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

Intellectual Property (3rd edition)

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

Norway Small Flag Norway

Anyone may file a protest to a patent or trademark application before the relevant right has been granted. The person submitting a protest does not become party to the proceedings, but NIPO shall take into account the protest when processing the application.

As for designs and business names, third parties are left with the option of filing a complaint after the relevant right has been registered.

Singapore Small Flag Singapore

Yes, a registration may be disputed, usually through the filing of pre-grant oppositions, post-grant cancellation, invalidation and/or revocation actions. The availability and specific procedures for such actions will depend on the right at issue. Patents and industrial design rights do not allow pre-grant oppositions.

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, as opposing parties.

Trade names

Slogans

Trade dress

Appellations of Origin

Yes, as opposing parties.

Geographical Indications

 

Copyright and other rights

IP right

Third parties right to take part in or comment?

Copyright registration

No

Reservation of rights

No

Plant varieties

No

 

China Small Flag China

Patents: only for invention patent after publication. For utility model/design, semiconductor topography and plant varieties, the third party has only option of file an invalidation request after the announcement of the rights.

Trademarks: within three months since the publication.

Ecuador Small Flag Ecuador

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

South Africa Small Flag South Africa

In respect of Trade Marks there is provision for opposition once notice of acceptance is published for a period of 3 months.

Plant breeders – yes, a third party can oppose registration.

Cyprus Small Flag Cyprus

Third parties may intervene in the application process of trade marks, in the course of the filing of an opposition during the two-month period following the publication of a trade mark application in the Cyprus Official Gazette. The filing of an opposition initiates the opening of opposition proceedings resolved through a procedure which involves the filing of written statements (opposition grounds and evidence to support them) and a hearing before the Registrar.

As regards patents, third parties have a right to intervene only once a patent has been granted and a request is filed for the correction of a patent. Such a request is advertised and a third party may file an opposition to the request for correction (Form Π. 6).

Japan Small Flag Japan

For patents, utility models and trademarks, any person can provide the Japan Patent Office with published documents or other documents at any time to show that the pending application lacks the requirements for a patent, utility model or trademark to be granted. Such provision can be made on an anonymous basis.

Switzerland Small Flag Switzerland

Third parties do not have the right to take part in or comment on the registration process with the IPI. However, they can assert their rights, e.g. by filing within the respective deadline a trademark opposition, once the registration has been published.

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.

Brazil Small Flag Brazil

Patents: After publication of the application and up to the end of the examination, interested parties may submit documents and data to assist the examination. That is, this procedure is called as third part observations.

Industrial Designs: It is not possible for third-parties to take part of the registration procedure of industrial design applications. However, after it is granted, third-parties may file a petition requesting that the BPTO conducts a substantive examination, analysing the originality and the novelty requirements of such protected design.

Integrated Circuit Topography: third-parties may not take part of the registration procedure.

Trademarks: Third-parties may file an opposition against the granting of the trademark application within 60 days of its publication.
Geographical Indications: After the BPTO examines the formalities of the Geographical Indication application, the application will be published, and third-parties may comment on the application within 60 days.

Cultivars: After the application is published, there shall begin a period of 90 days for the submission of any appeals, the applicant being informed thereof.

Third-parties may also file administrative nullity procedures against the BPTO’s decision that granted IP protection for any IP asset, including industrial designs and integrated topographies.

Israel Small Flag Israel

Patents/Trademarks: Any person may submit third party observations during examination of a patent/trademark application, provided that such documents are submitted during a prescribed window of time. Third parties may challenge a pre-granted patent/trademark by filing an opposition.

Designs: The examiner may rely on, inter alia, documents submitted by a third party.

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.

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 under Article 175 IPC.

Recently, the number of cases of deposit by third parties of observations or oppositions to the IPTO in relation to patent application for inventions has gradually increased. It is a procedure provided for by other legal systems but not specifically regulated by the IPC in relation to patents. 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.

France Small Flag France

In France, third parties can intervene in the registration process, whether by giving written comments or by filing an opposition against the intellectual property rights.

For:

  • patents: from the publication of the patent application, any third party can submit written comments on the patentability of the invention to the INPI (Article L.612-13 of the IPC). It should be also noted that the Bill of Law PACTE introduces an opposition procedure against registered patents before the French Office (see question 28).
  • utility certificates: from the publication of the utility certificate application, any third party can submit to the INPI written comments on the patentability of the invention (Article L.612-13 of the IPC);
  • trademarks: any third party can submit to the INPI written comments on the trademark within a delay of 2 months from the publication of the trademark application (Article L.712-3) and within the same delay, only the right holder, the INAO, the exclusive licensee, a territorial collectivity or a defense organization for geographical indications can file an opposition against the trademark (L.712-4 of the IPC);
  • collective and certification marks: any third party can submit to the INPI written comments on the trademark within a delay of 2 months from the publication of the trademark application (Article L.712-3) and within the same delay, only the right holder, the INAO, the exclusive licensee, a territorial collectivity or a defense organization for geographical indications can file an opposition against the trademark (L.712-4 and L.715-2 of the IPC);
  • geographical indications: Before the INPI grants the geographical indication, the INPI has to seek the opinions from the territorial collectivities, the professionals of the concerned industry and from the director of the INAO. Absent of any answer within two months, their opinion is presumed favourable to the grant of the geographical indication (Article L.721-3 of the IPC);
  • designations of origin and traditional specialty guarantees: during a two months opposition period, any third party can submit to the INAO a written and motivated opposition (Article R.641-13 of the Rural and Sea Fishing Code);
  • plant varieties: the Committee for Protection of Plant Varieties can seek opinions from experts before the grant of the certificate (Article L.623-12 of the IPC) although there is no opposition period nor the possibility for third parties to submit written comments;
  • semiconductors (Article L.622-4 and L.622-6 of the IPC), supplementary protection certificates (Article 10 of the EU Regulation N°469/2009) and designs (L.512-4 of the IPC): the INPI, after a formal examination, publish the application and the semiconductors rights take effect on the day of the application was filed. There is no opposition period nor the possibility for third parties to submit written comments.

