Do third parties have the right to take part in or comment on the registration process?

Intellectual Property (2nd edition)

France Small Flag France

In France, third parties can intervene in the registration process of patents and trademarks exclusively (see question 28).

Switzerland Small Flag Switzerland

Third parties do not have the right to take part in or comment on the registration process. However, they can assert their rights once the registration has been published.

Poland Small Flag Poland

The Patent Office publishes information that the patent application has been filed, and third parties may submit reservations concerning any circumstances preventing the patent's grant. A similar rule concerns new trade mark applications. Third parties also have the possibility to file oppositions and motions for the invalidation of registered IP rights (see question 27 for details).

Italy Small Flag Italy

Any interested party, without thereby assuming the role of a party in the registration proceeding, may address written observations to the IPTO, reporting observations and oppositions and specifying the reasons for which a trademark should not be registered.

Recently, the number of cases of deposit by third parties of observations or oppositions to the IPTO in relation to patent application for inventions or supplementary protection certificates has gradually increased. It is a procedure provided for by other legal systems but not specifically regulated by the IPC relation to patents and supplementary protection certificates. The position of the IPTO has always been that of not considering the content of such observations but merely transmit them to the owner of the application just to inform the latter and to allow the owner of the application to present replies. Both observations and replies are simply stored in the dossier without being examined and therefore without affecting the granting procedure.

Cyprus Small Flag Cyprus

Third parties have no right to take part on the process of registering designs and domain names but they do have this right in trade mark and patent registration proceedings.

More precisely, any person may, within two months from the date of publication of an application give notice of opposition to the registration to the Registrar. The Registrar sends a copy of the notice of opposition to the applicant who is required to file, in the prescribed manner, a counter – statement of the grounds on which he relies for his application. The Registrar provides a copy of the any counter-statement to the person opposing the registration. After hearing the parties and considering the evidence, the Registrar determines whether and subject to what conditions, if any, registration is granted.

In regards to patents, any person may, within three months from the date of publication of the application of a patent, give notice of opposition to the registration of the patent to the Registrar. The Registrar sends a copy of the notice of opposition to the applicant who has to file a counter – statement stating his grounds against the opposition within three months from the receipt of the copy of the notice of opposition. Then the Registrar sends a copy of the said counter – statement to the opponent and may give instructions at his discretion in relation to the continuation of opposition procedure.

Israel Small Flag Israel

Patents:
Any person, other than the applicant, has the right to submit to the examiner publications that are directly related to the invention. Such documents may be submitted during the prosecution but ending two months after the commencement of examination.

Once the patent application is allowed and published in the Patents Gazette, a third party has 3 months to oppose it.. If no opposition is filed within three months, the patent is granted.

Trademarks:
Observations may be filed by any third party regarding the eligibility of the proposed mark during the examination of the mark by the ILPTO. The ILPTO notifies the applicant of such observations, allowing the applicant to respond thereto. Unless the applicant responds to the observations and/or requests to attend a hearing before the Registrar within three months, the ILPTO will issue a notification that the registration process has not been completed. Unless the applicant requests an extension or responds to said notification within three months, the application will be abandoned.

Once a mark is published there is a three-month period within which any third party who has a stand pursuant to the Israeli Trademark Ordinate may file opposition.

Chile Small Flag Chile

  • Trademarks:
    Yes, third parties with an interest may request the authority to reject a trademark application by filing an opposition action within 30 days following the publication of the trademark in the Official Gazette.
  • Patents of invention / utility models / industrial drawings and designs / layout designs (topographies) of integrated circuits:
    Yes, third parties with an interest may request the authority to reject a patents of invention / utility models / industrial drawings and designs / layout designs (topographies) of integrated circuits application by filing an opposition action within 45 days following the publication of the application in the Official Gazette.
  • Copyright:
    No, third parties cannot participate in the process of registering of a work.

Greece Small Flag Greece

Third parties may oppose a registration of a trade mark, both on absolute and on relative grounds. No opposition or other analogous procedure is provided for the other registered IP rights.

Registered IP rights may also be challenged by third parties, under requirements varying for each type of right.

United Kingdom Small Flag United Kingdom

Third party observations ("TPOs") can be filed in relation to a trade mark or patent application, enabling third parties to raise comments or objections to the grant of the right. The examiner will consider any information provided in a TPO during the examination, but the third party will have no further involvement after the filing of the TPO.

In the case of trade marks, there is also a pre-grant opposition procedure, which is discussed further in questions 28 and 29.

In the case of European patents, any person may file a written opposition to the grant of the patent at the EPO, on one of the prescribed grounds (lack of patentability, insufficiency, added matter) within nine months of the patent being granted. The parties' submissions in the inter partes opposition procedure are considered and decided upon by the EPO's Opposition Division, with appeal lying to a Board of Appeal.

Pakistan Small Flag Pakistan

Yes, third parties have right to oppose/object or comment on the registration process.

Ecuador Small Flag Ecuador

Yes, as long as the third parties have submitted the opposition of the registration of the right.

United States Small Flag United States

(a) Patents
Third parties cannot protest or submit pre-issuance oppositions to the grant of a patent without express written consent of the applicant. Third parties can submit prior art references for consideration during a patent application’s pendency.

(b) Trademarks
Once an application for registration is approved by the USPTO the mark is published and any party who believes it may be damaged by registration of the mark has thirty (30) days from the publication date to file either an opposition or request an extension of time to file an opposition.

