Patent Act Article 8: Patent Administrators for Overseas Residents

This article is a revised version. Links to past articles are provided at the bottom.

1. Procedures and Patent Administrators for Overseas Residents

Articles 6 through 8 of the Patent Act stipulate procedural capacity. Procedural capacity is the capacity to be the subject of procedural acts.

A concept related to procedural capacity is capacity to hold rights. Capacity to hold rights is the capacity to be the subject of rights. For example, there are people who have the capacity to hold rights but lack procedural capacity, such as minors or adult wards. Viewed differently, if one has procedural capacity, one generally also has the capacity to hold rights. An exception to this is Article 6 of the Patent Act.

Overseas residents cannot perform procedures or file lawsuits against dispositions made by administrative agencies unless they use a patent administrator (Patent Act Article 8, Paragraph 1). Exceptions to this, where overseas residents can perform procedures directly without a patent administrator, include: (1) procedures performed when an overseas resident who has a patent administrator is staying in Japan (Patent Act Enforcement Order Article 1), and (2) procedures performed by an international patent applicant who is an overseas resident until the domestic processing standard time (Patent Act Article 184-11).

Article 8, Paragraph 2 of the Patent Act is provided as a provision under the Patent Act that limits the scope of a patent administrator's agency authority in cases other than those specified by Cabinet Order under Article 8, Paragraph 1.

In principle, a patent administrator is an agent with full authority (Patent Act Article 8, Paragraph 2) and can perform all procedures. All procedures include disadvantageous acts. However, it is possible to limit the scope of a patent administrator's agency authority.
If this agency authority is granted before a patent application, the agency authority continues from the patent application until after the registration of the patent right.

Note that a patent administrator under the Patent Act is called a utility model administrator under the Utility Model Act, a design administrator under the Design Act, and a trademark administrator under the Trademark Act.

2. Administrative Dispositions

Since the Japan Patent Office (including examiners, etc.) is an administrative agency , dispositions by the Japan Patent Office are administrative dispositions.

Among the 'dispositions made by an administrative agency pursuant to the provisions of this Act or orders based on this Act' in Article 8 of the Patent Act, 'dispositions made by an administrative agency pursuant to this Act' include patent grants, refusal decisions, and dismissal of applications.

A patent attorney can represent a principal in lawsuits against administrative dispositions, such as litigation to rescind a trial decision, which is an administrative disposition, but cannot represent them based on this paragraph for claims for damages, etc.

Note that 'all procedures' in Article 8, Paragraph 2 of the Patent Act refers to procedures under the Patent Act. Furthermore, 'lawsuits against dispositions made by an administrative agency' in Article 8, Paragraph 2 of the Patent Act includes litigation to rescind trial decisions (Patent Act Article 178) and litigation to rescind decisions or rulings under the Administrative Complaint Review Act.Claims for damages based on the Code of Civil Procedure are not included in the scope of Article 8, Paragraph 2 of the Patent Act. If the agent is an attorney, it is thought that they can also handle claims for damages based on the Code of Civil Procedure if they receive a mandate.

Relationship with other articles
The Article-by-Article Commentary on Article 184-2 of the Patent Act lists dispositions made by an administrative agency pursuant to this Act as examples, including dismissal of procedures, rulings, rescission of rulings, dismissal of requests for certification, etc., and states that when filing an objection regarding these matters, the Administrative Complaint Review Act applies in all cases. Also, litigation for rescission comes after filing an objection or a request for administrative review, and the reason for this is that 'going through an objection to an administrative agency is appropriate because, first, it gives the administrative agency an opportunity to reflect and protects the rights and interests of the citizens, and second, it reduces the burden on the courts.'

Patent Act Article 8

Past articles
• Patent Act Article 8: Administrative Dispositions

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