1

Dispute Resolution Systems for Industrial Property
in Japan and Foreign Countries

The importance of prompt and reasonable settlement of industrial property disputes has been made obvious
not only among the parties to the disputes, but also to the related organizations.
This report focuses on the reforms of the JPO’s appeal/trial system and other systems that have beenrequired in the Intellectual Property Policy Outline. Specifically, in order to provide foundation material for the
2003 amendment of the Patent Law, the legal systems of various other countries were studied and comparedwith those systems under the current Japanese law, with respect to the following two issues: (1) issues concerning
the opposition system and the invalidation trial system; and (2) issues pertaining to post-grant corrections.
Foreign countries’ practices have been reviewed regarding the eligibility for a demandant of a trial, examinationof evidence ex officio, attack/defense opportunities, and prevention of rehashing of disputes as the issues relating
to (1) above, while those issues reviewed relating to (2) include the outline of the correction system, provisions on
suspending pending disputes, and practices in infringement litigation. Study has been also conducted on thedesign and trademark systems from the same viewpoints.
Furthermore, a questionnaire survey was conducted to those who have actually used the JPO’s Hantei
system (advisory opinion on the technical scope of a patented invention), in order to analyze the present-day
significance of that system.

Ⅰ Introduction
With the growth in the number of industrial
property disputes(*1), it has become a prime task todesign a dispute settlement system that allows both
the Japan Patent Office (an administrative organ)and courts (judicial organs) to function efficiently
and also produces satisfactory results for theparties to the disputes.
For the purpose of providing foundationmaterial for deliberating the 2003 amendment of
the industrial property rights laws, the structuresof such systems in the United States and major
European and Asian countries were studied, and aquestionnaire survey was conducted to the users ofthe Hantei system (advisory opinion on thetechnical scope of a patented invention). The
findings of these investigations are reported herein.

Ⅱ Settlement of Patent Disputes
1

Systems for settling disputes over thevalidity of a patent(1) Outline of the current systems
The systems for settling disputes over patentvalidity under the current Japanese law are thepost-grant opposition system and the invalidation
trial system. The post-grant opposition system wasintroduced by the partial amendment of the Patent
Law in 1994 to respond to the needs for prompt

grant of patents and international harmonization of
the systems.
However, the post-grant opposition system,
which has been in use for six years, is currently
presenting a number of problems. First is theincreased burden on patentees and the redundanttrial examination in the Japan Patent Office (JPO)
due to the coexistence of the opposition system andthe invalidation trial system. Second is the growinguser needs for allowing the opponents to takeactive participation in the trial examination in the
opposition procedure. Third is the problem ofco-pendency of multiple invalidation trials for asingle patent, pertaining to the limited
attack/defense opportunities under the invalidation
trial system.
In addition, questions are arising with regard
to the eligibility for a demandant of an invalidation
trial on the ground of protecting public interest, andtrends are observed in other countries to abolishthe opposition system or to integrate the systemwith the invalidation trial system.
(2) Comparison of the systems of othercountries
Based on the above, the systems of the UnitedStates, Germany, the United Kingdom, and under
the European Patent Convention (EPC) werestudied with respect to each item below.
(i) Eligibility for a demandantc United States
Any person may file a request for an ex partereexamination or an inter partes reexamination(*2).

(*1) The Japan Patent Office, ed., “Japan Patent Office Annual Report 2002,” Japan Institute of Invention and Innovation (2002),
p. 183.
(*2) 35 U.S.C. §302, 311(a).

IIP Bulletin 2003

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However, in requesting an inter partes
reexamination, the written request must include
the identity of the real party in interest so as toensure an estoppel effect on the requester or its
successor(*3).
d Germany
Any person (but only the injured party in thecase of usurpation) may give notice of opposition toa patent(*4). However, the patentee may not file an
opposition(*5).
e United Kingdom
Any person may file an application forrevocation of a patent(*6). However, the applicationmust not be filed in the name of a third party.
f EPC
Any person may give notice of opposition to apatent(*7), but the patentee may not file an
opposition(*8). An opposition may be filed in thename of a third party as long as it is not regarded asabuse of right(*9).
(ii) Time limit for the demandc United States
Reexamination may be requested during theperiod in which the patent right can be enforced,
which is from the patent issuance to six years after
the expiration of the term of the patent(*10).
d Germany
An opposition may be filed within threemonths of the publication of grant(*11). An action fora declaration of nullity of a patent shall not be
brought as long as opposition may still be filed or
opposition proceedings are pending(*12).
e United Kingdom
An application for revocation of a patent may
be filed after the publication of a notice that a patenthas been granted in the journal until six years fromthe lapse or expiration of the term of the patent(*13).
f EPC
An opposition may be filed within nine months
from the publication of the mention of the grant of
the European patent(*14).

