Briefly, what is the forum and the procedure for challenging each of these intellectual property rights and what are the grounds for a finding of invalidity of each of these intellectual property rights?

Intellectual Property (2nd edition)

Russia Small Flag Russia

Patents
A patent may be invalidated, in whole or in part, on the following grounds:

  • the patent does not comply with the conditions of patentability (e.g. for an invention claiming that it is not novel, not inventive or not industrially applicable; for a utility model claiming that it is not novel or not industrially applicable; for a design claiming that it is not novel or not original).
  • the initial invention or utility model application does not meet the requirement of sufficient disclosure that is required for implementation of the invention or utility model by a skilled person;
  • The claims in the patent cited in Rospatent’s final decision contain a feature that was not in the invention or utility model application on the filing date;
  • The patent adds or removes essential features of the design (as stipulated in the filed application);
  • The patent was granted in breach of the established procedure, where several applications with the same priority date were filed for an identical design.
  • The patent was granted with an incorrect indication of the author or owner.

Invalidation actions must be filed with the Chamber of Patent Disputes of Rospatent, except for invalidation actions that are based on incorrect indication of the author or owner. Such cancellation actions must be filed with the IP Court. Rospatent’s decision on an invalidation action may be appealed to the IP Court.

Trademarks
A trademark may be invalidated/cancelled, in whole or in part, based on the following grounds:

  • absolute grounds (misleading, lack of distinctiveness);
  • relative grounds (e.g. prior rights);
  • due to non-use of the trademark;
  • recognition of the trademark registration as an abuse of rights or an act of unfair competition.

Generally the invalidation/cancellation actions must be filed with the Chamber of Patent Disputes of Rospatent. However, cancellation action due to non-use must be filed with the IP Court. Prior to filing an invalidation claim due to non-use, a claimant must send a letter to the trademark owner asking it either to withdraw its trademark rights through the Rospatent or to assign the mark in question to the claimant. Applicable statutes provide the trademark owner with two months to perform one of the options. If it fails to do so, the claimant has 30 days (following the two-month period) to file the cancellation claim due to non-use. In such case the legal protection is terminated from the date that the court’s decision enters into force.

China Small Flag China

Trademarks: An opposition shall be filed at the CTMO, and it usually takes around 12-18 months from filing to completion of the opposition. An invalidation request shall be filed at TRAB, and it usually takes around 12-18 months from filing to completion of the invalidation. A non-use cancellation shall be filed at the CTMO, and it usually takes around 9-12 months from filing to completion of the opposition. Grounds for non-use cancellation are the registered mark has been ceased in use in the latest three or more years.

Patents: Invalidation requests relating to patents must be filed to the re-examination board of SIPO. The grounds for invalidation are as follows

  • Invention and utility models patents: being unpatentable subject matter, lacking novelty and/or inventiveness over the prior art, double patenting, amendments extending beyond the original disclosure, non-compliance with requirements of confidentiality examination, and/or non-compliance with formality requirements, e.g. insufficient disclosure and clarity.
  • Design patents: being the same or substantially similar as a single reference or bearing no obvious differences to a single reference or multiple references in combination (i.e. the prior design corpus).

France Small Flag France

The existence of copyright or the validity of a French design, patent or trademark can be challenged either by an independent action or through a counterclaim before the competent jurisdiction (see question 19).

i. Patent

Pursuant to article L.613-25 of IPC, a patent can be declared invalid on the ground that:

  • the invention:
    • is excluded from patentable subject matter (see Article L.611-11 and L.611-16 of the IPC);
    • is not novel;
    • does not involve an inventive step;
    • is not capable of industrial application;
  • the patent does not disclose the invention in a manner sufficiently clear and complete;
  • the subject-matter of the patent extends beyond the content of the application.

ii. Trademark
A trademark can be invalidated on the grounds that the registered sign in relation with the products and or services designated:

  • is not capable of graphical representation (please note however that the EU directive and regulation have abandoned this requirement) or lacks distinctive character;
  • is excluded by the Paris Convention, contrary to public policy or moral principles or deceptive;
  • infringes prior rights listed in the article L.711-4 of the IPC.

iii. Designs
Regarding design, the claimant will have to prove that the design at stake is not novel, lacks individual character, infringes public policy or moral principles or that its appearance is dictated by the technical function performed or to allow its mechanical association.

iv. Copyright
As regards copyright, the claimant will have to demonstrate that the work lacks originality usually by establishing that the work’s main features are common in the concerned field by producing documents showing prior similar works.

Switzerland Small Flag Switzerland

The forum for challenging the registration of patents, trademarks, plant variety rights and non-agricultural PGI/POA, as well as for requesting the cancellation of a trademark for non-use, is the seat of the IPI in Bern. The forum for challenging the registration of agricultural PGI/POA is also Bern.

In civil proceedings, the forum depends on whether the case at hand is a national or international dispute. In Swiss infringement cases, the claimant can potentially file its claims in the following venues: its own domicile or registered office, the defendant's domicile or registered office, and the place where the infringing act occurred or had its effects.

