2014｜News Letter

Japanese Patent Law has been amended in 2014, and the Amendment includes 2 major revisions, i.e. (1) Reintroduction of post-grant opposition system, and (2) Expansion of remedy for lapse of period for procedures.

(1)Reintroduction of Post-Grant Opposition System
New post-grant opposition system has been introduced. The new system is very similar to the previous post-grant opposition system, which was introduced in 1994 and abolished in 2003. The outline of the new system is as follows:
Any person may file an opposition against the patent within 6 months from the issuance date of the patent grant publication.
The grounds for the opposition are substantially the same as those for the invalidation trial except for the ownership, which include lack of novelty, lack of inventive step, and not satisfying the enablement requirement, the support requirement or the clarity requirement.
The opposition procedures are all carried out in writing and no oral hearing is held.
When an opposition brief is filed, the Board of Appeal-Examiners first reviews the brief, and issues an office action if it finds that at least one of the grounds for the opposition is reasonable and thus the patent should be revoked. In replying to the office action, the Patentee may file an argument and an amendment (correction) of claims and/or specification within the designated period. If an amendment is filed, the Opponent may file a counterargument against the correction.
If the Board renders a decision of revocation of the patent, the Patentee may file an appeal against the decision before the Intellectual Property High Court. On the other hand, if the Board renders a decision of maintenance of the patent, the Opponent is not allowed to appeal, instead, it may file an invalidation trial even on the basis of the same grounds as the grounds for the opposition.
In accordance with the introduction of new post-grant system in which anyone may file an opposition, the Patent Law has been also amended so that only the interested party can file an invalidation trial.

(2) Expansion of Remedy for Lapse of Period for Procedures
(a) A lapse of filing a patent application claiming a priority within the priority period or a lapse of filing a request for examination may be relieved if there is a due cause for such a lapse, and the Applicant can file them within a given period.
(b) A lapse of some periods for procedures including submitting a document proving a fact for applying a grace period, filing a divisional application, submitting a document for patent term extension which is required to be submitted when the marketing approval is not expected to be obtained before 6 months from the expiration date of the original patent term, and paying a grant fee for patent, may be relieved if there is a reason outside the applicant's control for such a lapse, and the periods can be extended in a given term.

(3) Effective Date
The effective date has not been officially fixed yet, but it is expected on April 1, 2015.
The effective date has been fixed upon as April 1,2015,as expected.(updated on February 3,2015)