India Small Flag India

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. In Trademarks application is open to opposition by third parties for four months after the mark is published in the Trade Marks Journal. A GI 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 of registered design.

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.

Malta Small Flag Malta

With respect to trademarks, an opposition procedure has been introduced which subsists for 60 working days from the publication of a trademark application. Following registration, parties may also seek invalidations on the grounds provided at law.

Peru Small Flag Peru

Yes, during the registration procedure at the stage of publication, if a third party observes that what is pretended to be registered may affect their intellectual property rights, they may file an opposition to the application requiring that the trademark or patent, be not granted.

Saudi Arabia Small Flag Saudi Arabia

Third parties can file opposition against acceptance of trademark application. The law provides 60 days for third parties to file opposition against the publication of accepted mark. The 60 days period starts from publication date of accepted trademark application. Opposition can be filed based on legal justification, which can be prior use, an earlier registered trademark right or an earlier pending application in Saudi Arabia. Oppositions can also be filed based on rights established by unregistered well-known marks having fame in Saudi Arabia.

Patent and Industrial Design rights can be opposed after grant. Interested parties can file application for invalidation of Patent or Industrial Design with Saudi Patent Committee.

Australia Small Flag Australia

Yes.

  1. Patents –
  2. a. Innovation patent examination – third parties can request examination of a granted innovation patent.

    b. Opposing a patent – if you believe an invention should not be awarded a patent, you can challenge its validity by filing an opposition. Apart from the granting of a patent, other actions in the patent application process can be opposed including: an applicant’s request to amend their patent specification, the grant of an extension of time to restore a patent or patent application, the grant of an extension of term of a pharmaceutical patent, and the grant of a licence to use an invention.

    c. Ownership disputes – occur when there is a challenge as to who is the true owner of a patent application. The challenge can be made by either a person who is listed as a joint applicant or, a person who is not listed as an applicant.

  3. Trade marks – any interested third party is able to file an opposition to formally object to the registering of a trade mark. The reasons why a party will oppose a trade mark registration are varied. For example, a party may oppose an accepted trade mark application because they think it is too similar to their own; or, because the trade mark applicant is not the true owner of the trade mark.
  4. Geographical indications –
  5. a. GIs registered using the certification trade mark (CTM) system – third parties may submit comments to the Australia Competition and Consumer Commission (ACCC) following the publication of the initial assessment. Any interested third party is also able to file an opposition to formally object to the CTM application once acceptance is published.

    b. GIs for wine registered under the Wine Act 2013 – trade mark owners (or those with applications pending) or other persons will be invited by the Geographical Indications Committee (GIC) to object to the application before it is considered by the GIC. When the GIC makes an interim determination, which is published in the Commonwealth Gazette, third parties may provide comments. Further, when the GIC makes a final determination, which is also published, aggrieved persons have 28 days to apply to the Administrative Appeals Tribunal (AAT) for review of the determination before it is formally entered on the Register.

  6. Designs – third parties can request examination and lodge prior art material at any time after registration of a design.
  7. Plant breeder’s rights (PBRs) – an objection to an application for PBR can be made by any person who considers that their commercial interests would be adversely affected by the grant of that PBR; or that the application is incorrect, incomplete or will not fulfil all the conditions required by the Plant Breeder’s Rights Act 1994. Objections can be lodged at any time after application part 1 is accepted and before the end of the six-month opposition period.

United States Small Flag United States

Patents: Using a preissuance submission, a third party may submit patents, published patent applications, or other printed publications of potential relevance to the USPTO with a concise description of their relevance to the examination. Such submission may be made (1) before 6 months after the application at issue is published or before the date of a first office action on the merits rejecting any claims, whichever comes later; or (2) before the date of a notice of allowance, if the notice issues before (1).

A protest can also be filed by any member of the public against a pending patent application. Any information which would make the grant of the patent improper can be relied upon in a protest. A protest must be served and filed prior to the date the application is published or the date a Notice of Allowance is mailed, whichever occurs first. The only exception to this is if one obtains consent of the applicant, a protest may be filed during prosecution of the application.

Trademarks: When an examining attorney preliminarily approves a trademark application, the application publishes for 30 days, during which any member of the public can oppose the mark. An opposer must show a real interest in the proceedings and a reasonable basis for believing that the registration will cause damage. Permissible grounds for opposition are likelihood of confusion or mere descriptiveness.

Copyrights: There is no formal process for a third party to partake or comment on the registration of copyright. Once a registration certificate issues, however, a third party may file a petition to the Copyright Office to correct any error on the certificate.

Updated: September 12, 2019