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.

Episode 9

In recent years, the number of trademark registration applications has been on the rise, with approximately 60% of applications being filed by individuals and small and medium-sized enterprises. However, the number of unregistered cases after registration assessment is also increasing. Furthermore, approximately 80% of claims are successful in non-use cancellation trials (Article 50 of the Trademark Law) (https://www.jpo.go.jp/resources/shingikai/sangyo-kouzou/shousai/shohyo_shoi/document/t_mark_paper09new/ 01.pdf).
This is because individuals and small and medium-sized enterprises have become aware of their rights, and some patent (trademark) firms have made low-cost trademark registration applications a selling point, leading to an increase in the number of easy trademark registration applications.
The object of protection under the Trademark Act is not the trademark itself, but the business credit embodied in the trademark (Article 1 of the Act). The purpose is to establish a brand and make your business successful, and trademark registration is a means to that end.
Even after a trademark is registered, especially in highly competitive fields, competitors may request a trial to invalidate the trademark registration (Article 46 of the Act). In this case, you must protect your registered trademark. Registering a trademark is just one step in the journey to establishing your brand and building a successful business. If you apply for trademark registration because it's cheap even though you have no purpose or plan to use it, and if you don't register it even if it's approved, or if you don't use it even after registering, the application fee will end up being wasted.
Some patent (trademark) firms that make low-cost trademark registration applications their selling point waive the registration fee after the registration decision is made. For such firms, whether the applicant registers or not, the fee the firm receives remains the same; if the applicant does not register, it actually saves time and effort.

Episode 8

Continuing from episode 7, we will explain the descriptions in patent specifications.
When preparing a patent specification, a patent attorney or patent engineer may add new information to the proposal prepared by the inventor, pretending to know the information.
Case 2 (Maxacalcitol case) in "Regarding the technical scope of patented inventions and their interpretation" in [Reference materials] is a case in which the doctrine of equivalents was applied. As a result, the technical scope of patented inventions (Article 70 of the Patent Act) has been interpreted more broadly than the scope of claims.
Looking at the investigator's commentary on the Supreme Court case above, "Based on the explanation of this judgment, if there is a statement in the specification that can be seen as disclosing an invention in which the starting material etc. has a trans vitamin D structure, such as a description of the process of converting the trans form to the cis form. It seems highly probable that there were special circumstances in which the claim of equality was not permissible.”. (“Housou Jiho” December 2017 issue, p. 213). In other words, if the preparer of the specification had added such information while pretending to know, there is a high possibility that the doctrine of equivalents would not have been accepted.
By the way, civil Precedents of the Supreme Court include "Minshu" and "Shumin". The "Minshu'' is the official Supreme Court Precedent, and the "Shumin" was created as an internal document of the court.
Supreme Court decisions are not directly written by Supreme Court judges, but are drafted by elite judges called "Supreme Court investigators," and the Supreme Court judges make additions and revisions.
Regarding the "Minshu", the monthly magazine "Housou Jiho" will publish the "Explanation of Supreme Court Precedents" by the investigator who prepared the original draft of the Supreme Court decision. For this reason, it is also called "investigator commentary''. The "Explanation of Supreme Court Precedents - Civil Edition'' has been compiled and bound by year.
The Supreme Court's judgment is relatively concise, and there is a wide range of interpretations. Complementing this is the "Explanation of Supreme Court Precedents.'' "Supreme Court Precedents Commentary" is essentially the Supreme Court's official commentary on Supreme Court Precedents (Minshu). For this reason, it is necessary to read Supreme Court Precedents (Minshu) while referring to the "Explanation of Supreme Court Precedents". However, the reality is that many patent attorneys are not even aware of the existence of " Explanations of Supreme Court Precedents''.