Patent Act Article 131: Formalities for Requesting a Trial
When requesting a trial against an examiner's decision of refusal, a trial for patent invalidation, a trial for invalidation of an extension of patent term, or a trial for correction, a written request for trial and the required fees must be submitted.
When making an amendment at the time of requesting a trial against an examiner's decision of refusal, submit a written amendment separately from the written request for trial. You must not include the content of the amendment within the written request for trial. A formal examination of the written request for trial will be conducted, and if there are no issues with the formalities, a duplicate will be served to the respondent.
In a request for a trial for invalidation, as the grounds for the request, you must (i) specifically identify the facts that serve as the basis for invalidating the patent, and (ii) describe the relationship with the evidence for each fact requiring proof. To summarize briefly, it looks something like: 'Claim 1 of Patent No. XXX lacks novelty. The reason is the description in paragraph XXX of Prior Art Document 1. Paragraph XXX of Prior Art Document 1 describes content equivalent to Claim 1 of Patent No. XXX.'
(Example of inappropriate grounds for request)
Patent No. XXX interferes with our business structure, so we request a trial decision to invalidate the patent.
・Patent Act Article 131
(Formalities for Requesting a Trial)
Article 131: A person requesting a trial must submit a written request to the Commissioner of the Japan Patent Office stating the following matters:
1. The name and address or domicile of the parties and their representatives
2. The identification of the trial case
3. The object of the request and the grounds therefor
2. In the case of requesting a trial for patent invalidation, the grounds for the request stated in item (iii) of the preceding paragraph must specifically identify the facts that serve as the basis for invalidating the patent and describe the relationship with the evidence for each fact requiring proof.
3. In the case of requesting a trial for correction, the object of the request and the grounds therefor stated in item (iii) of paragraph 1 must be stated as provided by Ordinance of the Ministry of Economy, Trade and Industry.
4. When requesting a trial for correction, a corrected description, scope of claims, or drawings must be attached to the written request.
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