This article summarizes key insights from the JPO’s ‘Latest Trends in Appeals’, published late last year, offering an overview of recent trends in Japanese patent appeals.
https://www.jpo.go.jp/news/kokusai/seminar/document/chizaishihou-2024/jpo-doko_jp.pdf
Appeal Against Decision of Refusal
In 2023, 230,184 Japanese patent applications were filed for examination, of which 21,047 resulted in appeals against decisions of refusal. In other words, approximately 10% of examined applications proceeded to the appeals stage.
The success rate for appeals against decision of refusal (appeal success rate) in Japan is notably high, with 78.0% of appeals succeeding in 2023. This trend suggests that appeals are predominantly filed for patent applications where obtaining patent rights is a priority, achieving a high likelihood of success.
Approximately half of appealed applications are granted a patent during the preliminary re-examination stage (re-examination by the Office Action (OA) examiner), which forms part of the appeals process. For further details on the appeals process, please refer to this link.
Patent Opposition
For Japanese oppositions concerning patent gazettes issued on or after 1 April 2015, the number of requests increased slightly in FY2023 to 1,411. Among oppositions finally adjudicated between 2015 and 2023, 88.0% of patent rights were upheld, with amendments made in 50.5% of upheld cases.
Patent oppositions are more commonly filed for chemical patents and less frequently for physical and electronic patents, reflecting divergent utilization rates across technical fields.
Patent Invalidation Trial
In Japan, requests for patent invalidation trials have declined since the start of patent opposition, with 84 requests filed in 2023. Of the trial outcomes, 13% resulted in invalidation decisions, while approximately 24% were valid decisions with corrections.
Decisions in party-initiated trials, including invalidation trials and correction trials, had appeals filed with the High Court at a relatively high rate, with 50 out of 231 trial decisions in 2023.
