Japan flag South Korea flag China flag

Japan Implements Patent Opposition Procedures

Our friends at Onda Techno International Patent Attorneys have provided the following information.

*     *     *     *     *

As of 1st April 2015, Japan will implement a number of new amendments to our patent laws.

1) Establishment of patent opposition

The JPO will re-establish patent opposition in addition to an invalidation procedure. Under this patent opposition, any party may file a patent opposition within six months from the issued date of patent publication. The examination is based on written filings only and no oral hearings are available.

Patent opposition is available for patents with registration fees that have been paid on or after March 2015.

Accordingly, as of 1st April 2015, there will be two post issuance procedures in Japan:

Opposition Procedure                    Invalidation Procedure

Requestor
Any party                                        Interested parties only

Examination method

Written submissions only                Written submissions, however, an oral hearing is also possible

Period

Within six month of the issue          Any time after issuance of a patent

date of the patent publication         (even after expiration of the term)

Legal effect of the            

Considered that the patent had      Considered that the patent had

cancellation decision
never issued                                     never issued

Since opposition procedure has no oral testimony, opposition procedure will be faster and cheaper than invalidation procedure. We believe that your clients will have more opportunities to have their patent rights secured earlier by this new law.

2) The JPO will expand remedies for missed deadlines

The following situations for remedies will be added as long as there is reasonable justification for the failure to meet the deadline, such as a disaster on the applicant:

Missed priority deadline: The applicant may request reinstatement to file a Paris Convention application/PCT application past the 12 month priority claim deadline but within 14 months from the priority date if the filing date of the Japanese patent application/PCT application is on or after 1st April 2015.

Missed a deadline for filing a request for examination: If the deadline had not yet been missed on 1st April 2015, the applicant may file a request for reinstatement within two months from the date that the justification no longer exists and also within one year from the missed deadline.

Missed a deadline for payment of registration fee (1st to 3rd year annuities): The applicant may file a request for reinstatement within two months from the date that the justification no longer exists and also within six months from the missed deadline.

Missed a deadline for submitting a certificate/document proving that the
disclosure was made within one of the exceptions (grace period), which must
be submitted within 30 days from the filing of the application: 
As for missed payment of registration fee above.

Missed a deadline for filing priority documents: As for missed payment of registration fee above.

Missed a deadline for filing a divisional application: As for missed payment of registration fee above.

Missed a deadline for changing type of application: As for missed payment of registration fee above.

Missed a deadline for filing a patent application based on a utility model registration: As for missed payment of registration fee above.

Missed a deadline for filing an application of registration of extension of time: As for missed payment of registration fee above.

Missed a deadline for filing a request for refund of the registration fee, the request for examination fee, or over payment or erroneous payment: As for missed payment of registration fee above.

Although the above reasons for reinstatement have been added, there will be only a small chance that the JPO will accept the reinstatement. The JPO is very strict, and the only reasonable justifications would be a computer system error or a big natural disaster.  A simple human error will not be accepted.

*     *     *     *     *

For any queries relating to Japanese practice, Onda Techno can be contacted via their website or the contact details provided therein.

You may also contact us at mail@tlip.co.uk for advice regarding anything relating to your intellectual property matters.