(iii) Examination of evidence ex officioc United States
In reexamination proceedings, the U.S. Patent
and Trademark Office (USPTO) may study even the
grounds and evidence not stated or produced by therequester or the parties to the proceedings (in thecase of inter partes reexamination) (*15).
d Germany
According to case law, the German Patent andTrade Mark Office (GPTO) must first examine thegrounds of opposition stated by the parties to theproceedings in opposition proceedings(*16). In
opposition proceedings, the German Federal Patent
Court (Patent Court) may not independently use
new opposition evidence, and the matters to be
examined in the proceedings are decided by the
opponent who submitted the written opposition.
The Patent Court is also basically bound by theclaims by the plaintiff in an action for revocation of apatent.
e United Kingdom
The U.K. Patent Office Comptroller isendowed a power to revoke a patent on his/her own
initiative(*17). Even when a person who filed an
application for revocation of a patent withdraws theapplication during the revocation proceedings, theComptroller may still revoke the patent if it would
benefit the public interest(*18).
f EPC
Although
opposition
proceedings
arefundamentally carried out based on the grounds
stated by the parties to the proceedings, anadditional ex officio search may be conducted as an
exception when, due to correction of patent claims,
a patentability search becomes necessary on an
aspect that had not been taken into consideration in
the pre-grant examination phase(*19). The Enlarged
Board of Appeal has ruled earlier that, since theproceedings by the Boards of Appeal have a strong
nature of judicial proceedings, ex officio searchshould be allowed more limitedly than in(*3) 35 U.S.C. §311(b).
(*4) §59(1) German Patent Law.
(*5) German Patent and Trade Mark Office, Opposition Guidelines §III.3.
(*6) §72(1) U.K. Patents Act.
(*7) Art. 99 European Patent Convention (EPC).
(*8) G9/93 “Opposition by patent proprietor/PEUGEOT and CITROEN.”(*9) This would be violation of R.55(a)(b) EPC.
(*10) 35 U.S.C. §286.
(*11) §59(1) German Patent Law.
(*12) §81(2) German Patent Law.
(*13) §113 U.K. Copyright, Designs and Patents Act.
(*14) Art. 99(1) EPC.
(*15) Provisions on substantive examination, which are stipulated in 37 C.F.R §1.104-1 to 115, are applied mutatis mutandis in
37 C.F.R §1.550(a) with regard to ex parte reexamination and in 37 C.F.R §1.937(b) with regard to inter partes
reexamination.
(*16) The Aluminium-Trihydroxid case, German Supreme Court decision, GRUR 1995, p. 333.
(*17) §73(1) U.K. Patents Act.
(*18) Emergi-Lete Safety Systems’ Patent, BL O/178/00.
(*19) Guidelines for examination in the EPO, D, VI, 5.
● 3 ●IIP Bulletin 2003

proceedings by the Opposition Division.
(iv) Attack/defense opportunities for the parties
c United States
In reexamination proceedings, amendment canbe made in response to a notice of rejection ofclaims(*20). The requester may submit a newreference, if the patent claims are not rejected due
to amendment by the patentee.
d Germany
The patent claims can be amended both in
opposition proceedings and in an action forrevocation. The patentee may amend the patentclaims at a discretionary time.
e United Kingdom
The revocation proceedings in the U.K. Patent
Office (UKPO) are conducted in the order of: i) awritten application for revocation of a patent by theapplicant of the proceedings; ii) a written
counter-statement by the patentee; iii) evidence by
the applicant; iv) evidence by the patentee; and v)
further evidence by the applicant. Any subsequent
procedure is left to the discretion of theComptroller(*21).
f EPC
The patentee is given an opportunity to submit
a written argument and a written amendment inresponse to a notice of opposition within a certain
time limit(*22). The opponent is required to make acounter-statement if a written amendment is
submitted by the patentee.
(v) Prevention of rehashing of disputesc United States
A third-party requester of an inter partes
reexamination may not, in principle, request
another inter partes reexamination of the patentclaims that could not be invalidated on the grounds
he/she stated(*23). Similarly, in a civil action, athird-party requester of an inter partes
reexamination may not assert invalidity of patentclaims that have been judged valid in the previous
inter partes reexamination.
d Germany
Once the final and conclusive decision has
been given in an action for declaration of nullity, thesame plaintiff may not bring another action basedon the same grounds for nullity(*24).
e United Kingdom
Based on the doctrine of res judicata, parties tolitigation are prohibited from bringing anotheraction on matters for which they have alreadyreceived an unfavorable judgment(*25). However, it
is possible to allege invalidity of a patent based on

