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Questions On New Opposition Proceedings

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#7) New opposition proceedings are available at the JPO as of April 1, 2015.
In April 2015, the JPO introduced opposition proceedings which are most like USPTO post-grant review. The opposition petition must be filed with the JPO within six months of patent issuance. Like post-grant review, anyone can file an opposition and may ground arguments based on evidence that would be relevant during substantive examination. These proceedings were similarly designed to quickly review and identify defects in a patent shortly after issuance.
For quick review, opposition proceedings at the JPO are based only on written documents and there are no oral hearings. The JPO Board will review the opposition petition and decide whether there are reasons …show more content…

From the patent owner’s perspective, opposition proceedings enhance confidence in the issued patent; the patent is less likely to be attacked after six months from issuance since the cost to request trial for invalidation is higher and only interested parties may file.
At this time, there is little data available about the new opposition proceedings in order to evaluate the win-win theory. The most recent JPO Statistics Update, published February 16, 2016; provides data through December 2015. Thus far in FY 2015, there were 389 oppositions filed and 133 requests for trials for invalidation. During that same period in FY 2014, there were 146 requests for trials for invalidation.

Since the number of requests for trials for invalidation are similar (less than 10% difference) before and after the new opposition proceedings came into effect; it is still unclear whether the new opposition proceedings will reduce the number of requests for trials for invalidation. Practitioners should wait and assess the number of successful oppositions and determine the invalidation rates during the new proceedings. The invalidation rates may encourage/discourage filing opposition petitions as compared to requests for trials for invalidation.

#8) There is no standard of proof for patent invalidation in JPO proceedings or in Japanese court litigation.
During JPO invalidation proceedings, there is no statutory standard of proof.

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