Summary
One year has passed since the post-grant opposition system was reinstated on April 1, 2015, after a 12-year hiatus since 2003. The re-introduction of the post-grant opposition system has provided an alternative means to nullify a third party's patent, in addition to the conventional patent invalidation trial system. This article summarizes the differences between these two systems and reviews the current situations thereof, as a guidance in determining which procedure to be chosen for specific cases.
I. Comparison of the systems
The post-grant opposition is compared with the invalidation trial system below.
| Post-Grant Opposition System | Invalidation Trial System |
| 1.
Aim: The post-grant opposition (or also referred to simply as "opposition") system is intended to collect adverse information on a granted patent widely from the public so that the Japan Patent Office (JPO) can review and revoke the patent, if necessary, thereby improving public confidence in the Japanese patent system. |
1.
Aim: The patent invalidation trial (or also referred to simply as "invalidation trial") system is intended to resolve disputes between opposing parties over the validity of a patent. An invalidation trial is commonly used in connection with a patent infringement litigation, as a countermeasure for an alleged infringer against the patentee. |
| 2.
Procedure: The substantive proceeding of an opposition after a formality check is carried out on an ex parte basis, by a collegial body of 3 or 5 JPO trial examiners. An opponent cannot directly dispute with the patentee in the proceeding. |
2.
Procedure: The substantive proceeding of an invalidation trial after a formality check is carried out on an inter parte basis, under the direction of a collegial body of 3 or 5 JPO trial examiners. Ademandant can directly dispute with the patentee in the proceeding. |
| 3. Eligibility
for Opponent: Any party can file an opposition. No interests in the patent are necessary. Accordingly, an opposition can be filed in the name of a straw man, but NOT on an anonymous basis. A party who does not have a domicile or residence in Japan (non-JP resident) can file an opposition only via a Japanese representative. |
3. Eligibility
for Demandant: Only a party interested in the patent can demand an invalidation trial. The demandant must prove its interests as necessary. An invalidation trial cannot be demanded either on an anonymous basis or through a straw man. A non-JP resident can demand an invalidation trial only via a Japanese representative. |
| 4. Time Limit
for Filing Opposition An opposition may be filed against a granted patent only within six months after the issuance of its patent-grant gazette. This six-month term cannot be extended for any reason, even if the opponent is a non-JP resident. An opponent must submit all grounds for an opposition together with relevant evidence by no later than the six-month time limit. An opposition cannot be filed after the patent right expires. |
4. Time Limit
for Demanding Invalidation Trial An invalidation trial can be demanded at any time after the patent right is established, even even after the patent right expires. |
| 5. Unit of
Opposition An opposition may be filed against each claim of a multi-claim patent. |
5. Unit of
Invalidation An invalidation trial may be demanded against each claim of a multi-claim patent. |
| 6. Withdrawal of
Opposition An opponent can withdraw the opposition up until the issuance of a Notice of Reasons for Revocation. |
6. Withdrawal of
Demand A demandant can withdraw the demand for the invalidation trial up until the decision becomes final and conclusive. In order to withdraw the demand after the patentee submits a reply brief, the demandant must obtain the patentee's content. |
| 7. Grounds for
Opposition The grounds for filing an opposition are limited to those relating to public interests, most of which are substantive patentability requirements. An opposition cannot be filed on grounds relating to private interests, such as a misappropriated application or violation of a joint-filing requirement. *Grounds for Opposition:
|
7. Grounds for
Invalidation The grounds for demanding an invalidation trial are basically the same as the grounds for rejection of a patent application in the examination stage. *Grounds for Invalidation:
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The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
