A1. Under the new Opposition system, an opportunity is given to a person to request that a decision of patent grant be reviewed within 6 months from the date of the publication of the patent in the gazette. If an opposition is filed to a patent, the Japanese Patent Office (hereinafter referred to as JPO) examines whether the decision was appropriate. If the JPO finds defects, the JPO will try to correct the defects in order to aim early stabilization of the patent.

A2. A petitioner can file an opposition to a patent that is published in the gazette on or after April 1, 2015.

A3. A petitioner can file an opposition to a patent within 6 months from the date of the publication of the patent in the gazette. Please note that even within this period, you cannot file an opposition to a patent after the lapse of the right of the patent.

A4. Any person (not limited to an interested party) can file an opposition to a patent (Patent Act §113). More specifically, a natural person, a judicial person, an association or foundation that is not a judicial person and has provisions on representative persons or administrators can file an opposition (Patent Act §6(1)(ii)). You cannot file an opposition anonymously. If you are an overseas resident (a person who does not have an address or residence (if a judicial person, business office) in Japan), then you need to file an opposition through an agent (patent administrator) who has an address or residence in Japan.

A5. To a decision that the patent should be revoked, the patentee(s) etc. can file an action for the revocation of the decision with the Tokyo High Court (Intellectual Property High Court) (Patent Act §178(1)). To a decision that the patent should be maintained, an objection cannot be raised (Patent Act §114(5)).

A6. When the decision to revoke the patent has become final, the patent is deemed not to have existed from the beginning (Patent Act §114(3)). If a decision to revoke a patent that covers a part of the claims has become final, the patent covering the part of the claims is deemed not to have existed from the beginning (Patent Act §185).

A7. The opposition trial is conducted by documentary proceedings (Patent Act §118(1)). No oral proceedings. Examination of Evidence, such as examination of witness, may be conducted.

A8. In order to secure the accuracy of the proceedings, a panel consisting of 3 or 5 trial examiners conducts the proceedings (Patent Act §114(1)). The subject of the examination is limited to the claims to which an opposition was filed. The panel can, however, examine reasons that are not raised by the petitioner (Patent Act §120-2(1)).

A9. When there are multiple oppositions relating to a single patent, the proceedings are basically conducted jointly (Patent Act §120-3(1)). Regardless of when each of the oppositions was filed, the proceedings are conducted after the opposition period (6 months from the publication of the patent in the gazette) has passed. However, if the patentee(s) files a petition requesting that the proceedings be started before the expiration of the opposition period, the proceedings will be started before the expiration of the opposition period.

A10. Regardless of which of the opposition and the request for invalidation trial is filed first, the proceedings for the invalidation trial are conducted first. They will not be jointly conducted.

A11. While opposition proceedings are pending, a request for a trial for correction cannot be filed. If a request for a trial for correction is filed and then an opposition is filed, the opposition proceedings are conducted first. They will not be jointly conducted. The patentee(s) is given an opportunity to file a request for correction during the opposition proceedings.

A12. A petitioner can file an opposition based on public interest grounds specified in §113(1) of the Patent Act. The public interest grounds include lack of novelty and/or inventiveness, defects in the description, etc. Unlike the invalidation trial, a petitioner in the opposition system cannot file an opposition based on reasons relating to ownership of rights (such as usurped application and misappropriated patent).

A13. To a patent that contains 2 or more claims, a petitioner can file an opposition on a claim-by-claim basis (Patent Act §113).

A14. Amendments to change the gist of the Notice of Opposition are permitted if such amendments are made by the expiration of the opposition period or the delivery of the notification of reasons for revocation to the patentee, whichever the earlier (Patent Act §115(2)).

A15. The opposition proceedings are conducted by documentary examination alone. Because the opposition proceedings are not between opposing parties (such as the case for invalidation trial), but between the JPO and the patentee(s), an interview requested by the petitioner will not be held. The petitioner, therefore, needs to describe the reasons for opposition clearly in the Notice of Opposition. However, if the panel considers it beneficial for accurate examination to receive technical explanation, the panel may request an interview with the petitioner as necessary before sending the notification of reasons for revocation.

A16. If the patentee(s) files a Written Correction Request, the chief trial examiner will send a copy thereof along with a document stating reasons for revocation to the petitioner. The petitioner is given an opportunity to file a Written Opinion within a specified time period (usually 30 days, 50 days for overseas residents). Under special circumstances (e.g., when the corrections are minor corrections such as correcting clerical errors), the chief trial examiner may decide it unnecessary to give the petitioner an opportunity to file a Written Opinion. In such cases, the petitioner will not have an opportunity to file a Written Opinion (Patent Act §120-5(5)).

A17. The petitioner can withdraw the opposition before the notification of reasons for revocation is sent to the patentee(s) (Patent Act §120-4(1)). If the petitioner has filed an opposition to 2 or more claims, the petitioner can withdraw the opposition on a claim-by-claim basis (Patent Act §120-4(2), §155(3)). If the opposition is withdrawn, the patentee(s) and intervenor(s) will be notified thereof.

