9 years ago

By Steven J. Hultquist                                                               July 4, 2015

With the 2015 changes in the Japanese Patent Law, patent opposition procedures have been reintroduced to Japanese Patent Office practice.

This newly reestablished opposition procedure permits anyone to file a petition within 6 months of patent publication, challenging the Japanese patent on prior art grounds as containing claims lacking novelty or inventive step, or which go beyond the scope of the description in the patent specification. The Japanese Patent Office will then initiate a trial proceeding, to determine if the petition states appropriate ground(s) for reviewing the patent. If no appropriate grounds are found, a trial decision is issued to maintain the patent.

If, however, grounds are found to exist for potential invalidity of the issued patent claims, the Japanese Patent Office will issue a corresponding identification of the grounds for further trial proceedings, to which the patent owner can respond with argument and/or correction of the claims and/or patent specification. The petitioner is allowed to respond to any correction of the patent by the patent owner, and trial proceedings then are carried out, with a trial decision being issued by the Japanese Patent Office, either maintaining the patent or alternatively canceling the patent.

In the event that a trial decision is made by the Japanese Patent Office to cancel the patent, the patent owner has recourse by appeal to the Intellectual Property High Court.

In contrast to invalidation trial proceedings, which continue to remain available at any time during the life of a Japanese patent, the newly established opposition procedure has a relatively low cost (as of July 4, 2015, the JPO website identified the official fees for opposition as ¥16,500 + ¥2,400 per claim).

The Japanese Patent Office has provided guidelines for written opposition to a granted patent and demand for correction, on the Japanese Patent Office website (http://www.jpo.go.jp/tetuzuki_e/t_tokkyo_e/opposition_guide.htm), along with identification of relevant reference materials, and further contact information concerning the new opposition procedure (inquiries may be directed to the Appeals Examination Policy Planning Office, Appeals Department, JPO (81-3-3581-1101, ext. 5851, e-mail:PA6B00@jpo.go.jp).