When may a challenge to these intellectual property rights be made (e.g. during any registration process or at any time during the subsistence of the right)?
Intellectual Property (3rd edition)
There are various types of challenges to intellectual property rights, at different periods in time.
Patents & Utility Innovation:
Invalidation proceedings: In an infringement action, the defendant can challenge, in the same action, the validity of the patent/ the certificate for utility innovation. The validity of a patent/ the certificate for utility innovation may also be put in issue in proceedings for a declaration of non-infringement.
In an action for infringement of a trade mark, it is common for the defendant to counterclaim with an application for cancellation, which can be an action on its own or as a counterclaim.
Any interested person as specified under the Act may request the Registrar to cancel or rectify the registration of a geographical indication.
The defendant can argue on the subsistence of copyright.
Application to rectify the Register by including, making, expunging or varying any entry in the Register or correcting any error or defect in the Register as it deems fit must be made by an aggrieved person or interested party.
A challenge against a patent or a trademark may be made during the registration process, either as a protest to the application or during an opposition period, or at any time during the subsistence of the right. A challenge against a design or a business name can be made at any time during the subsistence of the right.
(a) Trade Marks. A trade mark may be challenged via opposition to prevent its registration. Post-registration, it may be challenged by invalidation or non-use revocation proceedings.
(b) Patents. A patent may be challenged pre-grant only as to whether the patentee is entitled to own the patent. Post grant, the validity of a patent may be challenged via a patent revocation or by way of a counterclaim in an infringement action.
(c) Industrial Designs. A registered design may only be revoked after registration.
During the subsistence of the right.
Generally after the granting or registration of the IP right. For patent , during the prosecution one could challenge by filing a third party observation; For trademarks: opposition can be filed within 3 months since the publication; or cancellation after 3 years since the approval of registration based on non-use; anytime after the date of registration based on claim of generic name. Invalidation can be filed within 5 years since the date of registration.
Except for trade marks and plant breeders’ rights, where pre-grant opposition is possible patents and registered designs can only be challenged after registration thereof.
There is no scope for the filing of a challenge during the application process of a patent. Following the grant of a patent, any person may file in court an application for the cancellation of a patent certificate (on substantive grounds as well as in case where there is an allegation that the patent had been awarded to a person not entitled to it). Moreover, third parties have a right to intervene once a patent has been granted by filing a request 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).
During the application process of a trade mark, following its publication for opposition purposes, within two months from publication any third party may file an opposition against the trade mark application, basing the opposition on ‘prior rights’. Similarly, the Registrar may raise an objection to the registration of a trade mark, based either on absolute grounds and/ or on relative grounds of refusal. In addition, once a trade mark has been granted, it may be susceptible to a revocation if the mark has not been used for a period of 5 years and there is no reasonable cause for its non-use, following its registration. A revocation application may be filed in Court or at the Registrar.
A registered design may be invalidated by a court decision following the filing of a relevant claim, on either substantive grounds or on the basis of a claim that the design had been granted to a person not entitled to the design as per the provisions of the relevant law (i.e. the creator or the beneficiary).
An invalidation trial against patents, utility models or designs can be filed for at any time, even after the expiration of the right.
An opposition against patents can be filed within six months from the issuance of the patent gazette.
An invalidation trial against trademarks can be basically filed for at any time, even after the expiration of the right. However, for some grounds for invalidation, an invalidation trial must be filed for within five years from the registration of the trademark.
An opposition against trademarks can be filed within two months from the publication of the relevant trademark gazette.
A non-use cancellation trial against trademarks can be filed for at any time.
IP rights may not be challenged during the registration process. Once registered, cancellation claims based on the notion of invalidity are permissible by any person who can demonstrate a legal interest.
An opposition to a trademark or PGI/POA registration based on a conflicting trademark or PGI/POA must be submitted within 3 months from the registration's publication. An opposition against a patent based on a conflicting patent must be filed within 9 months from the date the patent was granted.
A claim on the merits based on an alleged infringement can be filed at any time, subject to the rights not being forfeited. There is no fixed time period for the forfeiture of rights, which may however occur if the plaintiff has tolerated the infringement for an extensive period of time (several years) and the infringer has acted in good faith.
Whereas there is no time limit for filing interim measures, such request is subject to the condition of urgency, which requires the applicant to act promptly upon discovery of the infringement.
Damage claims related to IP infringement become time-barred 1 year from the date on which the claimant became aware of the damage and of the identity of the infringer, but in any event 10 years after the date on which the damage occurred.
After the patent application is published, third-parties may file a petition presenting arguments against the granting of such application until the end of the technical examination. After it is granted, an administrative nullity procedure is available within 6 months of the date of publication of the grant. This grant can also be challenged in court through a nullity action, during any time, as long as the patent is valid.
Regarding industrial design registrations, an administrative nullity procedure is available within 5 years from the date of publication of the granting of this IP right. Court actions may also be filed within the period that the industrial design is valid.
