An opposition proceeding is an administrative process available under the patent and trademark law of many jurisdictions which allows third parties to formally challenge the validity of a pending patent application ("pre-grant opposition"), of a granted patent ("post-grant opposition"), or of a trademark.
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Main article: Opposition procedure before the European Patent Office |
In the context of the proceedings at the European Patent Office (EPO), third parties may challenge the validity of a granted European patent by filing a post-grant opposition under the European Patent Convention (EPC).[1] The term for filing an opposition with the EPO is nine months from the publication of the mention of the grant of the European patent in the European Patent Bulletin.[1]
Opposition proceedings may be filed against French patents granted since April 1, 2020.[2][3] The term for filing an opposition with the National Institute of Industrial Property (INPI) is nine months from the grant of the French patent.[2] An opposition may be filed by a strawman.[3]
Under United States patent law, an opposition proceeding is called a reexamination. Post-grant review provisions of the new patent law may affect a potential patent infringement defendant's strategies in filing a declaratory judgment action. Subsequent to the Leahy–Smith America Invents Act (2011), any third party can challenge the validity of an issued patent using either post-grant review under 35 U.S.C. § 321 or inter partes review under 35 U.S.C. § 311. Both proceedings became effective September 16, 2012.[4]
In the case of trademarks, third parties may use opposition proceedings to "oppose" the acceptance of a trademark application after it has been accepted and published for opposition purposes. If an opposition is defeated the trademark will proceed to registration. Some jurisdictions operate a "post-grant" opposition system, whereby opposition is not possible until after registration (e.g. Japan).[citation needed]
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Main article: Opposition proceeding (Canada) |
In Canada, any third party can file a statement of opposition to stop a trademark from being registered for at least one of the reasons set out in the Trademarks Act and Trademarks Regulations.[5] A statement of opposition can only be filed during the two-month period after a trademark application is approved by the Canadian Intellectual Property Office (CIPO) and advertised in the Trademarks Journal.[6] The trademark applicant and opponent then submit pleadings, evidence and arguments to the Trademarks Opposition Board (an administrative body within CIPO), which hears and makes decisions in opposition proceedings.[5][6][7] The Board can either refuse the trademark application (in whole or in part) or reject the opposition.[6] This decision can be appealed to the Federal Court of Canada by both the trademark applicant and opponent.[5][6]