Under the previous law, there were two systems for disputing the validity of an issued patent: (1) the opposition system and (2) the invalidation trial system. In either system, once an opposition or a demand for trial is accepted, the patent right is deemed never to have existed.

However, since repeated attacks against a patent take much time for dispute settlement and impose burdens on the parties, in order to reduce the time for dispute settlement and burden on the parties, under the revised law, the systems have been consolidated and integrated into a new invalidation trial system. Please refer to the following table indicating features of the new invalidation trial system compared with the previous two systems.

Major Differences between the New System and the Previous Two Systems

	REVISED INVALIDATION SYSTEM	PREVIOUS INVALIDATION SYSTEM	PREVIOUS OPPOSITION SYSTEM
Grounds for demand/opposition	Public interest such as lack of novelty and inventive step; and attribution of right such as misappropriated applications, violation of the requirements for joint applications.	Public interest such as lack of novelty and inventive step; and attribution of right such as misappropriated applications, violation of the requirements for joint applications.	Public interest such as lack of novelty and/or inventive step.
Eligible demandant /opponent	Any person may demand a trial based on grounds affecting public interest; and Only interested persons/parties may demand a trial based on the grounds for attribution of right.	Only interested persons/parties may demand a trial.	Any person may file an opposition.
Time for demand /opposition	Anytime. A demand for invalidation may be filed with the JPO.	Anytime. A demand for invalidation may be filed with the JPO.	Within six months from the publication of the issued patent. An opposition may be filed with the JPO.
Manner and structure of proceedings	Oral proceeding between the patentee and the demandant.	Oral proceeding between the patentee and the demandant.	Documentary proceeding between the patentee and the JPO.
Appeal against the trial/opposition decision	Appeal may be made regardless of the results of the trial.	Appeal may be made regardless of the results of the trial.	Only the patentee may appeal when the patent is revoked. That is, the opponent has no right to appeal a decision that the patent is to be maintained.

 

Under the previous system, both opposition and demand for invalidation have been before the JPO. Under the new system, no opposition shall be filed with the JPO from January 1, 2004. Only a demand for invalidation can proceed before the JPO.

The information disclosure system has been revised along with the revision to the trial system. The information disclosure system was adopted for patent applications that have been laid-open for public inspection and not yet examined. Under the revised law, the system also will apply to issued patents and registered utility models. Therefore, any party can offer information anytime after grant of a patent. The information that can be submitted is limited to information relating to certain invalidity grounds such as amendment with addition of new matter, lack of industrial applicability, lack of novelty, lack of inventive step, etc. The submitted information will be included in the file history. When an appeal examiner considers the information available, such information will likely be used for proceeding ex officio.