The grounds for a finding of invalidity include prior rights, non-fulfilment of the legal registration requirements (e.g. for trademarks, relative or absolute grounds or refusal), non-use, expiry.

Poland Small Flag Poland

Due to their nature, only registered rights may be officially invalidated. The Patent Office considers motions for invalidation of all registered IP rights, with the exception of plant varieties.

The details of invalidation proceedings before the Patent Office vary depending on the procedure used and the particular right concerned. In most cases, a 'contentious proceedings’ procedure is used, where the parties appear before an adjudicating panel comprised of three or five experts who have technical or legal knowledge, and where the procedure resembles that before a regular court. The outcome of these proceedings is a decision of the panel, which either upholds or invalidates the right in question. The decision may be appealed.

In most cases the grounds for a finding of invalidity of a registered right mainly concern the circumstances that the statutory requirements to grant the right had not been met, or that the right had been granted in violation of a third party right.

With respect to patents, the right may also be invalidated if the invention is not disclosed in sufficient detail and clarity for an expert to realise the invention, or the patent is granted for an invention that was not covered by the patent application (added matter).

The decision of the Director of the Central Research Centre for Cultivar Testing granting plant variety protection may be invalidated by the Minister in charge of agriculture, who is the Director's superior administrative body. Such invalidation may take place especially when the decision had been issued in "gross violation of the law".

There is no way to invalidate the IP rights which are not registered (such as copyrights or know-how), before any government body. It is only possible to file a motion to a civil court to establish whether the claimant has a specific right, if the claimant has legal interest in this fact. If, however, the rights of the claimant had already been infringed by a third party, an "ordinary" infringement suit should be filed instead, which would have the same effect.

Italy Small Flag Italy

Under Article 120 IPC, the IP related proceedings shall be brought before the court where (i) the defendant has its residence or domicile; if not applicable, where (ii) the plaintiff has its residence or domicile; or, if not applicable, (iii) before the Court of Rome. The domicile could be determined considering the domicile indicated in the IP rights registration form. In the case of claim of infringement, the proceedings can also be brought before the court where the infringement occurred.

As for the procedure, see answer to question n.19.

The invalidity of the IP rights may be claimed on the basis of certain grounds:

  • The invalidity of the patent can be declared when the invention (i) does not fall within patentable subject matter, (ii) is not new; (iii) does not imply an inventive step; (iv) is not capable of industrial application.
  • As for design, the claimant should demonstrate that the design is not novel and that it does not have individual character, that is contrary to public order or morality or when its features are dictated by the technical function performed.
  • With regard to trademarks, the claimant, in order to obtain a declaration of invalidity of the sign, should demonstrate that the trademark (i) lacks distinctive character, (ii) is identical or similar to previous registered or unregistered trademarks, (iii) cannot be graphically represented, (iv) is contrary to law, public order and morality, (v) infringe other IP rights.
  • With reference to copyright, considering that a copyrightable work should be the expression of the author's creativity and the result of its intellectual creation, the claimant may claim the invalidity of the copyright by proving that the work lacks originality, that is to say it is similar to prior works.

Cyprus Small Flag Cyprus

In relation to patents, any person may apply to the Court for the invalidation of a patent. An application for invalidation may be based upon any of the following grounds only:

  1. The subject matter of patent was not novel or was not patentable for another reason.
  2. There is insufficient disclosure of the invention in a manner sufficiently clear and complete so as to allow it to be carried out by a person skilled in the art).
  3. The person to whom the patent was granted was not entitled to it.

After the registration of a trade mark, any person who is affected may apply to the Registrar or the court for the removal of a trade mark from the Register or for the revocation of the registration of a trademark on the ground of breach or non-compliance with any conditions imposed by the Registrar regarding its registration.

A registered trademark may be removed from the Registry of trade marks on any of the following grounds:

  1. The proprietor of the trade mark has not used the mark for five consecutive years in respect of the goods or services for which it is registered and there are no proper reasons for non-use.
  2. As a consequence of the owner’s behaviour the trade mark has become in the trade the common name for the goods or services for which it is registered.
  3. The trade mark has become deceptive as to the nature, quality or geographical origin of the goods or services in consequence of the use made of it by the owner or with his or her consent in relation to the goods or services for which it is registered.

A registered design can be removed in the basis that it is in conflict with a prior design which was registered in Cyprus or a Member State the European Union before the registration of this design.

Israel Small Flag Israel

Opposition and cancellation are brought before the Registrar of Patents, Trademarks and designs. As mentioned above, the same arguments can also be raised before the court.

Patents:
The grounds for opposition include: (1) any reason, because of which the Registrar could have refused to accept the patent application (including novelty, inventiveness, sufficiency of disclosure, utility, validity and so forth); (2) the invention is not patentable because it is not novel due to exploitation or exhibition of the invention in a manner that enables a skilled person to make it according to the particulars thus made known; (3) the opponent, and not the applicant, is the owner of the invention.

