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Information on operations related to patent oppositions
With the revision of the Patent Law in 2003, the previous patent opposition system (hereinafter referred to as the "old system") was abolished by integrating it with patent invalidation trials, but with the revision of the Patent Law in 2014, the system has been strengthened. A new patent opposition system (hereinafter referred to as the "New System") has been introduced to ensure stable rights as early as possible.
The main differences between the new system and the old system are as follows.
In order to make the system easier for opponents to use, all hearings under the new system will be based on written hearings. (Article 118, Paragraph 1 of the Patent Law) Under the old system, while written proceedings were the principle, oral proceedings were also conducted on petition or ex officio, so there was a higher degree of party involvement than in the new system.
(2) Opportunity for the opponent to submit written opinion
In order to improve the convenience of the system, the opponent will now be given the opportunity to submit a written opinion when a patent owner requests a correction. (Special Article 120-5 Paragraph 5)
Under the old system, the opportunity for opponents to state their opinions after filing a patent opposition was not guaranteed, and it was not convenient for opponents.
(3) Shortening the period during which it is possible to change the gist of a patent opposition statement
In order to improve the efficiency of proceedings, the new system shortens the period for allowing changes to the gist of a written opposition. Specifically, if the reason for revocation is notified within the opposition period, the opponent cannot make any amendments that change the gist of the written opposition. (Patent Law Article 115, Paragraph 2)
The new patent opposition system is a means of extinguishing someone else's patent, similar to a patent invalidation trial, but it is easier to use than a patent invalidation trial in the following ways.
(2) Office costs are lower than patent invalidation trials. (Patent Law Article 195, Paragraph 2)
(3) Since it is only a written hearing, the procedural burden on the parties is lighter compared to a patent invalidation trial. (Patent Law Article 118, Paragraph 1)
Services provided by our office
When filing a new patent opposition, a highly specialized review and response equivalent to a patent invalidation trial is required in a short period of time, so we recommend consulting with an experienced expert.
Our office offers a variety of services related to patent oppositions, so please take advantage of them. Based on the professional perspective of our experienced patent attorneys and staff, we respond flexibly and quickly to your needs.
(Note) We may decline your request due to conflicts. Please note.
| The party filing the objection (petitioner) | Preparation to file a complaint | |
| When filing a complaint | ||
| When a request for correction is made after notification of the reason for cancellation | ||
| Others | ||
| Patent protector (patent holder) | In preparation for a petition | |
| When the reason for cancellation is notified |
Monitoring, consideration, and analysis of other patents
A patent opposition can only be filed within six months from the publication date of the patent publication (Article 113 of the Patent Law). Therefore, in order not to miss the opportunity to file a petition, it is necessary to have a system in place to monitor, consider, and analyze other patent publications.
Please use our office as an outsourcing destination for such monitoring, consideration, and analysis work. At our firm, we not only monitor other patent publications, but also provide examination, analysis, and consulting services for other patent publications based on the professional perspectives of our specialized patent attorneys and specialized staff.
Monitoring of other patent publications
According to the search condition formula agreed upon with the customer, we periodically (for example, every month) search newly published patent publications of other parties and report the search results. Search condition expressions and search timing can be reviewed at any time.
Extraction of patents requiring attention
From the searched patent publications of other parties, we extract patent publications that require attention when considering your product/technology, etc., and report the extraction results. Please use this information as a basis for making decisions to avoid infringement or consider invalidation.
Presentation of expert opinion
We will analyze the searched patent publications of other parties or the extracted patent publications of other parties, and provide the expert opinions of our patent attorneys that take into account the customer's products, technology, etc. Please use this information as a basis for making decisions to avoid infringement or consider invalidation.
Analysis and consulting of trends in the acquisition of rights by others
It is possible to analyze the rights acquisition trends of other parties based on patent publications of others and utilize the results of that analysis in the customer's future patent strategy. In such cases, it is possible to utilize the analysis and consulting provided by our patent attorneys.
Invalid evidence investigation/invalidation consideration
After the expiration of the period for filing a patent opposition or the notification of grounds for revocation of the patent, whichever comes first, the summary of the grounds and evidence for the petition stated in the written patent opposition shall be changed. Amendments cannot be made (Article 115, Paragraph 2 of the Patent Act). Therefore, it is necessary to conduct sufficient preliminary investigation and consideration regarding the reasons for the complaint and the evidence. On the other hand, the period for filing a patent opposition is limited to a short period of six months from the publication date of the patent publication (Article 113 of the Patent Law).
In other words, when filing a patent opposition, it is necessary to conduct sufficient preliminary investigation and consideration in a short period of time. Please use our office as an outsourcing destination for such short-term investigation and consideration work. At our firm, we provide investigation and examination services based on the professional viewpoints of our specialized patent attorneys and specialized staff. Since we have a large number of specialized patent attorneys and specialized staff, we are able to carry out even large-scale investigations and examinations in a short period of time.
Invalid evidence investigation
We search for patent documents that can invalidate the target patent based on the search condition formula agreed upon with the customer according to the content of the target patent to be invalidated, and report the search results. Search condition expressions can be reviewed at any time depending on the search results. We can also provide our patent attorneys' expert opinions on search results.
Considering invalidation
Our patent attorneys provide expert opinions on whether or not the patent in question can be invalidated based on the searched patent documents. Please use this information as a basis for deciding whether or not to actually file a patent opposition.