already disposed issues in civil proceedings where
infringement of a patent is in issue(*26).
f EPC
Since a patent may only be revoked under thelaw of a Contracting State, no repeated requests forrevocation proceedings are made to the European
Patent Office (EPO).
(vi) Various systems concerning proceedings
before the patent office (e.g., involvement of
external experts in examination/proceedings
before the patent office; structure of the judging
body; the system for ensuring consistency ofdecisions in proceedings before the patent office;and open/closed proceedings)
c United States
Examination of patent applications neverinvolves external experts. A patent application is
examined by one examiner, while each appeal andinterference is heard by a panel of three judges of
the Board of Patent Appeals and Interferences(BPAI). Although proceedings are not made publicin principle, the oral hearing by the BPAI is madepublic if the patent is already published.
d Germany
The Nullity Chambers of the Patent Court
generally consist of judges with a technicalbackground, so external technical experts areusually not required. In the opposition proceedingsin the GPTO, three GPTO members (at least
including two technical members) make a decision.
In the nullity proceedings, the decision is made by acollegial body in the Patent Court consisting of twolegal members and three technical members. A
collegial body of judges in the Patent Court canallow the parties to appeal to the German Supreme
Court by indicating that another collegial body ofjudges has made a decision different from thedecision it intended, in order to ensure consistency
in case law.
e United Kingdom
The UKPO Comptroller may appoint advisers
to assist him/her in any proceedings before him/her.
The advisers do not have a right to decide orparticipate in collegial consultation. One hearing
officer participates in the proceedings before the
UKPO, and one judge participates in theproceedings before the High Court.
f EPC
In any proceedings before the EPO, the meansof obtaining evidence may include opinions by
experts(*27). In order to ensure uniform applicationof the law, or if an important point of law arises, a(*20) 37 C.F.R.§1.111.
(*21) §75 U.K. Patents Rules.
(*22) Guidelines for examination in the EPO, E, VIII, 1.2(ii).
(*23) 35 U.S.C. §317(b).
(*24) The Konditioniereinrichtung case, German Supreme Court decision, GRUR 1964, p.18.
(*25) CIPA Guide to the Patents Acts s72.28.
(*26) §72(5) U.K. Patents Act.
(*27) Art. 117 EPC and R. 73 EPC.

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Board of Appeal refers any question to the Enlarged
Board of Appeal either of its own motion orfollowing a request of a party to the proceedings.
The EPO President may also refer the question to
the Enlarged Board of Appeal when two Boards ofAppeal take different decisions on a question oflegal principles(*28).
2

Post-grant corrections and litigation(1) Outline of the current systems
The Japanese Patent Law has a system of trial
for correction as a means for the patentee tocorrect its registered patent. A patentee may
demand a trial for correction from the JPO at any
time except during the pendency of an opposition
trial or an invalidation trial. When an opposition
trial or an invalidation trial is pending before the
JPO, the grounds for revocation or invalidation canbe circumvented by making a demand forcorrection.
According to a High Court decision in 1999
(the large square steel tube case), the court mustreverse the JPO’s trial decision of invalidation whena correction becomes final and conclusive after anaction has been filed against a JPO decision, such asa trial decision(*29). When a trial decision ofinvalidation is reversed, the trial for invalidation isresumed in the JPO. Sometimes, another action is
filed against the outcome of this invalidation trial.
Such to and fro of a case between the JPO and thecourt is called a “pitch and catch phenomenon.”This pitch and catch phenomenon may be theconsequence of the present role-sharing between
the court and the JPO(*30), but it cannot be
overlooked that the present system, which allows
unlimited amendment opportunities, has caused
this phenomenon and has given rise to wasted legal
proceedings, prolonged trial proceedings in the JPO,
and increased burden on the parties to theproceedings.
(2) Comparison of the systems of othercountries(i) Post-grant corrections

United States
The patentee can generally choose either exparte reexamination(*31) or reissue application(*32) asa means for voluntarily amending patent claims
after patent issuance. The ex parte reexamination
is a procedure to request reexamination of thevalidity of a patent by presenting prior art
documents. On the other hand, a reissue application
is filed based on an acknowledgment that one’s own
patent is invalid in whole or in part due toerroneous patent issuance. This procedure can betaken to broaden the claims within two years fromthe patent issuance(*33).
d Germany
The patentee may voluntarily amend thepatent claims by having a retroactive effect(*34). The
GPTO only determines whether the amendment
requested by the patentee actually limits the claims
and does not determine the patentability of theamended claims(*35). The voluntary amendment
procedure has no limitation as to frequency or time
period. In addition, amendment can also be madeduring opposition proceedings and proceedings fora declaration of nullity.
e United Kingdom
The UKPO Comptroller (or, the court when
the dispute is pending before the court) may allow
the patentee to amend the specification of thepatent upon request of the patentee. Whether or
not to allow the amendment is left to the discretionof the Comptroller. Any person may give notice of
opposition to an amendment proposed by thepatentee(*36).
f Austria
Only very limited amendment is allowed forpatented claims(*37). The applicant and patentee are
not the only persons who can amend patent claims,
but the Nullity Department of the Austrian Patent
Office (APO) may also amend the claims ex officio.
When patent claims are amended, the Nullity
Department modifies the specification according to
the new claims. Amendment of patent claims
cannot be sought in proceedings before theSupreme Patent and Trademark Chamber.
c(*28) Recent decisions of the Enlarged Board of Appeal include “Opposition on behalf of a third party” (G 3/97, G 4/97),“Designation fees” (G 4/98), “Reformatio in peius/3M” (G 1/99), and “Six-month period/DEWERT” (G2/99), which
concerns the calculation of the six-month period referred to in Art. 55 EPC.
(*29) Supreme Court decision on March 9, 1999 [1995 (gyo tsu) no. 204] Minshu vol. 53, no. 3, p. 303.
(*30) The decision in the large square steel tube case (supra note 29) was based on an earlier decision in the knitting machinecase (Supreme Court decision on March 10, 1976 [1967 (gyo tsu) no. 28] Minshu vol. 30, no. 2, p. 79), which stated that aground for invalidation in light of publicly known facts that was not examined and determined in the JPO’s trial proceedings
may not be asserted as a ground for a decision denying or supporting the appropriateness of the JPO’s trial decision. In
short, a court may only determine the appropriateness of the JPO’s decision itself.
(*31) 35 U.S.C. §301(*32) 35 U.S.C. §251(*33) The claims that have been narrowed during examination cannot be broadened again.
(*34) §64 German Patent Law.
(*35) Remark by the German Supreme Court in GRUR 1964, 308, “Dosir-und Mischanlage.”(*36) §75(2) U.K. Patents Act.
(*37) BA 1998/04/27, PBI 1999/40, etc.
● 5 ●IIP Bulletin 2003