Designs:
The grounds for cancellation include: 1) the design was not eligible for registration (due to lack of novelty and/or originality under the previous ordinance, or lack of novelty and individual character, under the new law. 2) the design application was not filed by the owner of the design; 3) two applications were filed for the same (or substantially similar) design.

Trademarks:
As discussed above in answer 28.

Chile Small Flag Chile

  • Trademarks:
    The challenge of a trademark must be requested before the Patent and Trademark Office. The grounds for requesting the nullity of a trademark are the same as ones to oppose its registration (similarity to a trademark already registered, the trademark is generic or descriptive, bad faith, among others).
  • Patents of invention/ utility models / industrial drawings and designs / layout designs (topographies) of integrated circuitslayout designs (topographies) of integrated circuits:
    The challenge of patents of invention/ utility models / industrial drawings and designs / layout designs (topographies) of integrated circuits must be requested to Chilean Patent Office. The grounds for requesting nullity are the following:

    a) when the person who obtained the patent is not the inventor or its transferee.

    b) when the concession has been based on erroneous or manifestly deficient expert reports.

    c) when the registration has been granted in contravention of the patentability regulations and their requirements, in accordance with the provisions of this law.

  • Copyright:
    The challenge of a copyright registration must be requested before a civil court. The cause for requesting the nullity of the registration is that the owner or author of the work is not (or not all) who was assigned before the administrative authority.

Greece Small Flag Greece

  • Patents, utility models and industrial designs can be challenged before the civil courts via a nullity action or as a defense in infringement proceedings.

    Patent nullity grounds: (a) the invention does not meet the requirements of novelty, industrial applicability and/or involving an inventive step, (b) the disclosure contained in the patent is insufficient for the patent to be carried out by the person skilled in the art, (c) the subject matter of the patent is excluded from patentability, or it goes beyond the content of protection as requested in the application, and (d) the patentee is not the true inventor or inventor's successor.

    Utility model nullity grounds: (a) the utility model is not new or industrially applicable or a three-dimensional object with definite shape and form, and/or capable of giving a solution to a technical problem, and (b) the right holder is not the true inventor or inventor's successor.
    Semiconductor topographies nullity grounds: the right does not meet the requirements of not being common in the semiconductors industry.

    Registered design nullity grounds: (a) the design or model is not new or of individual character, (b) the form of the product or its interconnection with other products is not appropriate for protection because they are dictated solely by a technical function or because they are linking elements, (c) exploitation or publication is contrary to public order or established morals and (d) the holder of the registered design is not the true designer or designer's successor.

  • Trademarks: The forum for challenging trademarks is the Greek TM Office (Administrative Trademark Committee) and, on further recourse/appeal, the administrative courts.

    Registered marks may be challenged in whole or in part on either absolute or relative grounds.

    The absolute grounds include that a mark:

    • is devoid of distinctive character;
    • consists exclusively of signs or indications which may serve in trade to designate the kind, quality, attributes, quantity, destination, value, geographical origin or the time of the goods production or of the service rendering or other characteristics of the goods or service, designates the kind, quality, intended purpose, value, or geographical origin of goods or services, or other characteristics of goods or services;
    • has become customary in the current language or established practice of the trade;
    • assumes the shape of the goods, either as a result of the nature of the goods or which is necessary to obtain a technical result or gives substantial value to the goods;
    • is contrary to public policy or morality;
    • may deceive the public for example as to the nature, quality or geographical origin of the goods or service;
    • consists of names of countries, flags, emblems and similar symbols, including signs of great symbolic value and special interest – particularly religious symbols, representations and words.
    • has been filed in bad faith;

    Relative grounds include that a mark:

    • is identical or confusingly similar to an earlier mark;
    • is identical or similar to an earlier mark which has a reputation and the use of the later mark, without due cause, would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark;
    • infringes an unregistered trademark or any other distinctive sign or feature used in trading, which gives the proprietor the right to prohibit the use of a later trademark;
    • infringes a prior personality right of a third party or a prior right of intellectual or industrial property other than those regulated by Trademark Law;
    • is likely to cause confusion with a trademark which has been registered and used abroad at the time of the application filing, if it was made in bad faith by the applicant;

    Trademarks can also be revoked for non-use for a continuous period of 5 years;

    Unregistered designs and marks may be challenged before the civil courts, as a rule in the context of a defense in infringement proceedings. The main grounds of invalidity of such rights are lack of any distinctive character, descriptiveness or deceptiveness as to the nature, quality or geographical origin of the goods or services, and non-use in trade.

United Kingdom Small Flag United Kingdom

Forum and outline of process
Third party observations ("TPOs") are a low cost process for objecting to the grant of a patent or trade mark (subject to time limits) before the right is granted. TPOs can be made to the UKIPO, EUIPO or EPO, or WIPO. The third party need not identify itself; it is common for a party to instruct a patent attorney to file observations on its behalf. The intellectual property office will consider the TPO, but is not obliged to accept the observations made. While TPOs are used, they tend to be less popular than opposition or revocation proceedings because, once they have been filed the third party has no further involvement in the process.