Monitoring of complaints
If a third party files an opposition to another party's patent that requires attention, you may decide to postpone filing your own patent opposition due to cost considerations. In this case, it is necessary to monitor whether a third party has filed an opposition to another party's patent that requires attention. Therefore, it is possible to use our office as an outsourcing destination for this kind of monitoring work.
Preparation of petition
The hearing of a patent opposition is only a written hearing by a panel of trial examiners, and there is no oral hearing (Article 118, Paragraph 1 of the Patent Law). In addition, the trial provisions, etc. apply mutatis mutandis to the hearing and decision on a patent opposition (Article 120-8 of the Patent Law), and if there is a formal violation, an order for amendment or dismissal of the procedure will be issued. Therefore, when preparing a written patent opposition, it is necessary to file an appropriate petition based on a professional perspective and in an appropriate format.
Therefore, please consult our office when preparing a patent opposition statement. At our firm, we provide petition preparation services based on the specialized viewpoints of experienced patent attorneys.
Policy consideration
We examine and propose a policy based on our professional perspective to invalidate the target patent.
Complaint creation
Based on the policy agreed upon with the customer, we will prepare a patent opposition statement that describes the reasons for invalidity in an optimally structured manner, and submit the patent opposition statement to the Japan Patent Office after being reviewed by the client.
Depending on your budget, we can create a cheaper version with simplified information, so please feel free to contact us.
About the complainant
If you wish to have a third party (so-called dummy) file a complaint under the petitioner's wishes, please contact us.
Creating a written opinion
If the patentee requests correction of the scope of claims, etc. in the hearing of a patent opposition, the petitioner must submit a written opinion within the specified period (standard 30 days, 50 days for overseas residents). (Patent Law Article 120-5, Paragraph 5). When preparing a written opinion, highly specialized consideration is required in order to influence the decision-making of the panel of trial examiners.
Therefore, please consult our office when preparing a written opinion. At our firm, we provide opinion writing services based on the specialized viewpoints of experienced patent attorneys.
Policy consideration
We will consider and propose a policy based on our professional perspective to provide opinions to the panel of trial examiners.
Opinion writing
Based on the policy agreed upon with the customer, we create a written opinion containing an optimally logically structured opinion, and submit the written opinion to the Japan Patent Office after review by the customer.
Information provision
The post-grant information system will continue even after the patent opposition system is introduced. Therefore, for example, (1) if you wish to anonymously submit a publicly known example to support a patent opposition filed by another person, (2) if you wish to submit a publicly known example anonymously in order to support a patent opposition filed by another person, You may consider using the information provision system when you wish to anonymously submit evidence discovered during a patent opposition hearing.
Therefore, please consult our office regarding the use of this type of information.
(Note) Whether or not documents submitted using the information provision system will be accepted in the hearing of a patent opposition is left to the ex-officio review of the administrative panel (Article 120-2, Paragraph 1 of the Patent Law).
Examination of validity and divisional application immediately after grant of patent
A patent applicant can file a divisional application within 30 days from the date of delivery of a certified copy of the decision to grant a patent (Article 44, Paragraph 1, Item 2 of the Patent Law).
Therefore, for highly important patents, in preparation for receiving a patent opposition, it is a good idea to file a divisional application within 30 days from the date of delivery of the certified copy of the patent decision. As a result, even if a patent right is revoked due to a patent opposition, there is still room for obtaining rights separately through the divisional application.
As one of the factors in determining whether to file a divisional application, we recommend that you examine the validity immediately after the patent is granted. At our firm, we provide effectiveness review services in a short period of time based on the professional perspectives of specialized patent attorneys and specialized staff.
Effectiveness study
We search for patent documents that may invalidate the target patent based on the search condition formula agreed upon with the customer according to the content of the target patent. Search condition expressions can be reviewed at any time depending on the search results.
Effectiveness study
Based on the searched patent documents, our patent attorneys will present their expert opinions regarding the validity/invalidity of the patent in question.
divisional application
If it is determined that the subject patent may be invalidated, we propose that a divisional application be filed within 30 days from the date of delivery of the certified copy of the patent decision.
Writing opinions, requesting corrections, and interviews
If the grounds for revocation of the patent are notified as a result of the examination by the administrative panel, the patentee and the intervenors must submit a written opinion within the designated period (standard 60 days, 90 days for overseas residents). (Article 120-5, Paragraph 1 of the Patent Act). Additionally, the patentee may request correction of the scope of patent claims, etc. only during the submission period for the written opinion mentioned above (Article 120-5, Paragraph 2 of the Patent Act).
When preparing a written opinion and requesting correction, highly specialized consideration is required to overturn the opinion of the trial judge panel and ensure that the patent is maintained.
Therefore, please contact our office when preparing a written opinion or requesting corrections. At our firm, we provide written opinions and correction request forms based on the professional viewpoints of experienced patent attorneys.
Policy consideration
We will examine and propose policies based on our professional perspective in order to overturn the convictions of the trial panel.
Opinion writing
Based on the policy agreed upon with the customer, we create a written opinion containing an optimally logically structured opinion, and submit the written opinion to the Japan Patent Office after review by the customer.
Request for correction
Based on the response policy agreed upon with the customer, we will create a correction request that optimally logically explains why the patent should be maintained through correction, and submit the correction request to the Japan Patent Office after review by the customer.
Interview with the administrative panel
In order to facilitate smooth communication with the trial examiner panel, our patent attorneys will conduct interviews with the trial examiner panel as necessary.
Deputy Director/Patent Attorney Takashi Murakami (Osaka Headquarters)