ChinaThere is no such system as a trial forcorrection under the Chinese Patent Law.
Therefore, after a patent has been granted, any
corrections of the patented claims will be made ininvalidation proceedings. No correction is allowedin the proceedings on appeal from a decision of theState Intellectual Property Office of the People’s
Republic of China (SIPO) to the people’s court.
h South Korea
Correction proceedings may be requested not
only during the term of the patent, but also after
the expiration of the patent term. However, therequest may not be made while opposition orinvalidation proceedings are pending before the
Korean Intellectual Property Office (KIPO).
(ii) Action on appeal from the patent office’s
decision and correction during its pendency
c United States
A reissue application can be filed during
pendency of an appeal from a decision of the BPAI.
The appeal proceedings are continued if only slight
amendment is made to the claims as a result, butotherwise, the case is remanded to the BPAI. Whenan ex parte reexamination and an action seeking adeclaratory judgment of invalidity are co-pending,whether or not to stay the procedure is decided at
the discretion of the judge.
d Germany
An action for declaration of nullity would not
be stayed even if a voluntary amendment weremade during its pendency. Furthermore, voluntary
amendment is possible during pendency of appeal
from a decision on an opposition or a decision on adeclaration of nullity. The pending proceedings are
not stayed by the amendment in this case either.
e United Kingdom
The amendment proceedings are an
independent procedure, but in fact, they are often
carried out in parallel with a procedure concerning
patent validity or infringement. Therefore, thequestioning for making an amendment is usuallyconducted at the same time as the trial of the issuesof validity or infringement. Accordingly, unless an
opposition is made to the amendment, theamendment proceedings do not have a staying
effect on court proceedings.
f Austria
Even when patent claims were amended in thecourse of the proceedings of appeal from the final
decision of the Nullity Department to the Supreme
Patent and Trademark Chamber, the proceedings
before the Supreme Patent and Trademark
Chamber would be continued.
g China
There is no procedure for correcting theg(*38) Art. 164(2) South Korean Patent Act.
(*39) §156(3) Austrian Patent Law.
(*40) Art. 47 Patent Law of the People’s Republic of China.

