Intellectual Property Information

New Invalidation Trial System
(Effective from January 1, 2004)

Effective from January 1, 2004, a new Invalidation Trial system was introduced in the form of a revision of the Japanese Patent Law (Article 123). The former post-grant opposition system was integrated into the new Invalidation Trial system so as to replace the former Invalidation Trial system. The following is a summary of the new system.

1. Anybody can demand an Invalidation Trial

For most of the reasons that can be used as a basis of invalidation, the demandant (plaintiff) is not required to have legal interest in seeking the invalidation. Any person can demand an Invalidation Trial for reasons such as lack of novelty, lack of inventive step, lack of clarity, and incorrect amendment of claims and specifications. By way of exception, legal interest or merit is still required in filing an Invalidation Trial based on improper inventorship or breach of requirements for joint application.

Under the new Invalidation Trial system, it is theoretically possible to file an Invalidation Trial in the name of "a dummy", e.g. a natural person unrelated to the essential plaintiff, in an attempt to conceal the name of the essential plaintiff who often is a competitor of the patent holder. Practically, however, it is difficult to use "a dummy" for an Invalidation Trial, because the Patent Office now examines essentially all Invalidation Trials by oral proceedings.

2. An invalidation trial can be filed at any time

An invalidation trial can be filed at any time, even after the expiration of patent duration. This enables a third party to invalidate a patent as a counter measure to a patenteefs claim for damages caused within the duration of the patent.

3. Either party can appeal to the Tokyo High Court

Unlike the former post-grant opposition system, either party can appeal the decision of Invalidation Trial to the Tokyo High Court. Under the former post-grant opposition system, the losing demandant had to file an Invalidation Trial with the Patent Office.

4. Post-grant observation (offer of information)

Simultaneously with the abolishment of the post-grant opposition system, a time frame for filing an Observation by a third party is extended after the grant of a patent (Article 13 ter of the Regulation under the Patent Law). The reason for the observation is limited but includes lack of novelty, lack of inventive step, lack of clarity, and incorrect amendment. Anonymous filing is permitted. The offered information is enclosed in the official file wrapper, and is handed to the examiners once an Invalidation Trial is filed. It is expected that the post-grant observation will have patentees to hesitate to file careless infringement actions.