Patent Act Articles 169 and 170: Burden of Costs in Trials and Enforceability of Decisions on Cost Amounts
I sometimes hear incorrect interpretations, but the costs for a trial against an examiner's refusal are borne by the applicant (Patent Act Article 169, Paragraph 3). Even if the reason the examiner's refusal was overturned was an obvious mistake on the examiner's part, the costs are still borne by the applicant.
On the other hand, the costs for a trial for patent invalidation are basically borne by the losing party. This burden of costs is determined ex officio in the trial decision or ruling. However, costs that are not considered essential to the trial must be borne by the winning party as well.
A "finalized decision" regarding the amount of costs has the same effect as an enforceable title of obligation (Patent Act Article 170), so compulsory execution can be carried out. In other words, if the losing party who is supposed to bear the costs does not pay them, the winning party can carry out compulsory execution against the losing party's general assets.
・Patent Act Article 169
(Burden of costs in trials)
Article 169: The burden of costs regarding a trial for patent invalidation and a trial for invalidation of an extension of patent term shall be determined ex officio by a trial decision when the trial is concluded by a trial decision, or by a ruling in the trial when the trial is concluded otherwise than by a trial decision.
2. The provisions of Articles 61 to 66, Article 69, Paragraph 1 and 2, Article 70, and Article 71, Paragraph 2 (Burden of litigation costs) of the Code of Civil Procedure shall apply mutatis mutandis to the costs regarding the trial prescribed in the preceding paragraph. In this case, the term "Supreme Court Rules" in Article 71, Paragraph 2 of the same Act shall be read as "Ordinance of the Ministry of Economy, Trade and Industry."
3. The costs regarding a trial against an examiner's refusal and a trial for correction shall be borne by the petitioner.
4. The provisions of Article 65 (Burden in cases of joint litigation) of the Code of Civil Procedure shall apply mutatis mutandis to the costs borne by the petitioner pursuant to the provisions of the preceding paragraph.
5. The amount of costs regarding a trial shall be determined by the Commissioner of the Japan Patent Office upon request after the trial decision or ruling has become final and binding.
6. Regarding the scope, amount, and payment of costs regarding a trial, and the benefits necessary for performing procedural acts in a trial, the provisions of the Act on Costs of Civil Procedure, etc. (Act No. 40 of 1971) concerning these matters (excluding the parts specified in Chapter 2, Section 1 and Section 3) shall apply mutatis mutandis, provided that they are not contrary to their nature.
・Patent Act Article 170
(Enforceability of decision on amount of costs)
Article 170: A finalized decision regarding the amount of costs regarding a trial shall have the same effect as an enforceable title of obligation.
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