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● 6 ●specification during the proceedings on appeal froma SIPO decision to the people’s court. Amendment
is shut out.
h South Korea
Judicial proceedings on appeal from a KIPO
decision may be suspended until a trial decision on
correction becomes final and conclusive, but it isleft to the discretion of the patent court(*38). The
court is likely to suspend the judicial proceedings
when there is a high probability for the correction
to be allowed.
(iii) Treatment in infringement litigationc United States
When an ex parte/inter partes reexaminationis requested or a reissue application is filed during
the pendency of an infringement action, whether or
not to stay the judicial proceedings is decided at thediscretion of the judge. If amendment has been
allowed in ex parte reexamination or reissue
proceedings, the court conducts the proceedings
based on the amended specification.
d Germany
When a voluntary amendment is made during
an action for infringement, the judicial proceedings
are not necessarily stayed. However, when
opposition proceedings or nullity proceedings arelaunched, the judicial proceedings are temporarily
stayed only if the patent is very likely to be revoked
as a result.
e United Kingdom
A court carrying out infringement proceedings
may determine the patent invalid in response to thedefendant’s defense of patent invalidity. The court
may also make a decision as to whether or notamendment of patent claims should be allowed.
f Austria
If the defendant in infringement litigation
alleges nullity of the patent, the court mustsuspend the proceedings and wait for the Nullity
Department’s decision on the nullity of the patent.
However, the court continues the infringement
litigation when it is obvious that nullity will bedenied(*39).
g China
The patent validity is never determined in
infringement litigation. Unless the Patent
Reexamination Board declares a patent invalid, thepeople’s court must treat the patent as being valid.
A decision declaring a patent invalid has no
retroactive effect on any judgment or ruling ofpatent infringement that has been pronounced andenforced by the people’s court(*40).
h South Korea
When rendering a decision in infringement
litigation before a KIPO trial decision on correction
becomes final, the judge taking charge of theinfringement litigation decides on infringement
based on the patent claims at the point when the
hearing in the infringement litigation ended, insteadof determining whether or not the correction isallowable.
(iv) Participation of the patent office in a higher
instancec United States
In the case of appealing a BPAI decision on ex
parte reexamination or reissue proceedings to the
Court of Appeals for the Federal Circuit (CAFC) or
the U.S. District Court for the District of Columbia,
the defendant would be the USPTO Director. Thus,
the USPTO Director becomes a party tolitigation(*41).
d Germany
The GPTO President may, if he/she considers
it appropriate to safeguard the public interest, makewritten statements in appeal proceedings before
the Patent Court, be present at hearings and makerepresentations therein(*42). The Patent Court may
give the GPTO President the opportunity tointervene in appeal proceedings at its own
discretion(*43).
e United Kingdom
The court carrying out proceedings may, onrequest of a party to the proceedings or ex officio,
order the UKPO to inquire into and report on any
question of fact or opinion that occurred in theprocess of the proceedings(*44).
f Austria
The APO may not participate either ininfringement litigation or appeal proceedings before
the Supreme Patent and Trademark Chamber. In
addition, the APO may not submit a written
argument in these proceedings.
g China
The Patent Reexamination Board becomes thedefendant in an appeal from a SIPO decision to thepeople’s court. However, SIPO may not participate
in infringement litigation.
h South Korea
KIPO becomes a party to the legal proceedings
as the defendant in an appeal from a KIPO
Industrial Property Tribunal’s decision on an
opposition to the patent court, but it does not
become a party in an appeal from the Tribunal’s
decision on invalidation of a patent. KIPO has never
become a party in an appeal from the Tribunal’s
decision on invalidation in the past.

Ⅲ Settlement of Design and Trademark
Disputes
1

Systems for settling disputes over thevalidity of a design(1) Outline of the current system
The Japanese design system does not have an
opposition system similar to the one found in thepatent system, but only an invalidation trial system.
Most of the system applies mutatis mutandis theprovisions under the Patent Law. The Design Law
does not allow correction after registration, so no
problems occur pertaining to correction after
registration.
(2) Comparison of the systems of othercountries
The systems of Germany, the United Kingdom,
Austria, South Korea, and the Office for
Harmonization in the Internal Market (OHIM) werestudied with respect to settlement of disputes on
oppositions to and invalidation of designs. The
United States and China apply the same system asthat for patents to settle disputes on oppositions toand invalidation of designs.
(i) Eligibility for a demandantc Germany
The registration of a design can be cancelled at
the request of the registered owner or anotherperson. When another person requests cancellation,
an official or officially certified document in which
the registered owner renounces the design or gives
his consent to cancellation must also be submitted.
Consent to cancellation can be demanded from theregistered owner in legal proceedings(*45).
d United Kingdom
Only a person having interest may apply for adeclaration of invalidity(*46).
e Austria
An application for a declaration of invalidity
may be made at any time after the design has beenregistered(*47).
f South Korea
Any person may file an opposition to the grantof an unexamined design. A trial to invalidate adesign registration may be requested by aninterested person or an examiner.
g OHIMA declaration of invalidity of a registered
Community design may be applied for by any
persons, entities, and the appropriate authority of
the Member State in question.

(*41) 35 U.S.C §141, 145, and 306.
(*42) §76 German Patent Law.
(*43) §77 German Patent Law.
(*44) §99A U.K. Patents Act.
(*45) §10c German Law Concerning Copyright in Industrial Designs.
(*46) §11ZB U.K. Registered Designs Act.
(*47) §24 Austrian Federal Law of June 7, 1990, on the Protection of Designs.
● 7 ●IIP Bulletin 2003

