Opposition procedures before the European Patent Office (EPO) and the Japan Patent Office (JPO) have enough differences to put even the most experienced professional in difficulty. With this article (available in English and Japanese), Kazuya Sekiguchi and Dr. Christian Köster point out the main differences between the two systems in an effort to help other patent attorneys better navigate these shallow waters.
Opposition procedures before the European Patent Office (EPO) against European Patents granted under the European Patent Convention (EPC) have recently undergone changes which are in effect since 1 July 2016 (Official Journal EPO, 2016, A42). With these changes the EPO has introduced a streamlined opposition procedure that is intended to simplify opposition proceedings and deliver decisions faster. Also, parties shall be given more time to react to summons and prepare for oral proceedings.
In Japan, former opposition system was abolished in 2003, in order to unify the patent validity dispute-settlement system to the invalidation trial system in front of a board of appeal of the Japan Patent Office (JPO). However, the number of invalidation trial did not increased, because the lawsuit-like proceedings of invalidation trial impose a heavy burden on the parties. In addition, there were needs for the proprietor to set a stable right as early as possible (text for the revision of Japanese Patent Law 2014, published by the JPO). Therefore, an opposition system in which anyone can argue the patentability in a simpler and faster way was (re-)introduced in Japan, on 1 April, 2015.
Kazuya Sekiguchi is a Japanese and European patent attorney with more than 13 years of experience, working at the Dennemeyer & Associates' Munich office. He drafts patent/utility model applications, prepares responses to office actions, handles oppositions, and conducts appeals in front of the Japan Patent Office (JPO) and the European Patent Office (EPO). Besides, he handles Japanese Trademark matters, such as filing applications, oppositions, and cancellation trials in front of the JPO.
The authors contribute to this blog in their personal capacity. The views expressed are their own and do not necessarily represent the views of Dennemeyer IP Solutions, Dennemeyer & Associates, or Dennemeyer Consulting.