A18. If the evidence is something that is needed in association with the correction that is requested, the evidence may be admitted as reasons for revocation. If the evidence is something that is not associated with the correction, the evidence will not be admitted as reasons for revocation.

A19. When an opposition is filed to a patent, a notification of opposition number will be sent to the patentee(s). If the patentee(s) is an overseas resident(s), the notification of opposition number will be sent to the patent administrator(s).

A20. Every time an opposition is filed, a copy thereof will be sent without waiting for the expiration of the opposition period. The copy will be sent to agents (if there are any) or to the patentee(s) (if there are no agents). If the Notice of Opposition contains any defects, a copy thereof will not be sent until the defects are eliminated.

A21. Upon receipt of a copy of Notice of Opposition, you do not need to take any immediate action to the JPO. The JPO will examine the opposition. After the examination, if you are notified of reasons for revocation, you may want to consider filing a Written Opinion and/or filing a request for correction, etc. If it is decided that the patent should be maintained without the patentee(s) being notified of it, the patentee(s) does not need to go through any procedure.

A22. After examination of the opposition, if revocation decision is to be made with regard to the patent relating to the opposition, the chief trial examiner notifies the patentee(s) of the reasons for revocation of the patent and give the patentee(s) an opportunity to state opinions on the reasons for revocation within a specified period (usually 60 days, 90 days for overseas residents) (Patent Act §120-5(1)). Within this period, the patentee(s) may file a Written Opinion and file a request for correction. The patentee(s) will need to state opinions on the notification of reasons for revocation, but does not need to state opinions on the reasons or evidence stated in the Notice of Opposition.

A23. Similar to the advance notice of trial decision for a patent invalidation trial, when there are reasons to revoke a patent, the patentee(s) is notified of the reasons for revocation and given an advance notice of decision, and is given an opportunity to request for correction (Patent Act §120-5(2)). If the patentee(s) has expressed that the patentee(s) does not wish to receive the “advance notice of decision” so as to receive the decision early, or if the patentee(s) has not filed a Written Opinion or a request for correction at the time the patentee(s) has received the notification of reasons for revocation, the “advance notice of decision” will not be sent.

A24. The patentee(s) can file a request for correcting the description, claims, or drawings within the time period specified in the notification of reasons for revocation (including the notification of reasons for revocation that is sent as an advance notice of decision) to file a Written Opinion (usually 60 days, 90 days for overseas residents) (Patent Act §120-5(2)).

A25. Yes, the patentee(s) can (Patent Act §120-5(9), §126(7)).

A26. If corrections made to the description or drawings are related to inventions of multiple claims, the request for correction must be filed for all the claims (or a group of claims (claims that have a quotation relationship between the claims)) that are related to the corrected description or the corrected drawings (Patent Act §120-5(9), §126(4)).

A27. The corrected description, etc. must be prepared in accordance with the formality requirements under the Regulation under the Patent Act so as to avoid discrepancy in the claim numbering, paragraph numbers, drawing numbering, etc. (Notes 14, 16, and 19 of Form 29, Notes 15 and 16 of Form 29-2, and Note 13 of Form 30). The requirements are for avoiding documents that would require a person, in order for him/her to understand the scope of the patent, to track the final and binding decision in a trial and to refer to descriptions and claims before and after the corrections are made for each claim. Additionally, if the description, etc. are corrected, the whole text thereof must be attached.

A28. Only the latest request will have an effect and all the other requests (requests made before the last request) are deemed withdrawn (Patent Act §120-5(7)). Please note that the description etc. that serve as a basis of corrections are those at the time of Registration of Establishment of the patent.

A29. Because the subject to which the opposition was filed no longer exists, the opposition will be dismissed.

A30. The patentee(s) cannot, in principle, make amendments to Written Correction Request that would change the gist thereof. However, as an exception, when the Written Correction Request is required to amend, amendments to the matters that are required to amend will be admitted even if the amendments would change the gist of the Written Correction Request (Patent Act §120-5(9), §131-2(1)(iii)).

A31. The patentee(s) can withdraw a request only during the time period for filing a Written Opinion, the period being specified in the notification of reasons for revocation (including the notification of reasons for revocation that is sent as an advance notice of decision) (Patent Act §120-5(8), §17-5(1)). Please note that when withdrawing the request, even when the request are filed on a claim-by-claim basis or on a group*-by-group basis (*:a group of claims), the patentee(s) must withdraw the request for all the corrections (Patent Act §120-5(8)). If the patentee(s) wishes to cancel a part of the request for correction, the patentee(s) can delete a part of the corrections through amending the corrected description, claims, or drawings (Patent Act §17-5).

A32. Similar to the case with trials against examiner’s decision of refusal, the panel will hold at least one interview with the patentee(s) upon request during the proceedings.