Oppositions are inter partes procedures available in relation to trade marks and European Patents. Oppositions allow the third parties to file detailed opposition submissions and evidence and to attend and participate in oral hearings. As with TPOs, a party is not required to identify itself and may bring opposition proceedings in the name of a patent attorney. Oppositions can take years to be resolved. However, they are usually considerably less expensive than UK litigation. For trade marks, oppositions occur prior to the grant of the trade mark (they must be filed within several months of publication of the application); while for European Patents oppositions occur post-grant (they must usually be filed within 9 months of the patent being granted). There is no opposition procedure for national patents or design rights.

After an IP right has been granted, a third party can seek to challenge and revoke that IP right at any time through the civil courts (see questions 18 and 19) or the UKIPO or EUIPO (for Community Designs and EU Trade Marks).

Basis of invalidity finding
The basis of an attack on validity is typically that the requirements for registration (see question 1) were not met. In the case of trade mark registrations, a third party may also seek revocation on the basis that the trade mark owner has not used the trade mark for a period of 5 years.

The validity of a patent may be attacked by showing that:

  • The invention claimed was not novel or was obvious (did not involve an inventive step) at the priority date of the patent. To demonstrate this, the third party will rely on disclosures (through documents, demonstrations, use, etc.) made before the priority date, whether or not these were considered during the examination of the patent, and expert evidence. To establish lack of novelty, the prior publication must either disclose each aspect of the claimed invention clearly and completely enough for it to be performed or the invention must be the inevitable result of following the teaching of the prior publication. To establish lack of inventive step, any differences between the prior publication and the invention must have been obvious to a person skilled in the art. A novelty attack can also be based on a "co-pending" patent application which, by the priority date, had been filed at the same patent office but not yet been published.
  • The patent is not capable of industrial application: i.e. cannot be "made or used in any kind of industry, including agriculture".
  • The patent relates to excluded matter (for instance, it is a computer program or discovery).
  • The patent is "insufficient" as it does not disclose the invention clearly enough and completely enough for it to be performed by a person skilled in the art. This attack usually requires expert evidence and may include other measures, such as experiments demonstrating that the information in the patent cannot be used to produce the invention. Other forms of insufficiency have emerged over time, including that the claimed invention lacks 'plausibility', and that the claim is excessively broad having regard to the patentee's technical contribution to the art.
  • Matter has been added to the specification that goes beyond the matter disclosed in the original application.
  • The claims have been amended post-grant, extending the scope of protection conferred by the patent.
  • The patent was granted to the wrong individual (this challenge must be made within 2 years of grant).

The validity of a trade mark may be attacked in whole or in part (in relation to certain goods and services) and on "absolute grounds" (on the basis that the trade mark itself is not the type of trade mark that is capable of registration), "relative grounds" (that the trade mark is identical or similar to an existing mark, in respect of the same or similar goods and services) or for non-use for a period of 5 years.

  • The absolute grounds include that a mark: (i) does not distinguish the goods or services of one undertaking from those of other, (ii) is devoid of distinctive character, (iii) designates the kind, quality, intended purpose, value, or geographical origin of goods or services, or other characteristics of goods or services, (iv) has become customary in the current language or established practice of the trade; (v) assumes the shape of the goods, either as a result of the nature of the goods or which is necessary to obtain a technical result, (vi) gives substantial value to the goods; (vii) are contrary to public policy or morality, (viii) deceive the public as to the nature, quality or geographical origin of the goods or service, (ix) are prohibited in the UK, or (x) are protected emblems.

    In relation to (ii), (iii) and (iv), the mark will not be declared invalid if, after registration, it has acquired distinctive character in relation to the goods or services for which it is registered.

  • An attack may be based on relative grounds, that the registered mark is identical or similar to an earlier mark and used in relation to identical or similar goods or services. For non-identical trade marks, there must also be shown to be a likelihood of association of the later mark with the earlier mark.
  • An attack may also be raised on the relative grounds that the trade mark is identical or similar to an earlier mark which has a reputation in the UK and the use of the later mark, without due cause, would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark.
  • Trade mark applications can also be revoked for non-use for a continuous period of 5 years.

A design registration may be invalidated and cancelled if:

  • the design is not novel or lacks individual character (i.e. it does not produce a different overall impression to that of an earlier registered design right on the informed user); or
  • the design results from the features of, in particular, the lines, contours, colours, shape, texture or materials of the product or its ornamentation, or must have the registered shape solely in order to perform a technical function or to interconnect with another part.

Pakistan Small Flag Pakistan

Intellectual Property rights can be challenged before the relevant IP offices or in court.

In order to challenge an IP right in the relevant IP office an application is made in the prescribed form together with a statement of the grounds. Whereas, to challenge such a right through the court a petition for invalidation along with affidavit and evidence is filed.

