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)?
Opposition may be filed during the registration process while invalidation may be initiated at time after the registration has been completed.
There are various types of challenges to intellectual property rights, at different periods in time.
Invalidation proceedings: In an infringement action, the defendant can challenge, in the same action, the validity of the patent. The validity of a patent 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.
Most national or regional intellectual property rights cannot be challenged during the registration process. Benelux trademarks may be opposed within a two-month period following the publication of the application. EU trademarks may be opposed within a three-month period following the publication of the application.
Plant variety rights may be opposed until the registration date. Opposition against the name of a plant variety must be filed within a three-month period following the publication of the proposed name.
For trade mark and plant varieties, opposition proceedings can be brought during the registration process.
Trade marks, registered designs, and patents can be challenged at any time during the subsistence of the right.
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:
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.
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 (IPC article R. 612-63). However there is no opposition procedure before the French Office.
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.
Following the grant of the right:
The originality of the work allegedly protected by copyright can be discussed before the Court in case of infringement action.
- Design, patent and trademark:
The 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).
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: IPC article L. 611-8, Design: article L.511.10, Trademark: article L.712-6).
R: The first stage occurs after the publication of the application (in what regards to registered rights). As it is referred above, in what regards to almost all the IP registered rights, third parties may file oppositions in this stage of the application proceedings. If they don’t oppose, in most of the cases it is also possible to appeal from the decisions (usually to the IP Court) within a short period of time after. During the subsistence of the IP right, it is also possible to file cancellation proceedings.
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: A cancellation petition can be filed at any time after the registration of the designs
Geographical indications: Within three months from the date of advertisement or readvertisement 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.
Trade marks may be challenged either during the registration procedure (opposition) or post-registration (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 any time during the subsistence of the right, most commonly as a defense in infringement proceedings.
During the subsistence of the right.
Patents: observations and prior art documents can be submitted to SIPO after a patent application is published but not yet granted. After the rights are granted or registered, an invalidation request can be filed.
Trademarks: when an application has been given preliminary approval, an opposition can be filed against the mark when it is published in the gazette. After the rights are granted, invalidation against the registered mark can be requested. An application for cancellation due to non-use can be commenced after a mark has been registered for three or more years.
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 partes 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.
After a trade mark has been granted, a third party can seek to challenge and cancel or revoke the right at any time, either through the civil courts, or the EUIPO (in the case of EU trade marks) or UKIPO (in respect of UK trade marks).
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 civil courts, or the EUIPO (in the case of Community Registered Designs) or UKIPO (in respect of UK Registered Designs).
Patents and Designs
Revocation of a patent may be applied for any time after its grant and revocation of a design registration, any time after publication of registration.
Plant Breeders’ Rights
Any person may object to the grant of a PBR.
A trade mark opposition may be filed within three months after a trade mark application is advertised for opposition purposes. Extensions of the opposition term are possible.
A registered trade mark may be cancelled at any stage during the subsistence of a trade mark registration in the event of non-insertion in or omission from the register of any entry, or of an entry wrongly made in or wrongly remaining on the register, or of any error or defect in any entry in the register, any interested person may apply to the court or, at the option of the applicant to the registrar, for the desired relief, and thereupon the court or the registrar, as the case may be, may make such order for making, removing or varying the entry as it or he may deem fit.
A registered trade mark may, on application to the court, or, at the option of the applicant to the registrar by any interested person, be removed from the register in respect of any of the goods or services in respect of which it is registered, on the ground either—
- that the trade mark was registered without any bona fide intention on the part of the applicant for registration that it should be used in relation to those goods or services by him or any person permitted to use the trade mark, and that there has in fact been no bona fide use of the trade mark in relation to those goods or services by any proprietor thereof or any person so permitted for the time being up to the date three months before the date of the application; or
- that up to the date three months before the date of the application, a continuous period of five years or longer has elapsed from the date of issue of the certificate of registration during which the trade mark was registered and during which there was no bona fide use thereof in relation to those goods or services by any proprietor thereof or any person permitted to use the trade mark during the period concerned; or
- subject to such notice as the court or the registrar, as the case may be, shall direct, and subject to the provisions of the regulations, that, in the case of a trade mark registered in the name of a body corporate, or in the name of a natural person, such body corporate was dissolved, or such natural person died, not less than two years prior to the date of the application and that no application for registration of an assignment of such trade mark has been made.
UAE national patents, utility certificates and designs: can be opposed within 60 days of the publication date. An interested person can file post-grant cancellation actions with the UAE Courts at any time.
GCC patents: can be opposed within 3 months of the publication date.
