When a patent application receives a final rejection (an examiner’s decision of refusal), both Japan and the United States offer systems for appeal. However, the structure and cost of these systems differ significantly. This article explains how Japan’s appeal system (Trial against an Examiner’s Decision of Refusal) offers excellent cost-efficiency compared to the U.S. system.
1. Overview of the Japanese Appeal System
In Japan, applicants may request a Trial against Examiner’s Decision of Refusal within 3 months from the date of delivery of the decision (extended to 4 months for foreign applicants).
The appeal is reviewed by a panel of three appeal examiners who are independent of the original examiner.
When the applicant files an amendment together with the appeal, the application will undergo a pretrial reexamination by the original examiner before it is sent to the appeal board.
If the examiner determines the rejection has been overcome: A Decision of a Patent Grant (Notice of Allowance) will be issued.
If the original rejection is resolved but a new rejection arises: A new Notice of Reasons for Refusal (Office Action) will be issued.
If the examiner maintains the original rejection: The case will proceed to the appeal board (pretrial reexamination lifted).
2. Cost Comparison (as of April 1, 2025)
(1) Japan: Appeal Fee (Official Fee)
Basic Fee: JPY 49,500
Additional Fee: JPY 5,500 × number of claims
Example: 5 claims → 49,500 + 5×5,500 = JPY 77,000 (~USD 500, at USD 1 = JPY 150)
(2) United States: PTAB Appeal (Notice + Brief filing, Official Fee)
Approx. USD 3,440
Japan’s system is significantly less expensive in terms of official fees.
3. Appeal Statistics in Japan (2023)
Average processing time: 12.1 months
Total appeal filings: 21,047
Cases transferred to the appeal board after preliminary review: 10,050
Appeal success rate (rate of final rejection overturned): 78%
For more detailed statistics and graphical data, please refer to the JPO’s official website:
https://www.jpo.go.jp/e/resources/report/statusreport/2024/index.html
4. Conclusion
Post-final rejection procedures differ significantly between Japan and the United States. However, Japan’s appeal system stands out as cost-effective, fair, and flexible.
Foreign applicants are strongly encouraged to take advantage of this system as part of a strategic approach to intellectual property protection in Japan.
If you have any questions, please feel free to contact us through the following page:
https://www.oshpat.jp/en/en-contact/
OSHIMA & PARTNERS
Japanese Patent Attorney
Yosuke Katsumi