A patent may be declared invalid if it was registered in breach of the same grounds such as the patent was wrongfully obtained, the invention is not patentable, the disclosure is unclear and incomplete, claims are unclear, claims extend beyond the scope as originally filed, the invention is not fairly based, the invention is not novel.

A trade mark may be declared invalid if it was registered in breach of either absolute grounds for refusal of registration or relative grounds for refusal of registration.

Ecuador Small Flag Ecuador

The forum of challenging each of these rights is made before the competent authority –SENADI- through an action of nullity or cancellation of the right or by request of a compulsory license.

The reasons to determine the disability is that it has lost the object for which it was granted, that the owner has stopped using the right for a certain time or that the protection of the same has expired.

In the case of patents and utility models

  • If the object of the patent did not an invention
  • If the patent was granted for a non-patentable invention
  • If the invention does not comply with the patentability requirements;
  • If the patent does not sufficiently disclose the invention;
  • If the claims included in the patent were not entirely supported by the description;
  • If the granted patent contained a broader disclosure than in the initial application and this implied an extension of the protection.
  • If the patent has been granted with any other violation of the law that has substantially induced its concession.
  • Lack of use or exploitation for more than 3 years
  • Lack of annual maintenance payment

Scheme layout:

  • If it does not result from an intellectual effort of its creator
  • The object of the registration did not constitute a layout design;
  • The registration would have been granted for a layout design submitted after 2 years

Industrial design:

  • If the object of the registration did not constitute an industrial design;
  • If the industrial design is not new;
  • The registration would have been granted for a subject excluded from protection as an industrial design;

Trademark:

  • When the acquisition was granted based on false data or documents that were essential for its granting;
  • When the brand does not distinguish a product or service or has been vulgarized with time,
  • When reproducing or imitating a right already granted.
  • Lack of use for more than three years

Plant variety production:

  • If the variety subject to the Breeder's Right did not comply with the requirements of novelty, distinction, stability and homogeneity at the time of granting the certificate;
  • If it had been granted in favor of those who did not have the right to it;
  • If the copy of the access contract has not been presented, when the variety has been obtained or developed from genetic resources or derived products of which Ecuador or any of the member countries of the Andean Community is a country of origin;
  • If the reasons for nullity established in the law for administrative acts were set;
  • If it has been granted with any other violation to the law that has substantially induced its concession or has been obtained based on false or erroneous data, information or documents.
  • Lack of annual maintenance payment.

United States Small Flag United States

Patent validity can be challenged in a federal court where venue is proper as well as the PTAB. A person or corporation wanting to challenge validity can file a complaint seeking declaratory judgment against the patent owner. However, the person/corporation does not have a right to file a declaratory judgement––there must be an imminent threat of litigation. Validity may also be challenged using a request for inter partes review with the PTAB. Trademark validity can also be challenged in federal court by filing a complaint or in the TTAB with a petition for inter partes review of the registration.

Malaysia Small Flag Malaysia

The forum for challenging these intellectual property rights is in Court.

The grounds for a finding of invalidity of each of these intellectual property rights are:

Patents:
(a) The invention did not meet the patentability requirements, it is not an invention within the meaning of the Act or is a non-patentable invention or is against public order or morality or fails to comply with the requirements under the Act

(b) The description or the claim does not comply with the requirements of the Patents Regulations 1986

(c) The drawings which are necessary for the understanding of the claimed invention have not been furnished

(d) The right to the patent does not belong to the person to whom the patent was granted

(e) The information that was provided to the Registrar under s 29(4) was deliberately incomplete or incorrect.

Confidential information:
That the information is not confidential.

Trade marks:
Registration is without sufficient cause, wrongfully remaining or not used.

Geographical Indication:
Cancellation on the ground that the geographical indication is excluded from protection such as the geographical indication not corresponding to the meaning of ‘geographical indication’ as defined in the Act; the geographical indication is contrary to public order or morality; the geographical indication which are not or have ceased to be protected in their country or territory of origin or the geographical indications which have fallen into disuse in their country or territory of origin.

The rectification of the registration of a geographical indication on the following grounds:

(a) That the geographical area specified in the registration does not correspond to the geographical indication;

(b) That the indication of the products for which the geographical indication is used or the indication of the quality, reputation or other characteristic of such products is missing or unsatisfactory.

Copyright:
That the work is not original or there is no copyright.

Industrial Design:
Registration without sufficient cause or wrongfully remaining.

Philippines Small Flag Philippines

The Verified Notice of Opposition against trademark applications as well as Petitions for Cancellations of trademark registrations or Letters Patent are filed before the IPO Bureau of Legal Affairs (“BLA”). The following are the steps/procedure in trademark Oppositions and Cancellation proceedings:

  1. Filing of the Verified Notice of Opposition/Petition or Cancellation
  2. Issuance by the BLA of the Notice to Answer
  3. Filing of a Verified Answer by the Respondent
    - The Verified Answer must be filed within thirty (30) days from receipt of a copy of the Notice to Answer. The filing thereof may be extended for a total of ninety (90) days with thirty (30) days each per extension by filing motions for extension of time.
  4. Referral to Mediation – Upon referral to mediation, the adjudication proceedings therefore shall be suspended until the case is returned by the IPO Mediation Office for resumption of proceedings.

