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Home > Obtaining IP Rights > Appeals/Trials > Opposition to Grant of patent > Status of Opposition to Grant of Patent and Points to Note about Procedures

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Status of Opposition to Grant of Patent and Points to Note about Procedures

October 2017
Trial and Appeal Department of the JPO

The total number of oppositions to grant of patent has reached 2,512 since the system of opposition to grant of patent entered into force on April 2015 and filing of oppositions to grant of patent significantly began in October 2015, out of which 1,629 oppositions (approximately 64.8%) have ended in final disposition (as of the end of September 2017).

* Oppositions to grant of patent are counted by patent right. Therefore, multiple oppositions filed to a single patent right are counted as one opposition.

Many deficiencies in formality are still found in written oppositions, etc. Please note the following 2. to 4. in filing an opposition. Please also write your telephone number in a written opposition, etc. so that the JPO can make contact or give consultation on deficiencies in formality of written oppositions, etc.

1. Status of Oppositions to Grant of Patent (where the opposition date falls before the end of September 2017)

(1) Status of processing oppositions to grant of patent by filing month/year (as of the end of September 2017)

In the system of opposition to grant of patent, a decision of maintenance tends to be made earlier than other cases opposed in the same period because a panel does not need to issue a “Notice of Reasons for Revocation” when the panel finds no reason for revocation and decides to maintain. Then, a “Decision of Maintenance” shall be made when the panel agrees with the patentee's opinions or finds no reason for revocation after granting the patentee’s request for correction to the case where a notice of reasons for revocation has been issued. However, a certain period is required to issue a final “Decision of Revocation” because the panel shall reissue a “Notice of Reasons for Revocation” (Advance Notice of Decision) before the final decision (see [Graph 1]; also see the following link for a flow of main procedures in the system of opposition to grant of patent).

Operation of System of Opposition to Grant of Patent (PDF: 48KB)

Graph 1: Number of Decisions for Opposition by Requested Month (as of September 30th 2017)

(2) Status of processing oppositions to grant of patent by year of filings (ratio and the number of filings) (As of the end of September 2017)

Approximately 24.8% of opposition cases filed until September 2017 have reached final disposition (see [Graph 2]). Approximately 99.2% of opposition cases filed in 2015 and approximately 85.3% of opposition cases filed in 2016 have reached final disposition (see [Graph 2]).

Please note that the ratio between the number of decisions to maintain and decisions to revoke in a given year will not be determined until all the cases filed in the year are disposed.

Graph 2: Number of Decisions for Opposition by Year (As of September 30th 2017)

(3) Status of processing oppositions to grant of patent by IPC (International Patent Classification) section (as of the end of September 2017)

A large number of oppositions have been filed to grant of patent under IPC section C (Chemistry, etc.), followed by those under IPC section A (Human Necessities), and those under IPC section B (Performing Operations, etc.) (See [Graph 3]).

Please see here for the explanation of each IPC section (external link).

Graph 3: Number of Decisions for Opposition by IPC Section (as of the end of September 2017)

2. Points to Note: Procedures for Submitting a “Written Opposition”

It should be noted that the following deficiencies in formality have often been found in written oppositions submitted to the JPO.

  • Correspondence between a statutory basis and an opposed claim is not consistent in a “Written Opposition” (e.g. inconsistency in a claim described in "(1) Summary of reasons for opposition", "(3) Grounds for opposition" and "(4) Concrete reasons" in "4. Reasons for Opposition").
  • There is no specific description under "4. Grounds for Opposition" (e.g. "same as Claim 1").
  • There is no description of finding of cited invention, identical and different features between opposed and cited invention.
  • Attached evidence is not consistent with the description under "6. Means of Proof" column.
  • There is no page numbers assigned to a “Written Opposition.”
  • While seal using a vermillion inkpad is required in a duplicate as well as an original, a duplicate lacks seal or contains copied sealing.
  • While the number of duplicates that need to be submitted is the number of patentees plus one, the number of duplicates is insufficient.
  • A document providing proof of power of attorney is not attached in notification of appointment of power of attorney.

See the following link for a summary of information on the opposition to grant of patent.

Opposition to Grant of patent

3. Points to Note: Procedures for Submitting a Document as Evidence

When submitting a document is as evidence, you need to submit a “Written Description of Evidence” as well in filing an opposition to grant of patent.

Also, note the following deficiencies in formality that have been found in evidences (the same shall apply to the case where a piece of evidence (e.g. Evidence B No. 1) is attached to a written opinion by a patentee for objection, etc.).

  • Relevant part is not specifically expressed by an underline or surrounding frame, etc.
  • Translation of a foreign language document is not attached.
  • Each piece of evidence is not provided with an evidence number (e.g. Evidence A No. 1).
  • Characters in a document are unclear and illegible.
  • It is not possible to specify publication date of a book, a magazine, etc. (there is neither cover nor colophon).
  • There is no material to confirm the date of distribution or issuance of a pamphlet, etc.
  • It is not possible to specify whether information on the Internet, etc. submitted as evidence was made public prior to a filing date of the opposed patent application (please give priority to evidence such as a book, etc. by which it is possible to specify a publication date, if any).
  • A printout of a homepage does not contain a URL and a print date.
  • Certified experiment results, etc. do not contain a preparation date, a preparer, etc.
  • While a piece of evidence should be specified by an “International Publication Number” and an “International Application Published under the PCT” should be attached thereto, a "Published Japanese Translations of International Application Published under the PCT" is attached as evidence.

4. Points to Note: Procedures for Filing a “Request for Correction”

Please note the following deficiencies in formality that have been found in requests for correction.

  • The matter of correction described in a “Request for Correction” is not matched with the corrected description, etc. attached to the “Request for Correction” (the corrected description, etc. contain correction which is not described in the matter of correction, errors, etc.).
  • The corrected points in the corrected description, the corrected scope of claims, etc. are not underlined.
  • Even though a prior “Request for Correction” shall be deemed to be withdrawn upon filing the second or later “Request for Correction” (Patent Act Article 120-5 (7)) and the description, etc. on which the correction is based shall be the description, etc. used for registration of the establishment of the patent right, etc., the second or later “Request for Correction” is made based on the description, etc. submitted at the prior “Request for Correction.”
  • A provision or form concerning a “Request for Correction” in a trial for invalidation is used in filing a “Request for Correction” (different provisions and forms are applied to file a request for correction in a trial for invalidation and an opposition to grant of patent).
  • The description of the number of claims is provided under the old form of "3. The number of claims" without being updated to the new form of "3. The number of claims concerning the request for correction."
  • The number of corrected claims under "6. Purport of a request for correction" is not consistent with that under "3. The number of claims concerning a request for correction."
  • Where a correction is made on a claim-by-claim basis, a claim to be corrected is not specified with the claim number assigned to a corrected claim in "6. Purport of a request for correction."
  • Even though a correction made on a claim-by-claim basis includes a correction of a group of claims, "explanation of a group of claims" is not provided.
  • Even though, when a correction made on a claim-by-claim basis, the description is also corrected, explanation of claim(s) associated therewith is not provided.
  • Even though a corrected scope of claims is amended in response to a “Notice of Reasons for Rejecting a Request for Correction”, no amendment is made for consistency in "3. The number of claims concerning a request for correction" and "6. Purport of a request for correction" in a “Request for Correction.”

[Last updated 30 October 2017]

Contacts

Trial and Appeal Policy Planning Office,
Trial and Appeal Division, Trial and Appeal Department, Japan Patent Office

TEL: +81-3-3581-1101 ext. 5852

FAX: +81-3-3584-1987