Japanese Patent FAQs
Invalidation ProceduresUpdate 2020.6.2
Q.What is the nature of an invalidation procedure in Japan?
The following is the information about invalidation procedures in Japan:
(1) An invalidation request may be made by interested parties anytime after completion (i.e., after three weeks – one month from the payment) of payment of the registration fee of a patent (even after expiration of the patent term).
(2) The decisions are made by three examiners at the Japanese Patent Office.
(3) Both parties are involved as adversaries during the procedure.
(4) The name of the requestor is disclosed.
(5) The invalidation procedure is based on submitted documents, however, oral testimony is also possible.
(6) First, the requestor files an invalidation request. Then, the patentee files a written reply. Thereafter, the requestor files a response to the patentee’s reply.
(7) The requestor may submit prior art references that have he or she has found.
(8) The Official fee for filing a request for invalidation is calculated as 49,500 yen + (5,500 yen per claim).
(9) The patentee may file a correction and narrow the scope of claims if the patentee believes the patent will be invalidated.
(10) The requestor may withdraw the request and terminate the process.
(11) The requestor may appeal the decision to the Tokyo High Court if the patent is determined to be valid. The patentee may appeal the decision to the Tokyo High Court if the patent is determined to be invalid.
Q.What are the differences between opposition procedure and invalidation procedure?
This table shows the differences:
|Purpose of Law||To provide opportunity to confirm validity of patent early||To solve conflicts between the parties|
|Requestor||Any party||Interested parties only|
|Examination method||Written submissions only||Written submission, however, an oral hearing is also possible|
|Period||Within six months of the issue date of the patent publication||Any time after issuance of a patent (even after expiration of the patent term).|
|Official fee (Ceiling)||16,500 + 2,400 x Number of claims||49,500 + 5,500 x Number of claims|
|Reasons||Novelty, Inventive Step, Written Description Requirement||Novelty, Inventive Step, Written Description Requirement, Problems of the Patentee, Rise of Grounds for Invalidation after issuance.|
|Preliminary notice before decision||
When the requestor requests issuance (JPO sends a notice of Grounds for Cancellation.) Notice of reasons for revocation before decision to revoke is made (advance notice of decision)
|JPO sends a preliminary notice before decision.|
|Participation of Requestor||The requestor can file an argument if a correction to claims is filed by the patentee.||The requestor participates in the procedures absolutely.|
|Interview||Requestor: Not possible
|Withdrawal||Until notice of grounds for cancellation is issued.||Until completion of Invalidation procedures.|
|Legal effect of decision of cancellation of patent||Treated as if the patent had never issued||Treated as if the patent had never issued|
|Filing Lawsuit with the Intellectual High Court||The patentee who received a decision of cancellation can file.||Both the requestor and the patentee can file.|