    In case of successful mediation:
    a. Mediator shall refer the parties’ compromise agreement to the head of the originating office; and

    b. Approval of the compromise agreement by the head of the originating office.

    In case of non-settlement of dispute:
    a. Declaration by the IPO Mediation Office that mediation is unsuccessful; and

    b. Termination of the mediation proceedings by issuing a Notice of Non-Settlement of Dispute;

  5. Preliminary Conference
  6. Submission of Position Papers
  7. Submission for Decision

Grounds for Invalidity
In the case of patents, the same may be cancelled if (a) the claimed invention is not new or patentable, (b) the patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by any person skilled in the art, or (c) the patent is contrary to public order or morality.

For trademarks, the opposition or cancellation may be founded on any of the grounds that would prohibit registration enumerated in Section 123.1 of the IP Code, which pertinently includes the likelihood of deception of the public as to the nature, quality, characteristics, or geographical origin of the goods or services, or identity or confusing similarity.

Japan Small Flag Japan

Patents: The grounds for invalidation and opposition include:

  • Lack of novelty or inventive step
  • Interference with another patent application that has an earlier priority date
  • Violation of claim clarity, enablement or written description requirements
  • Violation of conditions for an amendment during prosecution
  • Falsification of inventorship (for invalidation only)

Registered Trademarks: The grounds for invalidation and opposition include:

  • Trademark has no distinctive character
  • Trademark is likely to negatively affect public policy
  • Trademark is identical or similar to a registered or well-known mark
  • Trademark is likely to cause confusion in connection with the goods or services pertaining to the business of another person

Regarding the forum and the procedure, see 27.

UAE Small Flag UAE

UAE national patents, utility certificates and designs: oppositions are filed with the Grievance Committee within the Patent Department of the Ministry of Economy, a tribunal function. The decision can be appealed through the Courts where it is a litigation matter.

For cancellation actions, these can be filed with the UAE courts by an interested person and can request full or partial cancellation. The cancellation can be filed on the basis that the patent / design / utility model was granted without satisfying the conditions stated for them in the law or its implementing regulations and/or that the right was granted without taking into account the priority of applications filed with a priority date earlier than the granted right.

UAE trade marks: oppositions are filed with the Opposition division of the trade marks department, a tribunal function. Its decisions can be appealed to the Trade Marks Committee (again, a tribunal function), which can in turn be appealed on to the UAE Courts. Oppositions can be based on the provisions of the law which outline what may not be registered as a trade mark, as well as other provisions of the law.

Invalidation actions can be filed through the court, or through the Trade Marks Department, depending on the type of invalidity action. As of May 2017, the Trade Marks Department will accept and consider invalidation actions where it is alleged the registration was filed without a right. This is a limited action aimed at dealing with hijacking of a trade mark by a business partner or similar. Other invalidation actions, such as non-use, or registrations which offend other provisions of the law, are to be filed with the Courts.

GCC patent: the law is silent on invalidation actions, though Article 26 provides for authorities in the Member States to examine disputes relating to infringement or imminent infringement of a patent. It is generally considered that a request for cancellation action may be filed with the national courts appointed for handling GCC patent matters, the relevant country being where the infringement or imminent infringement is likely to occur. Invalidation claims can be raised through new court proceedings, or as a counter-claim for infringement, based on the patent offending the following provisions of the law regarding patent requirements:

  • It was filed by someone other than the inventor or the inventor's successor in title
  • It is not new
  • It does not involve an inventive step
  • It is not obvious to a person having ordinary skill in the art
  • It is not industrially applicable
  • It conflicts with Sharia law
  • It conflicts with public rules of conduct
  • It was publically disclosed
  • To safeguard public order and proper conduct, protection of human, animal and plantation life and health, or to avoid serious damage to the environment
  • It is not regarded as an invention (discoveries, scientific theories, mathematical methods, computer programs, schemes rules and methods for doing business, purely mental acts, playing games, varieties of plants, species of animals, biological processes to produce plants or animal, methods of surgical or therapeutic treatment, methods of diagnoses)

UAE copyright: The court may, based on an application by a concerned person, order the cancellation of a copyright recordal in the register on the basis that the works did not meet with the requirements for protection as a copyright works in the UAE.

Mexico Small Flag Mexico

Inventions

IP right

Forum

Procedure for challenging each intellectual property rights

Grounds of invalidation

Patents

Mexican Patent and Trademark Office

1) Initial pleading. Evidence shall be submitted as well;

2) Response by the defendant along with his evidence;

3) Closing arguments;

4) Decision.

I. Lack of novelty;

II. Lack of inventive step;

III. Lack of industrial application.

IV. When the patent was granted to the wrong person.

V. Abandonment of the patent application.

Utility models

Industrial designs

Integrated circuits

Lack of novelty.

