Trial for invalidation of patent

Outline of patent invalidation trial

A trial for invalidation of a patent is a system for requesting invalidation of a patent right for which there is a reason for invalidation (Patent Law Article 123).

Defendants filed in patent infringement proceedings often request a trial for invalidation in order to invalidate the patent right.


Requirements for request for invalidation trial

Claimant eligibility

Any person can request a trial for invalidation (Patent Law, Article 123, Paragraph 2).


Subject to billing

A trial for invalidation can be requested for each claim within the scope of claims (Patent Law, Article 123, Paragraph 1).


Reason for invalidation

The reasons for invalidation are as follows.


・ Violation of novelty (Patent Law, Article 29, Paragraph 1)

・ Inventive step violation (Patent Law Article 29, Paragraph 2)

・ Violation of extended prior application (Patent Law Article 29-2)


・ Violation of prior application (Patent Law Article 39)


・ Violation of denial application (patent application other than the person who has the right to obtain a patent or its successor)


The violation of unity of invention (Article 37 of the Patent Law) is a reason for refusal, but not a reason for invalidation.

It's just a formal defect.


In most cases, a trial for invalidation is requested due to an inventive step violation (Article 29, Paragraph 2 of the Patent Act).



Billing period

You can request a trial for invalidation not only during the term of the patent right but also after the patent right is extinguished (Patent Law, Article 123, Paragraph 3).

This is to counteract damages that may be claimed by the patentee after the patent is extinguished.


Billing procedure

Submit the request for appeal to the Commissioner of the Patent Office (Patent Law, Article 131, Paragraph 1) and pay the prescribed fee (Patent Law, Article 195, Paragraph 2).

In the appeal request, the facts that are the basis for invalidating the patent are specifically specified, and the reason for the request, including the relationship with the evidence, is stated for each fact that requires proof (Patent Law Article 131, Article 131). Item 2).


Effect of finalization of invalidation trial decision

t is considered that the patent right did not exist from the beginning (Patent Law Article 125 text).