FAQ

The Center’s Advisory Opinion

The Center's Advisory Opinion system

What kind of system is the Center's Advisory Opinion?: The Center's Advisory Opinion is a system by which the appointed panelists, composed of one attorney-at-law and one patent attorney, make a scope determination and an invalidity determination.
In a scope determination, the panelists will determine whether or not a particular product or process falls under the technical scope of a patented invention, whether or not a particular design falls under the scope of a registered design or a similar design, or whether or not a particular mark used for particular goods (or services) falls under the scope of validity of a trademark or rights based upon a defensive mark registration.
In an invalidity determination, the panelists will determine whether or not any grounds for invalidation exists in the patenting or registration of a particular patent, registered utility model, registered design or registered trademark (including registered defensive marks).
The Center's Advisory Opinion is available in two types: a bilateral opinion issued for a case in which both the applicant and an opposing respondent take part, and a unilateral opinion issued on the basis of arguments and documentary evidence presented only by the applicant.

We think that a product manufactured and sold by Company B may have infringed on our patent rights, but we are not entirely certain about this infringement. Because Company B is in the same line of business as we are, we want to request an injunction of this infringement very carefully. Can we ask the Center to issue an Advisory Opinion on whether or not Company B has infringed on our rights without them knowing about it?: You can apply for the Center's unilateral opinion. In the Center's Advisory Opinion system, two panelists will be appointed from among the registered candidates for mediators and arbitrators who will provide an Advisory Opinion as to whether or not a particular product or process falls under the technical scope of a patented invention. These procedures for an Advisory Opinion are not open to the public and thus are never known to Company B. If you want to receive an Advisory Opinion after hearing the views of Company B, you can also apply for a bilateral Center's Advisory Opinion by appointing them as a respondent.

Company B argues that a product or process they make or use (1) not only does not fall under the technical scope of our (Company A) patented invention, (2) but also that they have prior user rights to the product or process even if the product or process falls under the technical scope of our patent. In this case, can we apply for the Center's Advisory Opinion only as to whether or not Company B has infringed on our patent rights, including whether or not they have prior user rights (without demanding any compensation for damages or an injunction even if they have infringed on our rights)?: You can apply for a Center's Advisory Opinion as to whether or not a product or process falls under the technical scope, but the Center does not provide Advisory Opinions about prior user rights. In addition, the Center's Advisory Opinion has no legally binding force.

How are the Center's panelists appointed?: The Center appoints one attorney-at-law and one patent attorney from a list of panelist candidates as panelists.

How is the impartiality of the Center's panelists guaranteed?: The Center requests the applicant and respondent for a Center's Advisory Opinion to present a written designation of particular interested persons, which designates third parties who are supposed have a special interest in the case. The written designation of particular interested persons is disclosed to the panelists, who will present, before taking the position, a written declaration stating that they have no interest in the interested persons designated by the parties.
If the parties have a good reason for doubting the impartiality or independence of any panelist, they can apply to challenge the panelist.

What kind of costs are involved in an application for the Center's Advisory Opinion?: The application fee for a unilateral opinion is ￥300,000(+tax). In addition, the fee for each oral hearing is ￥100,000(+tax).
For a bilateral opinion, the application fee is ￥400,000(+tax), and the fee for each oral hearing is ￥100,000(+tax).

Can we ask the Center to reduce the application fee for an Advisory Opinion?: The Center has a system for reducing the fee upon the request of the applicant when it is determined that the applicant has difficulty paying the full amount of the fee. For the conditions for fee reduction and other details, please contact the Center's secretariat.