Episode 10

In episode 9, we explained about trademark registration applications, but this time we will explain about appeals.
Even if you file a patent, design, or trademark application and receive a decision of refusal, you can request an appeal against the decision of refusal. In appeals against decisions of refusal, approximately 70% of requests are successful for patents, designs, and trademarks. If this appeal against the examiner's decision results in a refusal decision, a lawsuit can be filed with the Intellectual Property High Court to cancel the trial decision, but in about 80% of cases the trial decision is upheld (https://www.jpo.go.jp/resources/report/sonota-info/document/panhu/shinpan_gaiyo.pdf). Therefore, if you have the intention of acquiring rights, even if your application is rejected at the examination stage, if your budget allows, it is worthwhile to request an appeal against the decision of refusal.
In court, if you lose in the first instance, it is not uncommon to change your attorney when filing a second instance (appeal court).
The examination of applications for industrial property rights (patents, designs, trademarks) is the first instance, and the appeal against the decision of refusal is the second instance.
 If your application is rejected in the examination and you request a appeal, you have the option of changing your agent.
 However, the period for requesting an appeal against a decision of refusal is within three months from the day a certified copy of the decision is served, so if you wish to change your agent, you must request a new agent immediately after being served with a certified copy of the decision.
 In particular, when filing a request for appeal against a decision of refusal of a patent application, amendments to the scope of patent claims, etc. can be made at the same time as the request for appeal (Patent Law Article 17-2 Paragraph 1 Item 4). In this case, the case will be heard in a preliminary examination (Article 162 of the Act), so it is necessary to request a new agent immediately after the certified copy of the assessment is served in order to consider whether amendments are necessary.