Opposition Procedure

Patent Opposition System in JapanThe new patent opposition system enables a third party to request revocation of a grantedpatent, allow quick correction of patents and help ensure stronger granted patents.
Under the new system, oppositions can be filed against patents published from April 1,
2015.

Summary of Patent Opposition system in Japan
Opposition Period

Within 6 months from publication of patent.

Opponent

Anyone, possibility to use a straw man

Grounds for Opposition•Novelty and Inventive Step•

Lack of support, clarity or enablement•Introduction of new matter by amendments or by translation••

Double patenting
Non-patentable subject matter•

Prior application•Violation of enjoyment of rights of foreigners

Type of Examination

DocumentaryOpposition Unit

ClaimEx officio Examination

Unraised grounds also examinable

Patentee Procedure

May submit remarks or amendments after notice of reasons forrevocation

Opponent Procedure

May submit remarks after submission of amendments by patentee

Multiple Oppositions

Joint examination as a general rule

Withdrawal of Opposition

Not possible after Notice of Reasons for Revocation is communicatedNe bis in Idem Rule

Not applicable

Official Fee

JPY 16,500 (€131) + JPY 2,400 (€19) x Number of claims (Exchange rate

as of September 8th, 2020)
Appeal••

Revocation may be appealed only by patentee at IP High Court
Invalidation may be filed by opponent if patent is maintained

1
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Opposition Procedure

Opposition versus Invalidation

Opposition
PurposeFiling Period

Petitioner
Possible reasons forfiling

Early reevaluation of patent
after grantInvalidation
Dispute resolution
between concernedparties

Within 6 months from

Any time after grant

patent publication(even after expiry)

Any third party

Interested party

Reasons for Rejection

Comments

Only Invalidation isavailable after passing of
6 months
A strawman may be usedfor Opposition

Reasons for rejection and

Only Invalidation isownership of rights

available for ownership
New arguments andProceedings style

Initiative by the Board ofAppeal

Inter partes

reasons can be found by
JPO in opposition but
not invalidation.

Arguments
presentation

Documentary

examination
May submit remarks after

Petitioner Procedurecorrection
by patentee

Withdrawal

Official fees

Speed

Documentary and Oral

No disadvantage forforeign party inOpposition
Limited influence on theInvolved throughout thepatent amendments byprocedure

the petitioner during
opposition proceedings

Not possible after Notice ofAnytime before

Reasons for Revocation is

finalization of thecommunicateddecision

JPY 16,500 +JPY 49,500 +Total costs tend to be

JPY 2,400 x Number of

JPY 5,500 x Number ofhigher for Nullity

claimsclaimsActions

6 months to one year

One year

Considerations for
Negotiation Strategy

Difference insubstantial
if appealed

Revocation may only beappealed by patentee at IP
High Court
Appeals
Invalidation may be filedby opponent if patent isOnce Opposition isAll decisions may berejected, new evidence

appealed to IP Highwill likely be needed toCourt

invalidate the same
patent by an Invalidation

maintained2
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info@patents.jp

Opposition Procedure

Opponent

PatenteeJPO

6 months

Publication of Patent

May request
acceleration

Fowarding Opposition
brief copy

Filing ofOpposition

Start Examination

Are there any reasons
for revocation?

NOYES

Examination

Notification of reasons
for revocation
Filing of Remarks(when anamendment isrequested)

Request comments(if amendments)

Filing of Remarks
and/or Amendments

Revocation?
NOYES
Notice of Grounds for Revocation(Second Opportunity to correct forpatentee)

Filing of Remarks(when anamendment isrequested)

3Decision of Maintenance
No Appeal possible but Nullity Action
available for Opponent

Request comments

Filing of Remarks
and/or Amendments(if amendments)

Decision by the Board

Decision of Revocation
Appeal possible for thePatentee
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