Brands

IP right

FORUM

Procedure for challenging each intellectual property rights

Grounds of invalidation

Trademarks

Mexican Patent and Trademark Office

1) Initial pleading. Evidence shall be submitted as well;

2) Response by the defendant along with his evidence;

3) Closing arguments;

4) Decision.

I. Being granted against the provisions of the law;

II. Earlier use in Mexico or abroad;

III. False data stated in the application;

IV. Earlier registration; and

V. Bath faith.

N/A

Trade names

Slogans

 

Appellations of Origin

I. Being granted against the provisions of the Industrial Property Law; and

II. False data declared in the application.

Geographical Indications

Copyright and other rights

IP right

FORUM

Procedure for challenging each intellectual property rights

Grounds of invalidation

Copyright

Mexican Copyright Office

or

Civil court

1) Initial pleading. Evidence shall be submitted as well;

2) Response by the defendant along with his evidence;

3) Closing arguments;

4) Decision.

I. False authorship;

II. Earlier creation;

III. Granted against the provisions of the law.

Related rights

Reservation of rights

I. Earlier registration;

II. False data declared in the application;

III. Granted against the provisions of the law.

Plant varieties

Ministry of Agriculture

I. Lack of novelty;

II. Lack of distinctiveness;

III. Lack of stability;

IV. Lack of homogeneity.

India Small Flag India

Patents: For oppositions, both pre grant and also post grant, the Indian Patent Office has jurisdiction. For a revocation petition, before the district court or the High Court in case of counterclaim in an infringement suit.

Trade marks:
An Opposition can be filed in front of the Trademarks Registry on the grounds that the trademark applied for is:

  • Devoid of distinctive character
  • Descriptive in nature
  • Are customary in the current language and or in the established practices of trade
  • Likely to deceive public or cause confusion
  • Contains matters that are likely to hurt religious feelings of any class or section of the citizens of India
  • Prohibited under the Emblem and names (Prevention of Improper Use) Act, 1950
  • Exclusively of the shape of the goods
  • Identical with/similar to an earlier trademark
  • Malafide/bad faith
  • Prevented by virtue of the law of passing off
  • Contrary to any law for the time being in force
  • Prevented by way of Copyright Act, 1957

A Cancellation/Rectification action can be filed in front of the Trademarks Registry and/or the Intellectual Property Appellate Board for similar grounds as mentioned above as well as on the grounds that:

  • Up to a date three months before the application for rectification, a continuous period of more than five years has already elapsed from the date of the issuance of the Registration Certificate, during which there has been no bona fide use thereof in relation to those goods/ services by the proprietor.
  • Registration of the trade mark has been obtained by the Registered Proprietor with no bona fide intention of using it as a trade mark in relation to goods/ services in respect of which the impugned mark is registered and that there has been no bona fide use of the trade mark in relation to the above-mentioned goods/ services upto a date three months prior to the date of the Application.

Designs: Applications can be made to the Controller before the Indian Patent Office. An appeal shall lie from any order of the Controller to the High Court.

Latvia Small Flag Latvia

Patents - An opposition procedure is available within nine months following the publication of the notification of the grant of a national patent on the following grounds:

- The subject matter is not patentable (discoveries, scientific theories and mathematic methods, aesthetic creations, schemes, intellectual activities, rules and methods for commercial activities and games, as well as computer programs, methods for the presentation of information; inventions in conflict with public order or the principles of morality accepted in society; plant or animal varieties, or the basically biological methods for the acquisition of plant or animal varieties; biotechnological inventions pertaining to human cloning, modification of the genetic identity of human beings in germ cells, utilisation of human embryos for industrial or commercial purposes and methods for modifying the genetic identity of animals likely to cause them suffering without any substantial medical benefit to people or animals, as well as animals resulting from such methods; a human body in different stages of formation and development and a simple discovery of one of its elements, including the sequence or partial sequence of a gene; therapeutic or surgical treatment methods and diagnostic methods, which are used in relation to the human or animal body.).

- It is not capable of industrial application.

- There is an incomplete, unclear or insufficiently determined description (disclosure) of the invention.

There have been inadmissible amendments (changing the essence of the invention and/or extending the scope of the claims).

For patents, a patent invalidation action, that is a civil court procedure, is available at any time after patent grant. The dedicated court is Vidzeme Suburb Court of Riga City as a court of first instance.

The following may be ground for invalidation of patents:

- The subject matter is not patentable.

- The subject of the patent does not conform to the requirements for patentability (novelty, inventive step and industrial applicability).

- The essence of the invention has not been revealed in the patent as clearly and entirely as is possible, to the extent that a specialist would be able to implement such invention.

- The subject of the patent exceeds the remit of the initially submitted patent application.

- The patent has been granted to a person who did not have the right to receive it.

Trade marks - A trade mark registration may be invalidated by the judgment of a court based on absolute and relative grounds by any person on absolute grounds or personal rights and by the owners of earlier rights (their successors) on relative grounds. The action should be brought in the Vidzeme Suburb Court of Riga City within 5 years the person learned about the use of this trademark.