(ii) Time limit for the demandc Germany
The request can be filed with the GPTO any
time. The same applies to the legal proceedings forrequesting cancellation.
d United Kingdom
An application for a declaration of invalidity
may be made at any time after the design has beenregistered(*48).
e Austria
A request for a declaration of nullity may be
filed at any time after the registration of a design
right.
f South Korea
An opposition to the grant of an unexamined
design may be filed within three months from thedate of publication of the registration of the design.
An invalidation trial may be requested at anytime(*49).
g OHIMA declaration of invalidity may be applied foreven during the pendency of infringement litigation
or after the Community design has lapsed(*50).
(iii) Examination of evidence ex officioc Germany
Since a request for cancellation of theregistration of a design is based on a certified
document containing an oath of the registeredowner, no examination of evidence is conducted exofficio.
d United Kingdom
The registrar examines the case solely basedon the written statements and evidence producedby both parties.
e Austria
The Nullity Department never uses new
grounds or evidence on its own discretion.
f South Korea
Examination of evidence ex officio is allowed
both in an opposition and an invalidation trial byapplying mutatis mutandis the provisions under the
Patent Act.
g OHIM
Although provisions on examination of thefacts ex officio are stipulated, the OHIM’s
examination in proceedings relating to a declarationof invalidity is restricted to the facts, evidence, andarguments provided by the parties to theproceedings.
(iv) Ex parte/inter partes proceedingsc Germany
The legal proceedings for cancellation of theregistration of a design in court are inter partes
proceedings. The court has the authority todetermine whether or not the registered design
satisfies the requirements for protection of designs(*48) §11ZB(6) U.K. Registered Designs Act.
(*49) Art. 68(2) South Korean Design Act.
(*50) Art. 24(2) Council Regulation on Community Designs.

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● 8 ●under the German design law.
d United Kingdom
The declaration of invalidity proceedings areinter partes proceedings.
e Austria
Nullity proceedings instituted by a third party
are inter partes proceedings. The effect of a court’s
decision of nullity in an infringement case only
extends to the parties to the proceedings.
f South Korea
The opposition proceedings are inter partes
proceedings. The opponent may not appeal from adecision on maintenance. The invalidation trial
proceedings are inter partes proceedings. The
other party becomes the defendant in an appeal
from a decision on invalidation to the court.
g OHIM
The proceedings for a declaration of invalidity
are inter partes proceedings. After a decision of a
Community design court becomes final, the party tothe proceeding may not allege invalidity based on
the same ground, according to the doctrine of res
judicata.
2

Systems for settling disputes over thevalidity of a trademark(1) Outline of the current systems
The systems for disputing over the validity ofa trademark right under the Japanese Trademark
Law are the post-grant opposition system and thesystem of invalidation trial. Both systems apply
mutatis mutandis many of the provisions under the
Patent Law, although there are slight differences.
In addition, there is the system of trial forcancellation of trademark registration. For example,
a trial for cancellation of an unused trademark is asystem in which, where a registered trademark has
not been continuously used for three years or morein respect of each item of the designated goods ordesignated services, any person may demand a trial
for cancellation of registration of the trademark
with respect to such designated goods ordesignated services. There are time limits fordemanding a trial for cancellation of trademark
registration based on specific grounds.
The Trademark Law does not allow correction
after registration, so no problems occur pertaining
to correction after registration.
(2) Comparison of the systems of othercountries
The systems of the United States, Germany,
the United Kingdom, Austria, China, South Korea,
and the OHIM were studied with respect tosettlement of disputes on oppositions to andinvalidation of trademarks.

