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Enforcement of IP Rights in JAPAN

Measures to challenge validity of patent and other rights

1. Where should the following actions be brought? (1) Opposition to a published patent or a trademark registration (2) Invalidation of a patent or a trademark registration (3) Appeal of the decisions to the above actions

The answers are as follows: (1)and(2) Japanese Patent Office (3) Tokyo High Court

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2. Are the organizations or offices indicated in Q1 distinguished in jurisdictions, etc. depending on the cases to be treated, i.e., on the kinds of the intellectual property rights (patent, utility model, design, or trademark)?

There are no substantive differences depending on the kind of the intellectual property rights involved.

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3. What are the requirements for bringing an action in those organizations or offices indicated in the above Q1?

The requirements are different according to the offices as mentioned below.

1. As to an opposition to a published patent, the requirements are set forth in the Patent Law Art. 113 and the formal requirements of a written opposition are set forth in the Art. 115. Anyone can file an opposition within six months from the date of publication of the Official Gazette containing the patent. A person filing an opposition must submit a written opposition to the Director-General of the Patent Office. The grounds of the opposition must accompany the opposition. As to an opposition to a trademark registration, the requirements are set forth in the Trademark Law Art. 43 bis. Anyone can file an opposition within two months from the date of publication of the Gazette containing the trademark. A person filing an opposition must submit a written opposition to the Director-General of the Patent Office. The grounds of the opposition must accompany the opposition.

2. As to a trial for invalidation of a patent, the requirements are set forth in the Patent Law Art. 123. The formal requirements are set forth in Art. 131. As to a trial for invalidation of a trademark registration, the requirements are set forth in the Trademark Law 46. Only an interested party can demand an invalidation trial of a patent or a trademark registration.

3. According to the Patent Law Art. 178(1), an appeal to a ruling to revoke a patent, a trial decision, or a ruling to dismiss a written opposition or a demand for a trial or retrial comes under the exclusive jurisdiction of the Tokyo High Court. Such an appeal cannot be instituted after 30 days from the date of transmittal of the trial decision or the ruling. However, the trial examiner-in-chief may ex officio designate an additional period for the benefit of a person residing in a place that is remote or difficult to access.

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4. What is the cost to file an invalidation appeal at the JPO? Regarding an invalidation appeal, what is an average time to reach a decision? Can a court proceeding be suspended until a decision of appeal at the JPO is issued?

A. Cost estimates for filing an invalidation appeal:

1. Patent, Utility Model
Official fee 49,500 yen plus 5,500 yen per claim
Attorney's fee 400,000 yen ~ 600,000 yen (minimum)

2. Design
Official Fee 55,000 yen
Attorney's fee 380,000 yen ~ 400,000 yen (minimum)

3. Trademark
Official Fee 150,000 plus 40,000 yen per class
Attorney's Fee 380,000 yen ~ 400,000 yen (minimum)

B. Time to reach a decision:

The time required to reach a decision varies depending on the case. Generally, if no counter arguments are filed, a decision can be reached in about six to nine months. However, it normally takes about one to three years until a decision is made.

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5. Can courts invalidate intellectual property rights including patent, utility model, design, and trademark?

No. Therefore, as long as the intellectual property rights exist, a court must presume that the rights are valid. However, courts may interpret the rights with some limitations when there is a very high possibility that the rights will be invalidated.

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