As for trademarks, interested third-parties may oppose to the registration within 60 days from the publication of the trademark application, or file an administrative nullity procedure within 180 days from the publication date of the granting. As for court procedures, the period for filing a court nullity action expires in 5 years from the date of granting.
As for copyright law, this question poses a tough challenge, if we keep in mind that the registration of a copyright is merely declaratory of rights. In court, the economic rights of the author may be challenged within 3 years if it is derived of a non-contractual violation, whereas if it is similar to a contractual violation, it can be questioned in court within 10 years, according to the Brazilian Superior Court of Justice.
A cultivar application can be challenged within 90 days from its publication date. An administrative nullity procedure before the SNPC is also available, as well as a nullity court action.
While an application for a patent is pending (whether in the UKIPO or EPO), a third party can challenge the grant of the application through the third party observation ("TPO") procedure. Through this procedure, the third party files its observations with the intellectual property office examining the application (either the UKIPO or EPO) and the examiner will consider the observations. This is an ex parte procedure – once the TPO has been filed, the third party will have no further involvement in explaining or debating the observations or objections filed.
After a UK patent has been granted, a third party can seek to challenge and revoke the right at any time, either through the civil courts or the UKIPO.
For European Patents, once the application has been granted, its validity can be challenged by filing an opposition. Oppositions must be filed at the EPO within 9 months of the patent being granted. Oppositions are inter partes procedures, where the third party opponent may file an opposition brief and evidence, and may attend hearings. If the opposition is successful, the European Patent will be revoked in its entirety – in each country designated on the patent.
In addition, at any time after the grant of a European Patent covering the UK, any person may seek revocation of the UK designation in the UK Court.
Registered trade marks
For trade marks, oppositions may be filed at the relevant intellectual property office (UKIPO for UK applications, and the EUIPO for EU trade mark applications) within three months of the application being published. (For UK trade mark applications, there is an initial two month opposition period, which can be extended to three months.) The opposition procedure is similar to that for patents, being an inter partes procedure in which the third party has a continuing role in challenging the registration.
Third party observations may also be filed at the relevant intellectual property office. The procedure is similar to that for patent applications - the third party will not be involved beyond the original submission of the observations. TPOs can be filed within the 3 month period from the publication of the application or, if an opposition is filed within that period, TPOs can be filed any time before the final decision in the opposition.
For registered designs, the third party must wait until the right has been granted before it can be challenged. It can then be challenged at any time in the EUIPO (in the case of Community Registered Designs) or the civil courts of UKIPO (in respect of UK Registered Designs).
Patents: Oppositions in Israel are pre-grant procedures. An opposition may be filed within three months of the publication of an intent of grant. Cancellation applications may be filed at any time.
Trademarks: Oppositions may be filed within three months of the publication of the mark’s acceptance, prior to its final registration. Cancellation may filed on grounds that the mark has not been used in the last three years or that the registration was made in bad faith; other grounds for cancellation (such as lack of distinctiveness/ descriptiveness or likelihood of confusion) may be raised only within the first five years of the marks’ registration.
Designs: Cancellation may be requested at any time so long as the design is valid.
The validity of IPRs can be challenged either during the registration process or during their subsistence depending on the type of the rights concerned.
During the registration process:
- Copyright: Since copyright protection arises from the mere creation without any prior registration requirement, there is no opposition procedure organized under France law.
- Design and model: There is no opposition procedure organized before the French Office.
- Patent:During the registration process of a French patent, third parties can submit observations within three months from the date of publication of the preliminary search report relating to a patent application (Article R. 612-63 of the IPR).
- Trademark:During the registration process of a French trademark, the holder of prior rights can oppose to the registration of trademark within two months from the publication of the application. In addition, any third party can submit observations before the French Office.
- Copyright:The originality of the work allegedly protected by copyright can be discussed before the Court in case of infringement action.
- Design, patent and trademark:According to the current state of law, tThe validity of the right can be challenged before the French Courts either by way of a legal action or by way of a means of defence (see question 27).
Following the grant of the right:
Finally, it should be noted that ownership of registered rights can also be challenged on the grounds that the application has been fraudulently filed by an unauthorised party) within five years from the grant of the right (except when bad faith is also established) (see. Patent: Article L. 611-8, Design: ArticleL.511.10, Trademark: Article L.712-6 of the IPC).
Prior rights can be invoked during opposition proceedings, but also thereafter at any time. Challenges to the validity of rights can usually be done before the offices or in court and/or as counterclaim in infringement proceedings.
Under Italian Law, the validity of the IP rights may be challenged by the interested parties after the granting of the IP rights by bringing legal action against the IP owner, while for the trademark it is possible to challenge the validity of the right also during the registration process through the opposition phase. Particularly, Article 176 of the IPC states legal grounds for the opposition as:
- the rights deriving from the registration of a national trademark or a foreign trademark with effect in Italy that is identical to the trademark to be opposed and registered for identical products and services (Article 12 (1) let. (c) of the IPC);
- the rights deriving from the registration of a national trademark or a foreign trademark with effect in Italy that is similar and registered for identical or similar products and services (Article 12 (1) let. (d) of the IPC); or
- the lack of consensus by the natural or legal person entitled to the name, surname or personal image, in the case of registration of a trademark of a name, surname or image belonging to person different to the registrant (Article 8 of the IPC).
