Who can challenge each of the intellectual property rights described above?
Intellectual Property (2nd edition)
The validity of a patent can be challenged by any person during its validity period but - only by a person or legal entity that has a legitimate interest (e.g. a person accused of patent infringement) after its expiry.
With regard to a trademark, an invalidation request may be filed during the validity period only by a person or legal entity that has a legitimate interest.
Any individual, corporation or organization can challenge these rights, but an interest is required in order to challenge trademarks with opposition or invalidation actions based on prior rights.
The validity of registered IPR can be challenged:
- by way of action by the public prosecutor who may act ex officio as well as any third party with a legitimate interest, especially, the owner of a prior rights or the operator willing to conduct its activity without any threat of infringement
- in case of infringement proceedings, by way of defence by the alleged infringer.
As a general rule, any person who can demonstrate a legal interest. Oppositions to trademark registrations may be filed by the owner of an earlier trademark or the owner of a well-known trademark.
To invalidate a patent or a utility model after it has been granted, a party may file an invalidation application with the Patent Office. An invalidation application may be filed at any time, but must prove that an applicant has a legal interest in such invalidation, which can be difficult.
Anyone may file a motion for invalidation of a supplementary protection certificate, provided that it has been granted in breach of the requirements for granting such a right or the basic patent has been invalidated in a relevant part.
An owner of an earlier trade mark may file an opposition against the registration of a trade mark by a third party. The opposition has to be filed within three months after publication of its registration.
Anyone with a legal interest may request an invalidation of a geographical indication, if it is proven that the statutory requirements for its grant had not been met.
Moreover, for patents, utility models, trade marks, designs, geographical indications, and semiconductor topographies, filing an opposition is available for anyone, but only within the term of six months from publication of the information regarding the granting of the right. In this case, the opposition may be filed only if there are grounds to invalidate such a right.
Third parties may also file objections concerning registration of plant varieties. Objections are examined by the Director of the Central Research Centre for Cultivar Testing.
Under art. 122 CPI the IP rights may be challenged by any interested party or by the public prosecutor ex officio. In certain cases specifically set out for trademark and design or models only the owner of previous right may challenge the validity of these IP rights.
Any person interested.
The opposition procedure in Israel is a pre-grant procedure. The period of opposition is 3 months from the publication on an intent of grant. Such an opposition may be submitted by any third party. Due to the pre-grant procedure, applicant is not able to initiate a patent infringement action during the opposition procedure.
One of the main defenses raised in a patent infringement action, is invalidity of the patent.
Cancellation of a granted patent may be submitted at any time as long as the patent is in force. Cancellation can be filed by any party, including the patent holder.
There are no oppositions to design registration.
During a copyright infringement action - the defendant may claim that the plaintiff does not own the rights or did not create the allegedly infringing work. It is also possible to submit a motion for declarative relief.
Any person and/or legal entity can file an opposition, provided there are grounds to do so. Israeli opponents do not have to be represented by an attorney, but foreign opponents need to work with a local counsel. The same applys to cancelation proceedings of a registered trademark.
The ownership of all the intellectual property rights indicated above can be contested by any interested third party. What changes is the procedure and instance in which this can be done.
In the case of industrial property assets, there is a period to file an opposition claim when the registration application is still pending. Once the registration is granted, it is possible to request its nullity before the same Patent and Trademark Office that granted the registration, based on specific causes indicated by the Law.
To challenge a copyright registration, it is necessary to file a claim before a civil court, for the purposes of which by means of a declaratory judgment the respective registration shall be rendered null and void. Therefore, it can only be done once the registration has been granted and not during its processing.
Any natural person or legal entity having a legitimate interest may challenge the IP rights described in questions 1-3.
A challenge against an IP right may be brought by anyone, however, challenges are typically brought by: (i) an entity seeking to clear the way of the IP right before bringing its own goods or services to a market, (ii) an entity already selling potentially infringing goods or services, which is concerned about infringement, and (iii) an entity accused of infringing the right in question.
Any interested party may challenge the IP rights and commence invalidation proceedings.
Any who has legitimate interest or also the intellectual property competent authority regarding compulsory licences and administrative tutelage processes.
In federal court, defendants who have been sued for patent infringement can challenge infringement as well as the validity of the asserted patent. However, anyone can challenge the validity of a patent at the Patent Trial and Appeal Board (PTAB). A third party can file petition with the PTAB for inter partes review of a particular patent and submit evidence that the patent is invalid. With regard to trademarks, Defendants to a complaint alleging trademark infringement can challenge the validity of the trademark registration asserted. And a third party can file a petition for an inter partes opposition, cancellation, or concurrent use proceeding at the Trademark Trial and Appeal Board (TTAB). Defendants named in a copyright infringement complaint filed in federal court can challenge the validity of a federal copyright registration.
