An opposition proceeding is an administrative process available under the

patent A patent is a type of intellectual property that gives its owner the legal right to exclude others from making, using, or selling an invention for a limited period of time in exchange for publishing an enabling disclosure of the invention."A p ...

and

trademark A trademark (also written trade mark or trade-mark) is a type of intellectual property consisting of a recognizable sign, design, or expression that identifies products or services from a particular source and distinguishes them from others ...

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.

Patents

European Patent Office

In the context of the proceedings at the

European Patent Office The European Patent Office (EPO) is one of the two organs of the European Patent Organisation (EPOrg), the other being the Administrative Council. The EPO acts as executive body for the organisation

(EPO), third parties may challenge the validity of a granted European patent by filing a post-grant opposition under the

European Patent Convention The European Patent Convention (EPC), also known as the Convention on the Grant of European Patents of 5 October 1973, is a multilateral treaty instituting the European Patent Organisation and providing an autonomous legal system according to w ...

(EPC). 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 The European Patent Bulletin is a weekly trilingual publication of the European Patent Office (EPO), generally issued every Wednesday. It contains "entries made in the Register of European Patents, as well as other particulars, the publication of w ...

France

Opposition proceedings may be filed against French patents granted since April 1, 2020. The term for filing an opposition with the National Institute of Industrial Property (INPI) is nine months from the grant of the French patent. An opposition may be filed by a strawman.

United States

Under

United States patent law Under United States law, a patent is a right granted to the inventor of a (1) process, machine, article of manufacture, or composition of matter, (2) that is new, useful, and non-obvious. A patent is the right to exclude others, for a limited ...

, an opposition proceeding is called a

reexamination In United States patent law, a reexamination is a process whereby anyone—third party or inventor—can have a U.S. patent reexamined by a patent examiner to verify that the subject matter it claims is patentable. To have a patent reexamined, ...

. Post-grant review provisions of the new patent law may affect a potential

patent infringement Patent infringement is the commission of a prohibited act with respect to a patented invention without permission from the patent holder. Permission may typically be granted in the form of a license. The definition of patent infringement may v ...

defendant's strategies in filing a

declaratory judgment A declaratory judgment, also called a declaration, is the legal determination of a court that resolves legal uncertainty for the litigants. It is a form of legally binding preventive by which a party involved in an actual or possible legal ma ...

action. Subsequent to the

Leahy–Smith America Invents Act The Leahy–Smith America Invents Act (AIA) is a United States federal statute that was passed by Congress and was signed into law by President Barack Obama on September 16, 2011. The law represents the most significant legislative change to the ...

(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 An inter partes review (IPR) is a procedure for challenging the validity of a United States patent before the United States Patent and Trademark Office. History The inter partes review procedure was enacted on September 16, 2012 as part of the Ame ...

under 35 U.S.C. § 311. Both proceedings became effective September 16, 2012.

Trademarks

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).

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''. 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 A trademark (also written trade mark or trade-mark) is a type of intellectual property consisting of a recognizable sign, design, or expression that identifies products or services from a particular source and distinguishes them from others ...

''. The trademark applicant and opponent then submit pleadings, evidence and arguments to the

Trademarks Opposition Board A trademark (also written trade mark or trade-mark) is a type of intellectual property consisting of a recognizable sign, design, or expression that identifies products or services from a particular source and distinguishes them from others ...

(an administrative body within CIPO), which hears and makes decisions in opposition proceedings. The Board can either refuse the trademark application (in whole or in part) or reject the opposition. This decision can be appealed to the

Federal Court of Canada The Federal Court of Canada, which succeeded the Exchequer Court of Canada in 1971, was a national court of Canada that had limited jurisdiction to hear certain types of disputes arising under the federal government's legislative jurisdiction. ...

by both the trademark applicant and opponent.

References

External links

Patent Opposition Database
an online resource launched by

Doctors without Borders Doctor or The Doctor may refer to: Personal titles * Doctor (title), the holder of an accredited academic degree * A medical practitioner, including: ** Physician ** Surgeon ** Dentist ** Veterinary physician ** Optometrist *Other roles ** ...

as "a tool which can be used to explore how to challenge unfair patents and their negative impact on access to medicines." ({{cite web , url=http://patentoppositions.org/about , title=About , work=Patent Opposition Database , publisher=MSF Access Campaign , access-date=October 13, 2012 , url-status=dead , archive-url=https://web.archive.org/web/20121007000330/http://patentoppositions.org/about , archive-date=October 7, 2012 ) Patent law Trademark law