The deed of objection must be filed before the IPTO within three months from:
- the date of publication in the Official Gazette of company trademarks of the application for registration of a trademark considered recordable by the IPTO (Article 170 let. (a) of the IPC);
- the date of publication in the Official Gazette of company trademarks of registration of a trademark, the application of which has not been published (Article 179 (2) of the IPC); or
- the first day of the month following the publication in the WIPO International Trademark Gazette of the registration of the international trademark.
The deed opens the administrative proceedings before the IPTO, which lasts from 24 to 36 months.
Trade marks may be challenged either prior to registration by way of an opposition or after registration byway of a cancellation action.
The other registered rights described in section A may only be challenged after they are registered.
Non-registered IP rights can be challenged at anytime during the subsistence of the right.
Patent: Any person can file a pre-grant opposition to the grant of a patent after the publication of the application and before the grant of the patent. A post grant opposition can be filed by any person interested anytime before the expiry of one year from the date of publication of the grant of the patent. A revocation can be filed at any time after the grant of the patent.
Designs: Any interested person can file a cancellation petition at any time after the registration of the design.
Geographical indications: Within three months from the date of advertisement or re-advertisement of an application for registration or within such further period, not exceeding one month in the aggregate, as the Registrar allows. In case a Geographical indication is registered then a cancellation action can be filed against the same.
Trademarks: An opposition can be filed within 4 months of publication of a trademark application in the journal. In case a mark is registered then a cancellation action can be filed against the same. Further, a civil or criminal action can be taken at any time (before or after registration) under the writ jurisdiction of the High Court, subject to the rules of writ jurisprudence.
The opposition, within a period of 60 days following the publication date in the Official Gazette. The action claiming ownership, within a period of 4 years following the date of grand of the rights or 2 years after the date of the first exploitation or use, whichever period expires earlier; or at any time during the subsistence of the right in case of bad faith. The invalidity of registration, within a period of 5 years after the patent grant date or 2 years following the date on which the person to whom that right belongs learned about the use of the invention, whichever period expires first.
The opposition, within a period of 30 days following the publication date in the Official Gazette. The cancellation, lack of use during 3 years before the start of the cancellation proceeding. The action claiming ownership, within a period of 4 years following the date of grand of the rights or 2 years after the date of the first exploitation or use, whichever period expires earlier; or at any time during the subsistence of the right in case of bad faith. The invalidity of registration, the absolutely invalidity of registration, at any time during the subsistence of the right; the relative invalidity of registration, within a period of 5 years following the grant date.
The invalidity of registration: At any time during the subsistence of the right.
Trademarks may be opposed after publication of the application and before registration through the newly introduced opposition procedure. They may also be challenged at any time during the subsistence of the right including on the grounds of non-use. However, infringement proceedings are time barred by a period of five years.
An application for the revocation of a patent may be filed by any person after the publication of the grant of the patent. Similarly to trade marks, infringement proceedings are time barred with a period of five years.
During the registration process and at any time during the subsistence of the right.
For opposition proceedings, please refer to answers in question 7 & 8. Invalidation action against a trademark must be filed within 05 years of registration. Cancellation action for non-use can be filed after each consecutive 05 years of non-use. There is no time limitation for filing patent invalidation.
Challenges may be brought both during the registration process in the case of an opposition to registration and during the subsistence of the right, where a party to a proceeding is seeking to challenge the validity of the intellectual property right that is being asserted.
Registered Trade Marks: An opposition to the registration of a trade mark must be made within two months of the trade mark being advertised as accepted in the Australian Official Journal of Trade Marks. An application for the removal of a trade mark due to non-use may also be brought 5 years since the filing date of the registered trade mark, or at least 3 years since the particulars of the registered trade mark were entered into the Register (depending on the filing date of the registered trade mark).
Patents: An opposition to the grant of a standard patent must be filed within 3 months of the advertisement of the acceptance of a standard patent application. Innovation patents may be opposed at any time after they have certified.
Designs: A party may challenge request examination once a design has been registered.
Plant Breeder’s rights: An opposition can be brought any time after application part 1is accepted under provisional protection and within 6 months of the public notice of the description of the variety (application part 2).
Challenges in court: Revocation proceedings can be brought in court; however they are typically brought as a response to infringement proceedings.
Patents: Parties may challenge the grant of patents during the registration process, after a grant of the patent in post-grant proceedings before the U.S. Patent and Trademark Office, or as a defense to a charge of infringement at any time.
Trademarks: Parties may challenge the grant of a trademark registration during the registration process, or after the grant of a registration in a cancellation proceeding, or as a defense to a charge of infringement at any time.
Copyrights: Parties may challenge the existence of a copyright when accused of infringement.
Trade Secrets: Parties may challenge the existence of a trade secret right when accused of misappropriation.