An International Guide to
Patent Case Management for Judges

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7.4.4 Subject of examination and grounds for overturning a trial or appeal decision

A party who is dissatisfied with the decision may claim that the trial or appeal decision made by the TAD of the JPO – as an administrative agency – is incorrect because of either procedural or substantive law defects (or both) and demand the decision’s revocation. Each of these defects must have had, by itself or together with other defects, an effect on the conclusion of the trial or appeal decision.

Appeals against JPO decisions are administrative lawsuits. In principle, parties to administrative lawsuits can claim and prove any new fact regarding the administrative decision. However, raising new facts or evidence must be limited in proceedings against the JPO so that the parties may receive the benefit of an effective trial by the JPO as a specialized administrative agency before any administrative litigation.

In the Knitting Machine Case,153 the Supreme Court ruled that, in suits against JPO decisions, parties could not raise new facts that had not been raised in the trial before the JPO, even if they related to the novelty of the invention or if the same provision of the Patent Act was cited in the earlier proceedings. In other words, in court proceedings challenging a JPO decision, no documents for establishing a new factual basis for the invalidity grounds may be introduced, even for grounds for invalidation under the same provision of the Patent Act.

For example, under the Knitting Machine rule, if a plaintiff claims lack of novelty citing prior art references A, B and C, and the JPO revokes the patent based on the prior art reference A without referring to the prior art references B and C, the IP High Court can only consider prior art reference A when determining the grounds for lack of novelty.

The court will examine issues – such as novelty and inventive step – considered in trials and appeals by the TAD of the JPO. Parties should be given the opportunity to have their case heard both before the JPO and the IP High Court, particularly given that:

  • these cases usually involve highly technical matters; and
  • the JPO and the court have different expertise and are expected to examine the issues individually.

The JPO is likely to be more experienced than the IP High Court on highly technical matters, although the IP High Court does have judicial research officials with specialized knowledge who support judges in patent cases.154 The judges of the IP High Court review and decide the validity of the JPO’s decision based on their experience and with the assistance of judicial research officials on the technical aspects of the case.

From this perspective, the 1976 decision of the Supreme Court in the Knitting Machine Case remains applicable today. Furthermore, according to the Supreme Court in the Structure of Food Packaging Containers Case, parties can add new evidence to reinforce their argument based on prior art reference A in an appeal against a JPO decision.155 If the court finds that the JPO decision regarding prior art reference A is incorrect and must be set aside, the case will be remitted for a new trial before the JPO, and the JPO may then examine prior art references B and C.