About the referee

An "adjudication" is a hearing conducted by a panel of three or five adjudicators to determine whether the final disposition, etc., made by an examiner is fair.
Each jurisdiction of intellectual property law has a trial system. The Patent Law has its own trials called "trials for correction" and the Trademark Law has its own "trials for cancellation," but the Design Law does not have such trials.

(Citation: Japan Patent Office Trial and Appeal Board “Overview and Operation of the Examination System”)

referee flow

At trial, cases are heard by three or five trial judges.
Trial proceedings begin with a request for trial, followed by a formal investigation and a panel discussion regarding substantive decisions.
In the case of an invalidation trial, an "oral hearing" is generally conducted to hear the arguments of the parties directly. The panel will make a decision after reaching a sufficient conclusion.

(Citation: Patent Office Trial and Appeal Board “Patent Office Trial System Handbook”)

Referee's role

Even if you know the procedures for applying to the Patent Office to register industrial property rights (patent rights, utility model rights, design rights, trademark rights), you may not know what to do if the rights are not obtained, or what to do if the rights are obtained. Few people know what they can do about it.
In recent years, the importance of "intellectual property strategy" has become known as a strategy for increasing a company's competitiveness. The adjudication system is essential for protecting business from the rights of other companies in order to develop business activities through the acquisition and enforcement of appropriate rights.

Referee statistics information

(1) Appeal against decision of refusal

(Citation: Patent Office statistical data)

(2) Invalidation trial

(Citation: Patent Office statistical data)

(3) Appeal against the decision to dismiss the amendment

(Citation: Patent Office statistical data)

(4) Judgment

(Citation: Statistical data from the Japan Patent Office Trial and Appeal Board)

Types of design trial systems and their outlines

In the Design Act, there are three types of trials: (1) appeal against a decision of refusal, (2) trial for invalidation, and (3) appeal against a decision to dismiss an amendment. In addition, there is a decision (4) that allows you to request an official opinion from the Patent Office Trial and Appeal Board regarding the scope of your rights.

Appeal against decision of refusal

We will determine the validity of the decision of refusal and whether rights should be granted.

Overview

If you are dissatisfied with the examiner's decision of refusal, you can request a "trial against the decision of refusal." A panel consisting of administrative examiners will examine whether the decision of refusal is reasonable.

If it is determined that the application is not valid, the Board of Appeal will conduct an ex-officio investigation to determine whether there are any other reasons for refusal, and will determine whether or not it is possible to grant rights. If no other reason for refusal is found, the decision of refusal will be canceled and a decision will be made to the effect that the application should be submitted for further examination. The judgment in the trial decision is binding on the examiner. (It is not possible to make a decision that differs from the trial decision.)

If we determine that the decision of refusal is appropriate, we will maintain the decision of refusal.

If you are further dissatisfied with the trial decision that upholds the decision of refusal, you can file an appeal with the Tokyo High Court.

The success rates for appeals against decisions of refusal in 2021 and 2020 are high, at approximately 91% and 82%, respectively. (*The claim success rate in 2019 was approximately 47%.)

How to use

If the design registration is not approved due to a decision of refusal, the exclusive right to the design will not be recognized. However, if the request is approved and the design is registered, exclusive and exclusive rights to the design will be granted.
Therefore, if an unauthorized third party is working on a design that is the same as or similar to the design in question, it is possible to sue for design right infringement.

In the trial procedure, the case is examined by a panel of three trial examiners, so there is a possibility that the decision will be different from the decision of the examiner. If you really want to obtain exclusive and exclusive rights to a design that has been rejected, it would be a good idea to take advantage of an "appeal against the decision of refusal."

Procedures, etc.

・A person who has received a decision that the application should be refused can make a request.
・In principle, a request for appeal must be filed within three months from the date of delivery of a certified copy of the decision of refusal.

Trial period/costs

Trial period: 2021⇒6.2 months, 2020⇒7.3 months
Agency fee: 55,000 yen

Invalidation trial

Defected rights are universally invalidated.

Overview

If you wish to invalidate a design that should not have been registered in the first place, you can request an "invalidation trial."
"Invalidation trial" is a system for resolving disputes between parties regarding the validity of rights. Grounds for invalidation are limited to those listed in Article 48, Paragraph 1 of the Design Act, and a design registration cannot be invalidated for any other reason.

A panel consisting of trial judges will conduct ex-officio investigations as necessary. Additionally, both parties are given ample opportunity to present their arguments, and through oral proceedings, the parties' arguments that cannot be expressed in writing are brought out.

When a request for invalidation trial is made and the trial decision to invalidate the design registration becomes final and binding, the design right is, in principle, deemed to have never existed from the beginning. However, if a design registration is invalidated because it falls under the subsequent grounds for invalidation (Article 48, Item 4), it will be deemed that the design registration did not exist from the time the design registration came to fall under that condition.

How to use

Invalidation trials can be used effectively in the following cases:

Furthermore, even if you file a request for an "invalidation trial" and invalidate a design registration, even if you apply for a design that is the same as or similar to the registered design that was invalidated, the design that you applied for will not have novelty. If not, the design will not be registered.

The success rates for invalidation trials in 2021, 2020, and 2019 were approximately 20%, 38%, and 17%, respectively.

Procedures, etc.

・Under the Design Act, any person can request an invalidation trial. (Under Patent Law and Trademark Law, only interested parties can make a request.) However, this does not apply in cases where there is a violation of the joint filing obligation or where there is a misappropriation of the application.
・You can make a claim even after the design right has expired. (When a claim for damages is made after the design right has expired, you can avoid the claim for damages by requesting an invalidation trial and invalidating the design registration.)

Trial period/office costs

Trial period: 2021⇒11.2 months, 2020⇒12.7 months
Agency fee: 55,000 yen

Appeal against amendment dismissal decision

Determine the appropriateness of rejecting the amendment.

Overview

If you are dissatisfied with the examiner's decision to dismiss an amendment, you can request an "appeal against the dismissal of an amendment." In cases where there is a trial decision to revoke a decision, the decision is binding on the examiner in that case. (It is not possible to make a decision that differs from the trial decision.)

Procedures, etc.

・A person who has received a decision to dismiss an amendment can make a request.
- In principle, a request for appeal must be filed within three months from the date of delivery of a certified copy of the decision to dismiss the amendment.

Agency expenses

Agency fee: 55,000 yen

Judgment

You can request the official opinion of the Japan Patent Office Trial and Appeal Board regarding the scope of your rights.

Overview

When a right holder wants to know whether another person's products, etc. fall within the scope of their own design rights, etc., they can request a ``determination'' from the Board of Appeal.
Additionally, if you want to confirm that the product you are planning or manufacturing does not infringe on the rights of others, you can request a "judgment" even if you are not a rights holder.

However, please note that the judgment system is provided as a type of administrative service and is not legally binding.

How to use

It can be used for materials claiming infringement or non-infringement in infringement lawsuits.

Trial period/office costs

Trial period: 2021⇒8.2 months, 2020⇒7.7 months
Agency fee: 40,000 yen