(i)cEligibility for a demandant
United States
An opposition can be filed by any person who
has or is likely to have substantial interest in the
trademark.
d Germany
A post-grant opposition can be filed only by the
proprietor of an earlier trademark. A request forcancellation of the registration of a trademark andan action for cancellation request based on absolute
grounds for refusal can be filed by any person(*51),
while an action for cancellation request based onrelative grounds for refusal can be filed by the
proprietor of an earlier right and a person having
interest(*52).
e United Kingdom
Any person may file a pre-grant opposition, an
application for the revocation of a registration, or an
application for a declaration of the invalidity of aregistration(*53).
f Austria
Any person may apply for cancellation of amark on grounds other than double registration andunused/well-known marks(*54). A person holding amark that is competing with the trademark inquestion may request cancellation of the markbased on double registration, while a user of themark may request cancellation on the ground of an
unused/well-known mark.
g China
Any person may file a pre-grant opposition(*55).
Any person may apply for an adjudication to cancel
a trademark on grounds for protecting public
interest, while the owner of an earlier trademark or
an interested party may apply for the adjudication
based on such grounds as a famous trademark andattribution of the right.
h South Korea
Any person may file a pre-grant opposition to a
trademark registration(*56). An invalidation trial may
be demanded by an interested person or an
examiner. The eligible requester of a trial forcancellation of a trademark registration differs
according to the grounds of cancellation; aninterested person may file a request for a trialbased on non-use of a trademark or violation of thelimitations to assignment of a trademark right, andthe trademark owner may file a request for a trialbased on illicit registration of a trademark by anagent or a representative of the trademark owner.
Any person may file a trial for cancellation based on
any other grounds.
i OHIM
Only an interested person may file a pre-grant
opposition or apply for a declaration of invalidity
based on relative grounds. Any person may apply
for a declaration of revocation or for a declaration
for invalidity based on absolute grounds.
(ii) Time limit for the demandc United States
A pre-grant opposition may be filed within
thirty days after the publication of the mark. A
petition to cancel a registration may be filed within
five years from the registration date(*57). However,there are cases in which the limitations are notapplied due to certain grounds.
d Germany
A post-grant opposition may be filed within
three months from the date of publication of theregistration. There is a time limit of ten years forfiling cancellation requests based on absolute
grounds of nullity in certain cases(*58), and a time
limit of five years for filing cancellation requests
based on relative grounds of nullity except when
the later trademark has been applied for in bad
faith(*59).
e United Kingdom
An opposition may be filed within threemonths of the date on which the application was
published(*60). With regard to applying for adeclaration of the invalidity of the registration of alater trademark, the proprietor of an earlier
trademark or any other person having an earlier
right loses the right of application when he/she has
acquiesced for five successive years in the use of
the later trademark while being aware of such use.
f Austria
A petition on the ground of double registration
shall be filed within a period of five years as fromthe date knowledge is obtained of the use of themark registered later, while a petition on the
ground of an unused, well-known mark shall beapplied for within five years from the beginning of
the period of protection.
g China
An opposition may be filed within threemonths from the date of the publication(*61). An
application for an adjudication to cancel a trademark(*51) §49 and 54 German Trade Mark Law.
(*52) The respective items under §55(2) German Trade Mark Law.
(*53) §47(3) U.K. Trade Marks Act 1994.
(*54) §32, 33, 33a, 33b, and 33c Austrian Trademark Protection Act.
(*55) Art. 30 Trademark Law of the People’s Republic of China.
(*56) Art. 25(1) South Korean Trademark Act.
(*57) 15 U.S.C. §1064(1).
(*58) §50(2) German Trade Mark Law.
(*59) §51(2) German Trade Mark Law.
(*60) §13(1) U.K. Trade Marks Rules.
(*61) Art. 30 Trademark Law of the People’s Republic of China.
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based on grounds, such as a famous trademark andregistration by a representative without authority,
may only be made within five years from the date of
the registration, except where the registration was
obtained in bad faith.
h South Korea
An opposition may be filed within thirty days
from the date of publication of the application(*62).
Meanwhile, an invalidation trial based on specificgrounds may not be requested after five years fromthe date of registration of the trademark or from thedate of registration for the renewal of the term of
the trademark right. A trial for cancellation of a
trademark registration based on specific grounds
may not be requested after three years from thedate on which the alleged facts have ceased toexist(*63).
i OHIM
An opposition may be filed within threemonths from the publication of a Community
trademark application. With regard to an application
for a declaration of invalidity, if the owner of an
earlier trademark has acquiesced, for a period offive successive years, in the use of a later
Community trademark while being aware of suchuse, he/she shall no longer be entitled to apply for adeclaration that the later trademark is invalid on thebasis of the earlier trademark(*64).
(iii) Examination of evidence ex officioc United States
A discovery procedure similar to that in courts
is taken in the Trademark Trial and Appeal Board(TTAB) both when filing a pre-grant opposition anda petition for cancellation of a registration. The
TTAB only renders a decision based on the grounds
stated by the parties in the discovery procedure.
d Germany
In a post-grant opposition and a cancellation
request based solely on relative grounds, the GPTO
may only use grounds that have been stated by the
opponent or the requester. This also applies to acancellation request based on absolute grounds ofnullity, but the registration can be cancelled exofficio when there are special grounds.
e United Kingdom
In the opposition procedure, the procedure forrevocation of a registration, and the procedure for adeclaration for the invalidation of a registration, theauthority examines the evidence produced by theparties to the procedure.
f Austria
Although cancellation proceedings in the
Nullity Department are initiated only on request ofa party to the proceedings, once started, theproceedings can be continued ex officio even if therequest for cancellation is withdrawn. While theNullity Department is able to use new evidence ex
officio in theory, such a measure is usually nottaken in practice.
g China
There are no statutory provisions concerning
examination of evidence ex officio. Since it became
possible to have the court examine an adjudicationof the Trademark Review and Adjudication Board,
provisions on examination of evidence ex officio is
expected to be stipulated in the near future.
h South Korea
In an opposition procedure, an invalidation trial,
and a trial or cancellation of a registration, theexaminer may take and use evidence that has notbeen produced by the opponent or the requester of
the trial ex officio(*65). In that case, the examiner
must give the right holder an opportunity to submit
a written opinion.
i OHIM
In the proceedings for an opposition, adeclaration of revocation, and a declaration ofinvalidity, the decision is taken based on the
grounds stated by the parties to the proceedings inprinciple. It is possible to examine the facts ex
officio under Art. 74 of the Council Regulation on
the Community Trade Mark, but the facts are notexamined ex officio for an application based onrelative grounds or when the right holder does notmake an answer(*66).
(iv) Ex parte/inter partes proceedingsc United States
The following opportunities are given to theparties in the pre-grant opposition procedure: i) thepatent applicant’s answer to the opposition; ii) the
opponent’s counterclaim against the answer; and iii)
the patent applicant’s answer to the counterclaim.
The same opportunities are given under law also
for the petition to cancel a registration. An appeal
may lie from a decision on opposition orcancellation to the CAFC. In that case, thedefendant would be the other party in the
opposition or cancellation proceedings.
d Germany
A cancellation procedure requested based on
absolute grounds of nullity is an inter partes
procedure. The cancellation request is notified tothe proprietor of the trademark, and if the
proprietor fails to object to the cancellation, thetrademark is cancelled without undergoing any
further procedure(*67). If the proprietor objects to(*62) Art. 25(1) South Korean Trademark Act.
(*63) Art. 76 South Korean Trademark Act.
(*64) Art. 53 Council Regulation on the Community Trade Mark.
(*65) Art. 157 South Korean Patent Act as applied mutatis mutandis in Art. 33 South Korean Trademark Act.
(*66) P.A.C.E. van der Kooij, The Community Trade Mark Regulation (2000), p. 133.
(*67) §54(3) German Trade Mark Law.