(c) Copyright
Third parties cannot participate in the registration process.

Malaysia Small Flag Malaysia

Patents:
Yes, when applications are laid open for public inspection.

Trade marks and Geographical Indication:
Yes, during the opposition stage.

Industrial Design:
N/A

Philippines Small Flag Philippines

Third parties may present observations in writing concerning the patentability of the invention subject of the application. Such observations shall be communicated to the applicant who may comment on them.

As to utility models and industrial designs, any person may present written adverse information concerning the registrability of the utility model or industrial design, including matters pertaining to novelty and industrial applicability while citing relevant prior art, within thirty (30) days from the date of publication of the application.

As regards trademarks, any person who believes that he would be damaged by the registration of a mark may, upon payment of the required fee and within thirty (30) days after the first publication, file an opposition to the application.

There is no similar proceeding allowing third parties to take part in or comment on a deposit of copyright.

Japan Small Flag Japan

During the application process for patents, utility model rights or trademark rights, anyone may anonymously provide information to inhibit or prevent registrations of those rights by submitting documents to the Japan Patent Office.

UAE Small Flag UAE

Right

Challenge to registration process?

TMs

Yes within 30 days of the publication, through a formal opposition process before the Trade Marks Department; open to "an interested party" only.

Patents (UAE national filing)

Yes, within 60 days of the publication, through a formal opposition process before the Grievance Committee of the Patent Dept.; open to "an interested party" only.

Utility Certificates

Designs

Patent (GCC patent filing)

Yes, within 3 months of the publication, through a formal opposition process before the Grievance Committee of the GCC Patent office; open to "a concerned party" only.

Copyright

There are no provisions for challenging the recordal application process. A recorded copyright work can be amended or cancelled in the Ministry's records with a final judgement from a Court.

Mexico Small Flag Mexico

Inventions

IP right

Third parties right to take part in or comment?

Patents

Yes

Utility models

No

Industrial designs

No

Integrated circuits

No

Brands

IP right

Third parties right to take part in or comment?

Trademarks

Yes

Trade names

Slogans

Appellations of Origin

Yes, as opponents.

Geographical Indications

Copyright and other rights

IP right

Third parties right to take part in or comment?

Reservation of rights

No

Plant varieties

No

India Small Flag India

For various forms of intellectual property, there are statutory provisions for opposing the registration of the intellectual property.

Trade marks and patents once published are open to opposition procedures by third parties.

Patents: For patents, there are two kinds of oppositions. Pre-grant opposition can be filed by any person after the publication but before the grant of the application, and post-grant opposition, which can be filed within twelve months from the date of publication of the grant of the opposition.

Trademarks: A trademark application is open to opposition by third parties for four months after the mark is published in the Trade Marks Journal.

Geographical indication: A Geographical indication is open to opposition proceedings by third parties for three months after the same is published in the Geographical Indications Journal.

Designs: There are no explicit provisions for a third party to comment on the registration of a design. However, once the design is registered and published, any person interested may file a cancellation petition against it.

Sweden Small Flag Sweden

(a) Patent
No, however anyone can object to the registered patent within nine months from the date when the patent was granted. After nine months, third parties may only object to a granted patent through bringing proceedings before the Patent and Market Court.

(b) Trademark Rights
No. However, anyone can object to the Trade Mark within three months after registration. After three months, a third party can apply for an administrative revocation at the PRO.

(c) Trade Name Rights
No.

(d) Design Protection
No. However, third parties can object to the Trade Mark within three months after registration.

(e) Plant Variety Rights
When an application has been submitted at the SBAC it is publicly announced for a period of two months during which third parties are entitled to object to the registration of the variety in question.

Latvia Small Flag Latvia

Patents, registered designs, semiconductor topography rights - No

Trade marks - Opposition proceedings in Latvia have post-registration character. After the mark is registered, it is published in the Official Bulletin for opposition purposes and any interested third party can within a prescribed period of three months file an opposition against the new trademark.

Vietnam Small Flag Vietnam

Yes. When all of these applications have been published in the IP Gazette or in the specialized magazine on new plant varieties until prior to the issuance of notice of allowance by the NOIP and PVP Vietnam except for layout design (only a period of 3 months allocated for opposition).

Germany Small Flag Germany

Any third party can oppose a patent within nine months following publication of the grant of the patent, Section 59 German Patent Act.

The German utility model does not recognize an opposition in that sense, but third parties can apply for cancellation under Section 15 Utility Model Act. This cancellation action is similar to the opposition against a patent, as it is also filed at the German Trademarks and Patents Office as the first instance, Section 16, 17 Utility Model Act. There is no deadline for filing.

The proceedings are generally the same for semiconductor topography rights, Section 8 Semiconductor Protection Act in connection with Section 17 Utility Model Act.

The owner of an earlier trade mark can oppose a trade mark within three months after publication of the registration, Section 42 Trademark Act.

For registered design rights the German Law does not provide for an opposition period and a design can only be challenged via action for invalidity before the German Trademarks and Patents Office (Section 34a Design Act) or via counter-claim in infringement proceedings before the court.

Any third party can oppose the registration of a plant variety under Section 25 Act on the Protection of Plant Varieties. The deadline depends on the grounds of the opposition.

Malta Small Flag Malta

Third parties have the right to file revocation actions however they would have to wait until the IPR is registered.

Updated: August 2, 2018