Vietnam Small Flag Vietnam

Registered patents, trademarks, GIs subject to possible cancellation or invalidation actions must be made initially before the NOIP. For certificates of copyright, related rights, such procedures shall be made before the Copyright Office of Vietnam (COV) whilst certificate of protection of plant variety may be invalidated or cancelled before the PVP Vietnam.

Germany Small Flag Germany

Intellectual property rights can be challenged before the respective office which granted the right and/or (if these proceedings fail) before the regular courts. Grounds for invalidity include e.g. non-eligibility for protection, cessation of the owner, failure to use a trade mark in a genuine way or that rights have been registered in bad faith.

Malta Small Flag Malta

Trade marks
The Maltese Trademarks Act provides for the instances in which one may request the revocation of a trade mark, which in essence are related to a five-year period of non-use following the date of registration. The mark may also be challenged if, in consequence of acts or inactivity of the proprietor, it has become the common name in the trade for a product or service for which it is registered. And finally, the mark may be challenged if due to the use made of it, it is liable to mislead the public in relation to the goods or services for which it is registered, particularly as to the nature, quality or geographical origin of those goods or services. Revocation proceedings must be filed by sworn application before the First Hall of the Civil Court.

The registration of a trade mark may also be declared invalid on the ground that the mark was registered in breach of the absolute grounds concerning trade mark registration.

In proceedings before the Court involving a demand for the revocation of the registration of a trade mark, or a declaration of the invalidity of the registration of a trade mark, the Comptroller of Industrial Property shall be notified with the proceedings and shall be entitled to appear and to be heard if so directed by the Court.

In the case of bad faith in the registration of a trade mark, the Comptroller of Industrial Property may apply to the Court for a declaration of the invalidity of the registration.

Patents
As previously mentioned, there exist two procedures for the revocation of a patent. This was be filed either with the Comptroller of Industrial Property or before the Patents Tribunal.

When a notice for revocation is filed with the Comptroller of Industrial Property, it may only be made:

(a) where the patent concerns an invention in respect of which, before the filing date or, where priority is claimed, before the priority date of the application of said patent, there already exists a published patent; or
(b) in respect of a patent where there is a priority claim, on the grounds that –
(i) the application for a patent on the basis of which priority was claimed was originally filed at another Patent Office more than one year before the filing date of the application of the patent in respect of which a notice for revocation has been filed with the Comptroller; and
(ii) the application on the basis of which priority was claimed or the resulting patent were published by the other Patent Office referred to in sub-paragraph (i) before the filing date of the application of the patent in respect of which a notice for revocation has been filed with the Comptroller.

The Comptroller of Industrial Property will initiate proceedings before an arbiter to determine the case brought before him after ninety days from the date of service by him of the notice for revocation to the owner of the patent.

A notice for revocation filed directly before the Patents Tribunal may only be based on the following grounds:

(a) that the subject matter of the patent is not patentable;
(b) that the patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art;
(c) that the right to the patent does not belong to the person to whom the patent was granted;
(d) that the subject matter of the patent extends beyond the content of the application as filed or, if the patent was granted on a divisional application, beyond the content of the earlier application as filed; and
(e) that the protection conferred by the patent has been extended by an amendment which should not have been allowed.

A notice for revocation may not be filed with the Patents Tribunal if it has already been filed before the Comptroller of Industrial Property and vice versa.

Grounds for a finding of invalidity of registered designs
The Patents and Designs Act provides that the registration of design may be declared invalid on the grounds that if it does not fulfil the basic requirements established by law (novelty and individual character); if the design constitutes an unauthorised use of work protected under copyright; or if it involves the use of the armorial bearings, flags or emblems, and names or abbreviations of international intergovernmental organisations.

Brazil Small Flag Brazil

The forum is either the administrative authority on issuing the register (either the BPTO or the SNPC, in case of cultivar protection), or the federal court, once it is entitled to review unlawful administrative decisions of federal administrative organisms. As for the grounds for a finding of invalidity, it depends on the IP right, once the most common ground is the lack of any requirement for granting the IP right (e.g. patentability requirements, trademark requirements, etc.).

Norway Small Flag Norway

NIPO is the correct instance for patents, trademarks and designs if a challenge is brought during the registration procedure. NIPO is also the correct instance for applications for administrative reviews. Once registered and/or decided by the NIPO, all of the registrable rights may be challenged within a specified time period to the KFIR. All of the intellectual property rights may further be challenged before the ordinary courts.

The grounds for finding invalidity of a patent in Norway are the same as for European patents, i.e. lack of novelty and/or inventive step, insufficiency and added matter, as well as lack of technical effect and industrial applicability.

The grounds for finding invalidity of a trademark are the same as described in Articles 3 and 4 of the Directive 2008/95/EC.

The grounds for finding invalidity of a registered design is lack of novelty and/or individual character, if the design is contrary to public interests or if the design is contrary to the rights of other persons.

Updated: September 19, 2018