For trademarks, any person who believes he would be damaged by the registration of a mark may file an opposition to the trademark application within the prescribed period for opposition.
For patents, any interested person may petition to cancel the patent or any claim thereof, or parts of the claim, on the ground that the claimed invention is not new or patentable; that 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 that the patent is contrary to public order or morality.
Patents: Anyone may file an opposition to a granted patent with the Japan Patent Office within six months after issuance of the official gazette in which the patent is published. Only interested parties can file for an invalidation trial at the Japan Patent Office at any time.
Trademarks: Anyone may file an opposition to a trademark registration with the Japan Patent Office within two months after issuance of the official gazette in which the trademark is published. Only interested parties can file for an invalidation trial at the Japan Patent Office at any time or within 5 years from registration depending on the reasons for invalidation.
Utility Model Rights and Design Rights: Anyone may file for an invalidation trial at the Japan Patent Office at any time.
Who can challenge?
any person who has an interest
any concerned person
a concerned person
It is therefore necessary for any party looking to challenge one of these rights, to ensure that they can prove that they are an "interested person" or a "concerned person" as without such proof, the challenge will fail.
Any third party that proves its legal standing to challenge the intellectual property right. The legal standing can be proven –among other scenarios- by means of any prior intellectual property right considered affected because of the existence of the right to be challenged.
Patents: Any person interested can challenge a patented invention by filing a post grant opposition. Any person interested or the Central Government or the alleged infringer (defendant) in an infringement suit can also file a revocation petition to challenge the validity of a patent. A patent application can be opposed by any person before its grant.
Designs: Any person interested may file a petition for cancellation for the registered design before the Indian Patent Office.
Copyright: There is no provision to challenge the registration of copyright before the grant. A person can however file an infringement suit or action for passing off in case there is a violation of his copyright by the registration or use of any such copyright.
Trade mark: Any person can oppose a trademark application. Further, any aggrieved person may make an application in the prescribed manner to the Intellectual Property Board (IPAB) or to the Registrar to cancel or vary the registration of a trade mark on the specific ground.
Geographical indications: Any person may, on application made to the Registrar in such manner and on payment of such fee as may be prescribed, give notice in writing in the prescribed manner to the Registrar, of opposition to the registration of the GI. Any aggrieved person may make an application to the Appellate Board praying for cancelling or varying the registration of a Geographical Indication or authorised user on specified grounds.
- Opposition to the registration of a trade mark may submit interested persons. Any person may file an opposition on absolute grounds or personal rights. The owners of earlier rights (their successors) may file opposition based on relative grounds.
- A trade mark registration may be invalidated by the judgment of a court based on absolute and relative grounds by the same persons who are entitled to file the above mentioned oppositions.
- A trade mark registration may be revoked by a judgment of the court if the trade mark, after its registration, has not been actually used for a period of five successive years in connection with the goods and services for which it is registered, and if there are not valid reasons for non-use. Any interested party may bring an action in the court.
Fundamentally any third party (it is not necessary to prove that he/she to be an interested party or aggrieved party) has the right to request State agencies to cancel registered IP rights including plant variety rights or copyright/related rights if he/she found that such protection is mis-granted or approved wrongly.
Owners of prior rights based on these. In addition, anyone can file for cancellation claiming that the IP right is not eligible for protection.
Any person who wishes that a patent is revoked may challenge the patent. After publication of the grant of the patent, such person must file a notice for revocation either with the Comptroller of Industrial Property or before the Patents Tribunal. Revocation of a patent may also be filed as a counter-claim to patent infringement proceedings.
Any person may challenge a trademark, by bringing an action for revocation by sworn application before the First Hall, Civil Court.
The grounds for an action to declare a design right invalid may be filed by the applicant for or holder of a conflicting right. In the case of armorial bearings, flags, emblems, and names of intergovernmental organisations, the application may be made only by the person entitled to the right.
As for administrative procedures, any party with legitimate interest may file a petition opposing the grant of an IP application, except for industrial designs, as the Brazilian IP law does not cover this possibility. Furthermore, it is also possible, even for industrial design rights, to challenge the administrative decision that granted an IP right. In respect to design rights, third parties may request that the BPTO conducts substantial analysis of the registered design, by which the conditions of originality and novelty will be examined and, if proven inexistent, the BPTO will file an ex officio administrative nullity procedure.
In regards to civil court procedures, the general conditions to litigate in Brazil are “the right of action”, which indicates that the plaintiff is an interested party, and “standing to sue”, which can be identified by the necessity of the action and its utility to the plaintiff, that is, it is convenient to obtain what the plaintiff seeks.
With that in mind, the infringement or the threat of infringement of an IP right can be questioned in court.
Any natural or legal person with a legal interest may challenge the intellectual property rights described in section A, cf. the Dispute Act section 1-3.