This is Part 1 of an 8-part series examining post-grant review proceedings, oppositions and third party observations in the U.S., BRIC and several non-BRIC countries.
Post-Grant Oppositions in Japan
As a result of amendments made in 2014 to the Japanese Patent Law, post-grant oppositions will once again become available in Japan effective April 1, 2015. The new opposition system is very similar to the previous post-grant opposition system which was introduced in 1994 and terminated in 2004. A summary of the opposition system is provided below:
- Timing for filing an Opposition: An opposition can be filed within six months from the date of issuance of a patent grant publication. An opposition can be filed by any person.
- Grounds available for an opposition: Lack of novelty, inventive step and/or failure to satisfy the enablement, support, or clarity requirement.
- Oral Hearing: No oral hearing will be available. Instead, the opposition will be carried out solely on the written documents submitted by the parties. Specifically, when an opposition brief is filed, the Opposition Division (which will consist of at least three Examiners) will review the brief and issue an Office Action if it finds that at least one of the grounds for the opposition is reasonable and that the patent should be revoked. The Examiners can raise grounds not put forward by the opponent, but cannot attack any claims not challenged by the opponent. In response, the patentee is permitted to file an argument and an amendment (which is referred to as a correction) within the prescribed period. If the patentee files an amendment, the opponent may file an argument against the submitted correction. If the Opposition Division renders a decision revoking the patent, the patentee may file an appeal to the Intellectual Property High Court. Interestingly, if the Opposition Division renders a decision maintaining the patent, the opponent is not permitted to appeal, but must instead has the option to attack the validity in an invalidation trial.
This post was written by Lisa Mueller.