ホーム > English > Q111. Amendments Challenged by Third Parties

Q111. Amendments Challenged by Third Parties

Q111. Amendments Challenged by Third Parties
 Can amendments be challenged by third parties? How and when?

A111. (1) Before publication
 A patent application in Japan is automatically laid open to public inspection as a “KOKAI” publication after the lapse of 18 months from the filing date or, in the case of a patent application with a convention priority, from the priority date. Before the publication, no one can have access to the official file. Therefore, third parties cannot challenge any amendments filed in relation to the application during this period.
(2) After publication and before grant of patent.
After a patent application is published and a publication thereof is issued, anyone can inspect the file wrapper and furnish the Examiner with necessary information in writing. The information which a third party can submit includes not only prior art serving to negate the novelty or inventive step of the invention, but also information on an amendment of the specification or drawings including new matter introduced after the filing of the application. The applicant is informed of the fact that information has been submitted. Whether or not the submitted information has been considered in the examination will be reported to the party who submitted the information, if the party informs the JPO to that effect. Since the party who submitted the information is not engaged with the examination, he or she is unable to communicate with the Examiner by means of, e.g., an interview.
 Under the Patent Law, the applicant can amend the specification and/or drawings at any time until a first Office Action is issued from the JPO.
(3) After grant of patent
 After a patent has granted, anyone can initiate a procedure of Invalidation Trial. Through the procedure of the Invalidation Trial, the plaintiff of the Trial can challenge the amendments made by the applicant during prosecution.