JAPAN Law and Practice Contributed by: Yoshiyuki Inaba, Hiroshi Nemoto, Makoto Okada and Atsushi Sato, TMI Associates
• violation of requirements for patentability, such as novelty, inventive step, double pat- enting, etc; • the addition of new matter; • violation of description requirements; and • violation of a treaty. An interested party may file an invalidation trial at any time after a patent has been granted, even if it has expired, based on the following grounds: • violation of requirements for patentability, such as novelty, inventive step, double pat- enting, etc; • addition of new matter; • violation of description requirements; • violation of a treaty; • the patent having been granted on a patent application filed by a person who is not the inventor and who has not succeeded in the right to obtain a patent for the invention; and • the correction of the description, scope of claim or drawings attached to the application for the patent having been obtained in viola- tion of the provisions under the Patent Act. Utility Models There is only one procedure for revocation/can- cellation of a utility model registration: an invali- dation trial before the JPO. An interested party may file an invalidation trial at any time after a utility model has been granted, even after the utility model has expired, based on the following grounds: • violation of requirements for registration as a utility model, such as novelty, inventive step, double patenting, etc; • the addition of new matter; • violation of description requirements; • violation of a treaty;
• the utility model having been granted on a utility model application filed by a person who is not the inventor and who has not succeed- ed in the right to obtain a utility model for the invention; and • the correction of the description, scope of claims or drawings attached to the applica- tion for the utility model having been obtained in violation of the provisions under the Utility Model Act. 4.2 Partial Revocation/Cancellation In Japan, an opposition or an invalidation trial for a patent or a utility model registration may be filed for each individual claim. 4.3 Amendments in Revocation/ Cancellation Proceedings Amendments (“corrections” in opposition or invalidation proceedings under the Patent Act or the Utility Model Act) may be filed in opposi- tion or invalidation proceedings. In opposition proceedings, a patent owner may file amendments in the period for responding to a notice of cancellation issued by the board of trial examiners who examined the request for opposition. In invalidation trial proceedings, the owner of a patent or utility model right may file amendments in the period for filing an answer in response to a request for an invalidation trial. The owner may also file amendments in the period for respond- ing to a notice of reasons for invalidation or an advance notice of appeal decision, both issued by the board of trial examiners who examined the request for invalidation trial.
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