Procedure of Opposition to Grant of Patent
Once a patent application is filed, the application is examined by an Examiner of the Patent Office and, if no reasons for rejection are found, the establishment of patent right is registered. The System of Opposition to Grant of Patent provides third parties with a wide range of opportunities to seek review of a patent within a fixed period after the grant of the patent so that the Japan Patent Office (“JPO”) examines the appropriateness of the disposition of the patent in response to an opposition thereto and, if defects are found in the patent, attains early stabilization of the patent through corrections.
We are explaining the procedure of opposition to grant of patent with a flowchart as follows.
(1) An application for patent is filed and if it passes the examination,
a decision to grant a patent will be issued. Then the establishment of
patent right will be registered subject to the payment of patent fee.
(2) After the establishment of patent right is registered, a Patent Gazette publishing the patent will be issued.
(3) Within 6 months from the date on which the Patent Gazette containing
the patent was published, any person may file an opposition to the patent.
In case of a patent which has two or more claims, a separate opposition
may be filed for each claim. Reasons for opposition to grant of patent
are restricted to those specified under Article 113 of the Patent Act and
the other reasons are not eligible. Typical reason for opposition is that
the patent has been granted in violation of requirement of patentability
(lack of novelty or inventive step, conflict with earlier application(s),
nonconformity to the documentation requirements, etc.).
(4) Once an opposition to grant of patent is filed, JPO will do the necessary
such as conducting a formality examination and sending a duplicate of the
opposition to the Patentee. At this stage the Patentee need not file a
reply to the opposition.
(5) On the basis of the opposition as filed, a panel of 3 or 5 trial examiners
conducts an examination to determine whether or not there are any reasons
for revocation of patent. For all of the opposition cases, the examination
thereof shall be conducted by documentary examination.
If, after the examination, the panel considers that there are reasons for
revocation, it will issue a Notification of Reasons for Revocation to the
Patentee in which it designates a reasonable period (normally 60 days (90
days for nonresidents)) and give the Patentee an opportunity to file an
Argument and/or a Request for Correction. On the other hand, if the panel
concludes that there are no reasons for revocation, a Decision to Maintain
the Patent will be issued.
Once the Patentee receives a Notification of Reasons for Revocation, it
may file an Argument within the above designated period and it may also
file a Request for Correction of the description, claims and drawings attached
to the Application for the said patent.
If the Patentee files only an Argument and does not file a Request for Correction against the Notification of Reasons for Revocation, basically the panel will conduct a further examination without giving the Opponent an opportunity to file a Written Opinion.
If the Patentee files a Request for Correction in response to the Notification of Reasons for Revocation, the Opponent may file a Written Opinion within a reasonable period (normally 30 days (50 days for nonresidents)) except that the Opponent does not wish to do so or there are special circumstances justifying not giving the Opponent an opportunity to do so.
(6) On the basis of the above, the panel conducts a further examination
and if it determines that there are still reasons for revocation, the second
Notification of Reasons for Revocation (Advance Notice of Decision) will
be issued. Against this notification, the Patentee may file an Argument
and/or Request for Correction within the designated period (normally 60
days (90 days for nonresidents)).
(7) In the same manner as mentioned in the above (5), if the Patentee files
a Request for Correction against the Notification of Reasons for Revocation
(Advance Notice of Decision), the Opponent will be given an opportunity
to file a Written Opinion. If the Patentee does not file a Request for
Correction, the Opponent will not be given an opportunity to file a Written
Opinion. In this way the panel will conduct a further examination. If the
panel concludes that the patent shall be revoked for the reasons stated
in the Notification of Reasons for Revocation (Advance Notice of Decision),
a Decision to Revoke the Patent will be issued. Otherwise, a Decision to
Maintain the Patent will be issued.
When the Decision to Revoke the Patent becomes final and binding, it is
deemed that the patent right has not existed from the very beginning.
Against a Decision to Revoke the Patent, the Patentee may file a suit at the Tokyo High Court (Intellectual Property High Court) within 30 days from the date when a copy of the said Decision is served to the Patentee.
Against a Decision to Maintain the Patent, the Opponent is not allowed to file an appeal, but it may separately file an invalidation trial against the said patent provided that it meets the requirement of an interested party.
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