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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.

<Comparison between Patent Opposition System introduced recently and Patent Invalidation Trial System>
Patent Opposition SystemPatent Invalidation Trial System
Purpose of SystemEarly establishment of stable patent rightsResolution of dispute between parties regarding validity of patent
ProceedingsEx parte proceedings
(basically between the JPO and patentee)
Inter partes proceedings
(between demandant and demandee (patentee))
Eligible Person to be Opponent/DemandantAnyone
(non-anonymous)
Interested party only
Time Requirements for Opposition/DemandWithin 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 WithdrawalOpposition 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/Invalidation① 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 ExaminationDocumentary examination
(Oral examination cannot be conducted.)
Oral examination in principle
(Documentary examination may be conducted as well.)
Multiple Oppositions/Demands and Handling of CasesExamination is conducted jointly in principle.Examination is conducted not jointly but for each case in principle.
Advance Notice of Decision/Trial DecisionNotice 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 DecisionDecision of revocation or maintenance of patent, or of dismissal of oppositionTrial decision of approval or disapproval of trial demand, or of dismissal of trial demand
AppealAgainst 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)
(http://www.jpo.go.jp/tetuzuki/sinpan/sinpan2/igi_moushitate_ryuuiten.htm)

If you have any inquiries concerning this matter, please feel free to contact us.

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