but not exactly same.
If patent right is canceled by the opposition proceeding, the patent holder can bring the case into IP high court of Japan. However, even if the patent right is not canceled, the opponent (challenger) CANNOT bring the case into the IP high court. In this case, the loser party has the chance to start to file an invalidation action separately.
On the other hand, if patent right is invalidated by invalidation proceeding, looser party can bring the case into the IP high court. Of course, we can deal with the case at the IP high court as your representative.
2. Civil case based on Patent or Trademark Infringement
Civil case for patent or trademark infringement needs to be started from a district court. The jurisdiction in patent infringement is limited to Osaka district court or Tokyo district court, and the only appeal court is the IP high court of Japan. On the other hand, a case for trademark or other IP rights infringement (such as copyrights, unfair competition preventing act, etc.) can be started from other district courts.