Patent Japan

Wednesday, October 04, 2006

Action Plan of JPO Appeal Department

In March, 2005, the Appeal Department of Japan Patent Office issued a paper called “Action Plan for improving examination/appeal.” This Action Plan is summarized in JPO's Annual Report.

2) Measures for the Reform of Appeal/Trial System
The Appeal/Trial Examination Department addressed the urgent issues of responding to the expected increase in the number of demand for trials in accordance with the remarkable increase in the number of examinations being processed. By exploiting the following steps, the Appeal/Trial Examination Department intends to reduce the number of cases from the Examination Department, and to maintain timely and high quality trials.
b. Execution of Strict Trial Procedures
In order to reduce the number of cases of appeal and trial examinations, there is an urgent need to conduct management which, whenever possible, leads to confirmation of the establishment of rights or decisions of rejection at the examination phase. With regards to inventions eligible for patent, it is important to make them patentable with adequate objections and revisions at the phase of reconsideration by the examiner before appeal. To this end, applicants abide by the system to promote adequate objections and revisions at the examination phase, and a strict appeal and trial examination approach was put into place so that appeals and trials become a serious issue between the examiner who made the decision of rejection and the person demanding for trial objecting to this, in order to realize fair and productive appeal and trial examinations. The operation of such a system promotes the granting of patent at the examination phase to applicants for inventions that are eligible for patent, allowing at the same time for burden and cost reductions for both the applicants and the JPO.


In short, this passage makes it clear that, once the case enters the appeal stage, appeal boards would not easily accept allowable claims by amendment and would make decisions of refusal based on the claims as it stands, when they are considered to be rejected. In the past, when appeal boards would consider that allowable subject matters exist, a prevailing practice was that they would give appellants the chance to file amended claims and would grant patents, even though main claims should be refused.

This change of practice is apparently reflected in the recent trend in the figure [Rate of Decisions to Refuse Patent Applications in Appeals against Decision of Refusal] at page 21 of the JPO's Annual Report.

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