[ IP News-Patent/Utility Model ]
Patent Opposition System
As of April 1, 2015, the patent opposition system has come into operation.
Patent opposition is one of the means of revoking a third party’s patent, and anyone can file an opposition within 6 months from the issue date of a patent gazette (Patent Act, Article 113).
Although patent invalidation trial was the only means of revoking a third party’s patent after the abolishment of the former patent opposition system in 2003, the patent opposition system has been revived.
|Patent Opposition System||Patent Invalidation Trial System|
|Purpose of System||Early establishment of stable patent rights||Resolution of dispute between parties regarding validity of patent|
|Proceedings||Ex parte proceedings|
(basically between the JPO and patentee)
|Inter partes proceedings|
(between demandant and demandee (patentee))
|Eligible Person to be Opponent/Demandant||Anyone|
|Interested party only|
|Time Requirements for Opposition/Demand||Within 6 months from issue date of patent gazette|
(Opposition cannot be filed after lapse of rights.)
|Any time after registration of patent|
(Trial can be demanded even after lapse of rights.)
|Opposition/Demand and its Withdrawal||Opposition can be filed for each claim.|
Withdrawal is impossible after notice of reasons for revocation is issued.
|Trial can be demanded for each claim.|
Withdrawal is possible even after submission of Written Reply when agreed by opposing party.
|Grounds for Opposition/Invalidation||① Public interest grounds (novelty, inventive step, inappropriate descriptions in specification, etc.)||① Public interest grounds (novelty, inventive step, inappropriate descriptions in specification, etc.)|
② Grounds regarding ownership of rights (usurped application, violation of joint application requirements)
③ Subsequent grounds after patent grant (violation of entitlement of rights, violation of treaty)
|Method of Examination||Documentary examination|
(Oral examination cannot be conducted.)
|Oral examination in principle|
(Documentary examination may be conducted as well.)
|Multiple Oppositions/Demands and Handling of Cases||Examination is conducted jointly in principle.||Examination is conducted not jointly but for each case in principle.|
|Advance Notice of Decision/Trial Decision||Notice of reasons for revocation is issued as advance notice of decision of revocation.||Advance notice of trial decision is made before approval of trial demand (trial decision of invalidation).|
|Decision/Trial Decision||Decision of revocation or maintenance of patent, or of dismissal of opposition||Trial decision of approval or disapproval of trial demand, or of dismissal of trial demand|
|Appeal||Against decision of revocation, patentee can file lawsuit against Commissioner of Patents as defendant with the Tokyo High Court (Intellectual Property High Court).|
Appeal cannot be filed against decision of maintenance or dismissal of opposition.
|Either demandant or patentee can file lawsuit against opposing party as defendant with the Tokyo High Court (Intellectual Property High Court).|
|Official Fee (JPY)||16,500 + (2,400 x number of target claims)||49,500 + (5,500 x number of target claims)|
Created by editing “Q & A on Patent Opposition”(JPO)
If you have any inquiries concerning this matter, please feel free to contact us.
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