SEIWA PATENT & LAW

Overview of New Post-Grant Opposition System in Japan

  • Patent/Utility Model
  • Change of Laws & Systems
  1. The new Post-Grant Opposition (PGO) System in Japan has become effective as of April 1, 2015, under Japanese Patent Law 2014 as revised. The PGO system is intended to collect information widely from the public on a granted patent, so that the Japan Patent Office (JPO) can review and revoke it if necessary, and thereby increase public confidence in the patent system.
  2.  
  3. 1. Requirement for Filing PGO
  4.  
  5. (1)  A PGO may be filed by any party. No interest is necessary, and it is therefore possible to file a PGO in the name of a straw man, but NOT on an anonymous basis. A party domiciled or resident outside Japan can file a PGO only through a Japanese representative.
  6.  
  7. (2)  A PGO can be filed against a patent only within 6 months after its patent-grant gazette is issued on or after April 1, 2015. This 6-month term cannot be extended for any reason, even if the opposing party is not domiciled or resident in Japan. All grounds for a PGO must basically be filed within this period, together with relevant evidence.
  8.  
  9. (3)  The grounds for a PGO relate only to the public interest, typically the substantive requirements for patent, i.e., lack of novelty or inventive step, insufficient disclosure, addition of new matter in an amendment, etc. In light of this, a PGO cannot be filed on private interest grounds such as a misappropriated application or violation of a joint-filing requirement.
  10.  
  11. (4)  The PGO system requires submission of paper documents. Online submission is NOT acceptable.
  12.  
  13. (5)  A PGO may be filed against each claim of a multi-claim patent.
  14.  
  15. (6)  The official fee for filing a PGO is:
  16.        JPY16,500 + (JPY2,400 × the number of opposed claims)
  17.  
  18. 2. Examination of PGO
  19.  
  20. (1)   A PGO undergoes ex parte examination by a collegial body of 3 or 5 Trial Examiners of the JPO. In other words, unlike in an invalidation trial, the opposing party does not directly dispute with the patentee on an inter partes basis.
  21.  
  22. (2)  The examination of a PGO is conducted only by documentary proceedings, not by oral proceedings.
  23.  
  24. (3)  Any interested party is allowed to intervene in the examination in order to assist the patentee.
  25.  
  26. (4)  The Trial Examiners may examine grounds not pleaded by the opposing party, but cannot examine claims against which a PGO is not filed.
  27.  
  28. (5)  If the Trial Examiners determine that a patent should be revoked, a notification of reasons for revocation will be sent to the patentee. In response thereto, the patentee may file an argument and/or a request for correction within 90 days (where the patentee is non-resident).
  29.  
  30. (6) A correction must be intended only for the purpose of restriction of the scope ofa  claim(s), correction of a misdescription or mistranslation, and clarification of an ambiguous statement(s), etc. Correction may be requested for each claim.
  31.  
  32. (7)  If the patentee files a request for correction, the opposing party is notified thereof, so that he can file an argument against the correction, if he so wishes, within 50 days (where the opposing party is non-resident).
  33.  
  34. (8) If the reasons for revocation are overcome by the correction, a ruling for upholding the patent will be issued. If not, a further notification of reasons for revocation will be issued as an advance notice on the ruling for revoking the patent. In response thereto, the patentee may make another request for correction.
  35.  
  36. 3. Ruling on PGO
  37.  
  38. (1)  In consequence of examination of a PGO, including a request(s) for correction, if any, a ruling for revoking a patent or for upholding the patent will be rendered in writing.
  39.  
  40. (2)  Regarding a ruling for revoking a patent, the patentee may lodge an appellate action against the JPO Commissioner at the Intellectual Property High Court, within 120 days (where the patentee is non-resident).
  41.  
  42. (3) As opposed to the above, no appeal is allowed against a ruling for upholding the patent. In this case, an interested party may further dispute the patent by initiating an invalidation trial at the JPO.
  43.  
  44. (4) Where a ruling for revoking the patent becomes final and conclusive, the patent right is deemed never to have existed.
  45.  
  46. <See attached flowchart>
  47. © SEIWA PATENT AND LAW
  48. Tokyo JAPAN, 2015 

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