Trade marks: can be opposed within 30 days of the publication date by any concerned persons. Non-use cancellations can be filed where a registered mark has not been used for an uninterrupted five year period. Cancellation actions on other grounds can be filed at any time, though where the registered mark has been used continuously for at least five years from the date of registration without challenge, no dispute may be raised against the ownership of the mark.
UAE copyright recordals: once a final judgement has been obtained from a court.
In cases of Opposition of trademark applications, the Opposition must be filed within thirty (30) days after the publication of the application for purposes of opposition in the IPO e-Gazette.
When a trademark has already been registered, a Petition for Cancellation may be filed after the mark is registered but no later than five (5) years from the date of registration of the mark, unless it falls under any of the following instances, in which case, the Petition for cancellation may be filed at any time after the registration of the mark:
- if it becomes the generic name for the goods or services, or a portion thereof, for which it is registered, or has been abandoned;
- if the registration was obtained fraudulently or contrary to the provisions of the IP Code;
- if it is being used by, or with the permission of, the registrant so as to misrepresent the source of the goods or services on or in connection with which the mark is used; and
- if the registered owner of the mark without legitimate reason fails to use the mark within the Philippines, or to cause it to be used in the Philippines by virtue of a license during an uninterrupted period of three (3) years or longer.
A Petition for cancellation of a patent or any claim thereof may be filed only after the issuance of the Letters Patent.
The validity of patents can be challenged after they have been issued while application for trademark registrations can be challenged after the registrations have been published. And copyright registrations can be challenged after those registrations have been asserted against an alleged infringer.
While the opposition period and any time afterwards as claim for invalidity of the right.
Challenges are not made during the registration process. There is a deadline for challenging intellectual property rights in administrative opposition proceedings. Opposition against a patent must be filed within nine months from the date when the patent was granted. The opposition deadline for trademarks and POA/PGI is three months from the publication date of the registration. Cancellation and nullity actions before the civil court can be brought forth any time during the subsistence of the right but as time progresses the risk of as successful defence of forfeiture increases.
Intellectual property rights to all registrable intellectual property objects can be challenged after their registration, during the subsistence of the right, by any interested party (subject to requirements as prescribed by relevant laws).
Intellectual property rights to trademarks, plant varieties, geographical indications and designations of origin may be challenged prior to registration, by any interested party by means of filing the opposition.
Intellectual property rights to inventions, utility models can be challenged by filing observations by any interested persons (such observations may be considered by the examination authority although procedure of their mandatory consideration is not prescribed).
Intellectual property rights to non-registrable intellectual property objects can be challenged during the subsistence of the right.
Third persons are entitled to inform the Authority of their opinions from the announcement date of the trademark application till the registration date whereas they shall be required to submit their objections within two (2) months as from the announcement of the application in the Bulletin; objections against the registration of the patent within six (6) months as from the announcement of the decision for granting the patent in the Bulletin; objections against the registration of the design within three (3) months as from the announcement of the application in the Bulletin; and objections against the registration of the geographical indications and traditional product names within three (3) months as from the announcement of the application in the Bulletin.
PATENTS & UTILITY MODELS:
Expiration may be decided by the SPTO or requested before civil courts at any time during the subsistence of the trademark right.
Thirds parties can file observations during the granting process, or oppositions once the patent has been registered.
Once the patent has been registered, invalidity may also be applied for before civil courts at any time during the subsistence of the right.
Expiration may be decided by the SPTO or requested before civil courts at any time during the subsistence of the trademark right.
Invalidity on absolute or relative grounds for refusal may be requested before the SPTO during the registration process.
Once the trademark has been registered, invalidity may be requested before civil courts at any time during the subsistence of the right.
An invalidation action based on absolute grounds will not be time barred.
However, if the owner of the earlier right has tolerated the use of the infringing mark for a period of five successive years, the right to bring an invalidation action based on relative grounds will lapse, unless the infringing mark was registered in bad faith.
Expiration may be decided by the SPTO or requested before civil courts at any time during the subsistence of the design right.
The nullity action may be exercised during the validity of the design registration and during the five years following its expiration or extinction.
Third parties might challenge a registered copyright before the civil courts. Moreover, in the course of a copyright infringement case, defendant can argue that the claimant’s work is not copyrightable (i.e. on the grounds of lack of originality).
A challenge to Patents, Designs and Copyrights can be made throughout the right period. Patents – 20 years, Designs – 25 Years and copyrights – during the life of the author and for 70 years after his death.
In patents and trademarks – A request for opposition may be filed after the acceptance of the mark, prior to its final registration (Pre-grant opposition). Trademarks may be challenged at any time, on grounds that it has not been used in the last 3 years to file the cancellation request or on grounds that the registration was achieved in bad faith. other grounds, may be raised in the first 5 years after its registration.
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.