6c - Japan

Question 1

What are the two third party challenge options in Japan?

Answer 1

Japan re-introduced an opposition system on 1 April 2015. A person may also demand a trial for invalidation
(nullification).

Question 2

When can opposition be filed and who can oppose?

Answer 2

Can be filed within 6 months of date of publication of grant

 Anyone can oppose

Question 3

What does the fee depend on for opposition and is opposition cheaper than the invalidation trial?

Answer 3

Fee depends on the number of claims being challenged (cheaper than invalidation trial)

Question 4

What are the grounds for opposition?

Answer 4

Grounds are lack of patentability:

novelty, 
inventive step 
written description, 
added matter, and
double patenting

Question 5

What are the patentee’s options?

Answer 5

Opportunity to argue and/or amend

Question 6

Is opposition a written or oral process?

Answer 6

Written. No oral submissions.

Question 7

How can the patentee appeal?

Answer 7

Can appeal to the JP High Court. The opponent cannot.

Question 8

Does opposition give rise to estoppel?

Answer 8

No.

Question 9

When can an invalidity trial be filed

Answer 9

Can be filed at any time after grant of the patent or utility model (sometimes even after expiry)

Question 10

Who can oppose in an invalidity trial?

Answer 10

Only interested parties.

Question 11

What do the fees for invalidt trial depend on?

Answer 11

the number of claims being challenged (more expensive than opposition)

Question 12

What are the grounds for invalidty trial?

Answer 12

Grounds are lack of 
patentability, 
lack of enablement, 
lack of inventor ship (therefore broader than
opposition grounds)

Question 13

Discuss the proceedings of an invalidity trial?

Answer 13

Both parties participate at all stages of proceedings and there is an oral hearing

Question 14

What are the appeal routes from invalidity trial?

Answer 14

Losing party (patentee or third party) can appeal to Tokyo High Court.

Litigation has double track system with nullity heard at the JPO with appeal to the High Court and
infringement heard in a separate trial before the court. This can prolong time and costs of hearings.

Question 15

Can 3rd party observations be made in invalidity trial?

Answer 15

3rd party observations can be made during prosecution, but the third party does not become party to
the proceedings

Question 16

Is there estoppel in invalidity trial?

Answer 16

Losing party is estopped from re-litigating the same issue