IIP Bulletin 2003

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the cancellation, the substantive cancellation
procedure is carried out.
e United Kingdom
The opposition procedure, the procedure forrevocation of a registration, and the procedure for adeclaration for the invalidation of a registration are
all inter partes procedures. When a party appeals
from the authority’s decision to court, it will still be
an inter partes procedure, without the authority
becoming the defendant.
f Austria
When a third party requests cancellation of a
trademark, the cancellation proceedings are carriedout as inter partes proceedings in the Nullity
Department of the APO. An appeal may lie from thefinal decision of the Nullity Department to the last
court of appeal, the Supreme Patent and Trademark
Chamber.
g China
The opposition proceedings are inter partes
proceedings. When a party is dissatisfied with thedecision, he/she can request the Trademark Review
and Adjudication Board to review the decision. The
proceedings for an adjudication to cancel a
trademark are also inter partes proceedings. Whena party is dissatisfied with the decision of theTrademark Review and Adjudication Board, he/she
may appeal to the people’s court. The defendant
would be the Trademark Review and Adjudication
Board.
h South Korea
The opposition proceedings are ex parteproceedings. The invalidation trial and the trial forcancellation of a registration are inter partes
proceedings. In appeals from these trial decisions,the other party in the trial would be the defendant.
Even if a ground for invalidation were found for aregistered trademark during infringement litigation,a decision on the invalidity cannot be made in thelitigation until the decision of invalidity of the
trademark registration becomes final in an
invalidation trial.
i OHIM
The proceedings for an opposition, adeclaration of revocation, and a declaration ofinvalidity are all inter partes proceedings. A party
to the proceedings who is adversely affected by thedecision may appeal to the Board of Appeal. The
other parties to the proceedings may participate in
the appeal proceedings. A party to the proceedings
who is adversely affected by the decision of theBoard of Appeal may further appeal to the Court ofJustice(*68).

Ⅳ Hantei System (advisory opinion
on the technical scope of apatented invention)
1

Outline of the Hantei System

The Hantei system is a system in which the
JPO, upon request, provides an advisory opinion on:
the technical scope of a patented invention; aregistered design or a similar design; or the scopeof effect of a trademark right. The Hantei isconsidered as the JPO’s opinion and it is not legallybinding. The Hantei proceedings are carried out by
a procedure similar to the trial proceedings before
the JPO.
2

Summary of the Questionnaire Survey

A questionnaire survey was conducted to findout the needs of those who are actually using the
Hantei system and how they evaluate the system.
The results indicated that the main users ofthe Hantei system were small and medium
enterprises (SMEs) and individuals. The requester
expects from the Hantei system an objective
determination for settling a dispute, so in thatsense, the system provides “reassurance” to SMEs
and individuals. This is supported by the fact thatan outstanding proportion of the respondents
answered that they requested a Hantei “because
the JPO is a public body.” The low fees would be
another factor that encourages the use by SMEs
and individuals. However, in light of the amount oflabor involved in the proceedings, there would be aneed to review the appropriateness of the fees froman equity point of view.
At the same time, the fact that the Hantei
proceedings are not necessarily speedier than othersystems indicate how much the Hantei system isdemanded among the users. Since the Hantei
proceedings are similar to the trial proceedings
before the JPO, it would be quite difficult to speed
up the proceedings in actuality. Although private
alternative dispute resolution (ADR) services are
not so actively utilized as other such systems as theconciliation of civil affairs in Japan, stimulation ofuse of ADR would be requisite as an alternativemeans for dealing with such user needs for the
JPO’s Hantei system. A key challenge in this casewould be how the ADR’s determination results
could win the same level of social credit as the
JPO’s Hantei results.
(Senior Researcher: Masahiko Matsunaka)(*68) Art. 63 Council Regulation on the Community Trade Mark.
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