From a New Comparison

Questions about ex parte patent appeals (i.e., appeals of an Examiner’s rejection) to the Patent and Trial Appeal Board (PTAB) of the US Patent and Trademark Office (USPTO) are often asked.  Many of these questions originate from Japan.  One question clarified how appeals to the Trial and Appeal Department (TAD) of the Japan Patent Office (JPO) against an Examiner’s Decision of Refusal can be different than ex parte appeals to the PTAB.

Modal PLLC currently employs no benrishi and, therefore, cannot represent clients directly before the JPO.  Also, the JPO does not ensure accuracy of its English translations.  So, on the basis of this limited understanding, let’s take a look at one key difference.

First, in the JPO TAD, “A panel consisting of administrative judges examines whether the decision of refusal is appropriate. If it is determined inappropriate, the [TAD] conducts an ex officio investigation with regard to presence or absence of other reasons for refusal, and determines whether the right can be granted.”  Handbook for Trial and Appeal System in Japan at 6 (Jan. 21, 2021) (available here).  This phrasing suggests the TAD panel gives no weight to the Examiner’s Decision.  Thus, the TAD panel seems to conduct something like American de novo review.

This view is supported by evidence the TAD revoked the Decision of Refusal in 68.2% of patent cases in 2019.  Id. at 7.  Certainly, not much deference is paid to Japanese Examiners if they are reversed more than 50% of the time.

In contrast, the PTAB reviews the US Examiner’s rejection de novo, only when an issue is contested.  E.g., Ex parte Frye, Appeal No. 2009-006013, slip op. at 9-10 (Feb. 26, 2010) (precedential) (“the Board reviews the particular finding(s) contested by an appellant anew in light of all the evidence and argument on that issue”).  The PTAB at least partially affirms patent Examiners 65.6% of the time. Appeal and Interference Statistics (Dec. 31, 2020) (available here). 

Thus, the JPO TAD is about as likely to grant a patent as the PTAB of the USPTO is to maintain the current rejection.

In a future post, we’ll look at how the US view of waiver can hurt Applicants unaware that they are entitled to only limited de novo review at the PTAB.  In the interim, if Modal can answer your questions about an ex parte appeal at the USPTO, please contact us.