The plaintiff in an action for revocation of a trial or appeal decision144 is limited to:
- parties and intervenors in the case; and
- any person whose application to intervene in the proceedings of the opposition to the grant of a patent, in a trial or a TAD retrial, is refused.145
In the case of a request to revoke an ex parte JPO ruling to revoke or not to grant a patent or to refuse to grant a correction, the Commissioner of the JPO becomes the defendant. However, in the case of a request to revoke a decision following a trial for invalidation, the demandant or the demandee (patentee) from the JPO trial will become the defendant.146
An action for revocation of a trial or appeal decision may be instituted within 30 days of the date that a certified copy of the decision is served.147 In the case of a trial or appeal decision unfavorable to a foreign party, 90 days may generally be added.148
In relation to an action for revocation of a decision in a trial for invalidation, there is an issue concerning whether the action for revocation must be instituted by all joint owners if the patent right or the right to the grant of a patent is jointly owned. While Article 132(2) and (3) of the Patent Act provide that the request for a JPO trial must be filed by or against all joint owners regardless of whether the joint owners serve as the demandant or demandee, there is no such stipulation for an action for revocation of a trial decision.
The Supreme Court has held that, when the right to the grant of a patent is shared, an action for the revocation of an appeal decision to refuse an invention in an appeal against an examiner’s decision of refusal is an inherently mandatory joint suit to be filed by all joint owners serving as the plaintiff.149
In contrast, in an action for the revocation of a trial decision in a trial for invalidation in which a jointly owned patent right was invalidated, one of the joint owners may file an action for revocation of the trial decision. It is understood that this action is intended to achieve the protection of a right as “an act of preservation” in light of each joint owner’s right to an already-established right.150 This is despite the view that the rights of joint owners should be determined “as a unified matter” before the establishment of a patent right.151