This article examines the new opposition system and how it associates with the Japanese invalidation trial system. A post-grant opposition system previously existed in Japan, but was abolished in 2003 to unify the nullity system into invalidation trials. Recently, it has been decided that a post-grant opposition system reflecting the demands of users be re-introduced and will be put in force in 2015. The exact date of implementation has not yet been fixed. As a result of re-introducing the opposition system, the provisions relating to invalidation trials before the board of appeal of the Japan Patent Office (JPO) will also be revised.
Who can file an opposition?
In the current invalidation trial system, anyone, even a non-interested party, can file an opposition. Therefore, when you do not want to disclose your name as an opponent, you can ask someone else to file an opposition. Substantial anonymous oppositions are possible.
In contrast, after the opposition system is in force, invalidation trials that currently may be filed by anyone, even a non-interested party, will be limited to interested parties only.
When can oppositions be filed?
An opposition can be filed within six months from the date when the patent publication is issued. Even within this six-month period, it is not permissible to change or add grounds for the opposition after the opposition division has issued a notice of the reasons for the revocation of a patent to the proprietor. Therefore, it is advisable to prepare the grounds and/or evidence for the opposition well in advance of filing the opposition. Invalidation trials can be filed any time after the patent is granted, even after it expires.
What is the cost for filing an opposition?
An opposition can be filed for each claim. The official fee for filing an opposition is JPY 16,500 ($145) + (JPY 2400 ($21) x number of claims). On the other hand, the official fee for filing an invalidation trial in front of the JPO’s board of appeal is JPY 49,500 ($435) + (JPY 5500 ($48) x number of claims). The fee for the opposition is clearly less than the fee for filing an invalidation trial.
Grounds for filing an opposition
The opposition may be filed on the grounds that:
- The subject matter of the granted patent extends beyond the content of the application as filed;
- The patent is not patentable under Articles 25 (enjoyment of rights by foreign nationals), 29 (industrial applicability, novelty and inventive step), 29(2) (novelty; prior rights), 32 (liable to injure public order, morality or public health) and 39 (prior application);
- The patent has been granted in violation of a treaty;
- The patent does not comply with Article 36(4)(i) (enablement requirements) or Article36(6) (description requirements); and
- Where matters stated in the specification, which is the translation of a foreign application, are not within the scope of matters stated in original foreign applications.
The grounds that the patent has been granted for the non-entitled person or granted in noncompliance with the requirements for joint application are not grounds for opposition, though they are grounds for invalidation trials.