In May 2014, it was announced that Japan would reinstate a post-grant opposition system. Since then, more detail of the new system has emerged. We discuss the salient points here, and explain the action that patent applicants in Japan and potential opponents should take to prepare.
The new opposition system will come into force on 1 April 2015. The official fee for the opposition is dependent on the number of claims in the granted patent that are to be challenged, and is reported to be Y16,500 plus a fee of Y2,400 per claim (the Japanese official fees for examination of a pending application, and for renewal of a granted patent are similarly dependent on the number of claims). On the other hand, the official fee for an invalidity trial is more expensive, at Y49,500, plus a fee of Y5,500 per claim.
The patentee’s opportunities to respond in the opposition proceedings are limited. If the opponent’s Notice of Opposition is found by the Opposition Division to indicate reasons to revoke the grant of the patent, the Opposition Division notifies the patentee, setting a non-extendible term of 90 days for the patentee to file amendments (referred to as corrections). The practice of filing fall-back or auxiliary requests for amendments (such as followed in the EPO) is not permitted. The claims may only be corrected (amended) in the following ways: by limiting the scope of the claims, by cancelling claims, by correcting mistakes in the description, by clarifying points that are unclear, and by changing claim dependencies.
In practice, the patentee may have only one or two opportunities to put their patent in order over the opponent’s objections, as after the opponent’s response to the patentee’s submissions is received by the Opposition Division, the Division is entitled to issue a final decision. However, it is expect that in most cases, the Opposition Division will issue a further communication to the patentee after the opponent’s counter statement, setting the patentee another non-extendable 90 day term for filing a request for correction. If the Opposition Division issues a final decision revoking the patent, the only recourse available to the patentee is an appeal to the IP High court (an opponent who loses cannot appeal, but can still launch a full invalidity trial).
The opposition procedure is entirely based on documentary evidence, and there is no opportunity (like in the EPO for example), for an oral trial.
Whether you intend to file an opposition against a patent, or whether you have received an opposition on a patent you have filed, you should bear the following points in mind.
For important cases, consider filing a divisional application before grant of the patent, so that any issues that arise during the opposition can be at least partly addressed on the divisional case, while this remains pending.
When initially notified of the filing of an opposition take steps to review the objections and identify possible amendments and corrections. This can be done before the Board reach their preliminary view and send the patentee the official communication indicating an intention to revoke the patent, triggering the 90 day term for filing a request for correction.
Oppositions can be filed within a six month period of the granted patent being published. It is advisable to keep regular watch on competitor patents in Japan. The term for the opponent to file a counter argument, where the patentee has made corrections is only 50 days. Quick action is therefore needed, once an opposition has been initiated.
Opposition is only one technique for challenging a granted patent in Japan. Other procedures include initiating an invalidity trial (either as a defence in a patent litigation, or as a separate action), or the filing of third party observations while the patent application is pending. It is expected that an invalidity trial will take precedence over an opposition, where the two are pending together.
Invalidity trials can be used for attacking a patent on wider grounds of invalidity, such as non-entitlement of the patentee, and non-compliance with the regulations for joint applicants. Further, invalidation trials may involve both documentary evidence and an oral trial. However, following the initiation of the opposition system, the party in an invalidation trial must now have legal standing to file the invalidity trial (such as be involved in a potential infringement action, be a licensee, or be a person alleging non-entitlement of the patentee). The opposition system on the other hand is open to all.
Reddie & Grose has considerable experience of managing our clients’ portfolios internationally. If you would like more information on the new opposition procedure in Japan, contact us, and we can put you in touch with attorneys in Japan.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking before any action in reliance on it.