2015.06.05
Comparison of patent opposition system newly established, invalidation trial system, and information provision system
PATENT
Comparison of patent opposition system newly established, invalidation trial system, and information provision system
On April 1, 2015, the patent opposition system has been restored. The patent opposition system allows any person to file an opposition against a granted patent, within six months from the issue date of its publication.
With the establishment of this system, two systems are now available for a person who has an objection to grant of a patent and wishes to invalidate the patent: “trial for invalidation” (Article 123) and “patent opposition” (Article 113).
At any time after filing of a patent application, any person can “provide information” relevant to the application (Regulations under the Patent Law, Article 13-2 and Article 13-3). It is noted that the information submitted before the registration of patent is in principle taken into consideration by the Examiner, but whether the information is adapted to an Office Action is at the Examiner’s discretion. The information submitted after the registration of patent is simply recorded at the Japan Patent Office (JPO) and viewable by the public.
The following table summarizes the comparison of these three systems.
| Patent opposition | Trial for invalidation | Provision of information | |
|---|---|---|---|
| Purpose of system | Early review of patent right after registration, early stabilization of patent right | Settlement of dispute regarding patent validity between parties | Improvement in quality and speed of examination, collection of information regarding patent validity |
| Procedure entity | |||
| In principle, procedure advances between JPO and patentee | Procedure advances between demandant and patentee | Informant only provides information to JPO | |
| Judging entity | Board of Trial Examiners | Board of Trial Examiners | Examiner (in the case of provision of information before registration of patent) |
| Eligible demanding entity |
Any person | Limited to interested
person/party |
Any person (possible without informant name) |
| Period for filing demand | Within 6 months from issue date of patent publication (not possible after lapse of right) | Any time after registration of patent (possible even after lapse of right) | Any time after filing patent application (possible even after registration of patent)） |
| Demand per claim | Possible | Possible | Possible |
| Withdrawal of demand | Not possible after notification of grounds for revocation from JPO to patentee | Withdrawal after submission of Written Reply by patentee is possible when patentee agrees | Not possible |
| Grounds for invalidation | (1) Grounds regarding public
interest: novelty, inventive step, prior-later application relation, inappropriate description in claims or specification, etc. |
(1) Grounds regarding public interest: novelty, inventive step, prior-later application relation, inappropriate description in claims or specification, etc. (2) Grounds regarding right holder: usurped application, violation of joint application (3) Grounds occurring after registration of patent |
(1) Grounds regarding public
interest: novelty, inventive step, prior-later application relation, inappropriate description in claims or specification, etc. |
| Method of proceedings | Documentary trial examination only | Oral proceedings included in principle | Information provided before registration of patent is used in examination |
| Opportunity to make rebuttal by demandant |
None in principle However, when patentee filed demand for correction, opponent is given opportunity to submit statement |
Yes |
None Upon informant’s request, whether information is utilized in Office Action is fed back |
| Double jeopardy | Not applicable |
Applicable (trial for invalidation cannot be demanded again for the same reason) |
- |
| Joinder of demands | In principle, joined and examined | In principle, not joined: examined per case | - |
| Decision /Advance notice of trial decision | Patentee is notified of grounds for revocation, before decision of revocation of patent | Patentee is notified of advance notice of trial decision, before invalidation of patent | - |
| Appeal |
Against decision of revocation, patentee can bring a suit to Intellectual Property High Court, with Commissioner of JPO as defendant Not possible to file an appeal against decision to maintain patent or decision of dismissal of appeal (trial for invalidation can be filed separately) |
Both demandant and patentee can bring a suit to Intellectual Property High Court, with the opposite party as defendant | Not possible |
| Official fee(JPY) | 16,500 + number of targeted
claims × 2,400 |
49,500 + number of targeted
claims × 5,500 |
None |
It is noted that in a patent infringement lawsuit, a defendant can submit a refutation of patent invalidation (Article 104-3).
Should you have questions, please do not hesitate to contact our firm.
