Center's Advisory Opinion

What is Center's Advisory Opinion?

his Center has started a service of issuing advisory opinions as a new business since March 2004. Such service includes, the scope of determination with respect to the technical scope of a patent invention and an invalidation determination to determine whether or not there are grounds for invalidation of a patent. It is called the "Center's Advisory Opinion" so as to distinguish it from the advisory opinions issued by the Japan Patent Office (Patent Law Article 71, Utility Mode Law Article 26, Design Law Article 25, and Trademark Law Article 28). More precisely, this Center determines the following matters:

1. Scope Determination

（1）Whether or not a specific product or method falls within the technical scope of the patent invention or registered utility model.
（2）Whether or not a specific design falls within the scope of the registered design and similar design thereto.
（3）Whether or not a specific mark falls within the scope of the trademark right or effect of the right based on defensive trademark registration.

2. Invalidation Determination

（4）Whether or not there are grounds for invalidation in the patent or registration with regard to a specific patent, utility mode registration, design registration, or trademark registration (including defensive trademark registration, hereinafter, the same).

Unilateral Opinion and Bilateral Opinion

There are two types of Center's Advisory Opinion depending on the parties' choice, these are: a unilateral opinion which shall be given based on the allegations and evidentiary materials presented by the applicant; and a bilateral opinion which shall be given based on the allegations and evidentiary materials presented by both the applicant and the respondent as identified in the submitted application.

With respect to a bilateral opinion, when this Center receives an application for a bilateral opinion, it notifies the respondent in writing that such application has been made and the Center also provides a duplicate of the written application and informs the respondent that an answer stating whether or not it accepts to be present at the proceedings, shall be provided by the respondent within ten (10) days from the date of receipt of notice. A bilateral opinion shall be conducted only when the respondent's acceptance has been received by the Center. Moreover, in an application for a bilateral opinion, the applicant can also choose to request a unilateral opinion in the event the respondent refuses acceptance.

The respondent can make a claim for an invalidation determination (hereinafter, the "Cross Invalidation Determination") with regard to the subject matter against the applicant in the proceedings of the Scope Determination. The examination of a claim for a Cross Invalidation Determination and that of a claim for an Advisory Opinion, which has been applied for, shall be conducted in consolidation.

Examination and Force of Center's Advisory Opinion

The examination shall, in principle, be conducted orally. The aim is to complete the examination within three months from the date of this Center's receipt of an application in a unilateral opinion and within four months from the date of this Center's receipt of a written answer in a bilateral opinion.

The party(ies) shall be notified of the conclusion of the examinations and the Center's Advisory Opinion shall be provided in writing, and such written Advisory Opinion shall be sent to the applicant in a unilateral opinion and to both parties in a bilateral opinion. The reasons supporting the panelists' opinion shall be described in the written Advisory Opinion.

The Center's Advisory Opinion is an opinion of the panelists, who are experts, appointed by this Center, and it shall have no binding force on any person. Moreover, no appeal (including lawsuit) can be entered against the Center's Advisory Opinion.

Process Flow of Center's Advisory Opinion

Process Flow of Unilateral Opinion

Process Flow of Bilateral Opinion

Agents

It is possible for parties themselves to make an application for an Advisory Opinion and to pursue it or through their agents. Attorneys-at-law or patent attorneys are eligible to be an agent. In cases where a party wishes to appoint an agent who is neither an attorney-at-law, nor a patent attorney, this Center's approval is required.

Panelists

This Center appoints as panelists, one attorney-at-law and one patent attorney from this Center's list of panelist candidates. In addition, when any of the panelists requests so, this Center may increase the number of panelists up to three, by appointing one additional panelist from the above list. See the list and background information of panelist candidates here.

In order to verify that a panelist has no interest with the parties to the Advisory Opinion, the panelist shall be subject to an information disclosure obligation, such as, an obligation to submit a "written commitment with respect to the interests" to this Center and to the parties.

The applicant may, upon written application, and the respondent may, upon written acceptance, designate a person whom they consider to be an interested third party in connection with the case, with a written designation of particular interested persons.

When there are circumstances which give rise to justifiable doubts as to a panelist's impartiality or independence, the parties to the Advisory Opinion may request a challenge to such panelist. When there are grounds for such request, this Center shall allow the challenge and appoint another panelist.

How to apply for an Advisory Opinion?

The applicant shall submit one original copy of a written application for a Center's Advisory Opinion, with the number of duplicates equal to the total number of respondents and panelists, and shall present such application and duplicates at the reception window of the Japan Intellectual Property Arbitration Center.

The written application for an Advisory Opinion shall include the following items.

the name (or title, hereinafter, the same), domicile (or residence, hereinafter the same), and contact information (telephone number, fax number, e-mail address) of the applicant, and name of the applicant's representative if the applicant is a juridical person;
the name and domicile of the respondent, and name of the respondent's representative if the respondent is a juridical person;
the names, domiciles, and contact information (telephone numbers, fax numbers, e-mail addresses) of agents, if any;
the gist of the application;
the grounds for the application; and
identify whether the applicant requests a unilateral opinion or a bilateral opinion.

The following attachments are necessary for an application for an Advisory Opinion.

the certificate of qualification for the applicant's representative if the applicant is a juridical person;
the certificate of qualification for the respondent's representative if the respondent is a juridical person;
the document which proves an agent's representative capacity, if an agent has been appointed;
where a bilateral opinion is requested, a document which indicates the applicant's preference in a situation where the respondent refuses to attend proceedings, thus, whether the applicant will request a unilateral opinion or prefers to withdraw its application;
documentary evidence; and
duplicates of documentary evidence (the number of duplicates shall be the sum of the number of respondents and panelists).

The documents as set forth in (1) and (2) above are available at the Legal Affairs Bureau which exercises jurisdiction over the relevant company according to its address. Please prepare those issued within three months.

As for formats and samples, please see the following "4.7 Formats and Samples for Advisory Opinion Proceedings." If you have any questions, do not hesitate to contact the secretariat. (Samples are in the process of being created. Thank you for your patience.)

Fees for Advisory Opinion

（1）Basic Fee

Unilateral Opinion

・Application Fee
300,000 yen (+tax, hereinafter the same in chapter "4. Center's Advisory Opinion")
The applicant shall pay the application fee at the time of submitting an application for an Advisory Opinion.

・Fee for Oral Hearing
100,000 yen(+tax) / one hearing
The applicant shall pay the fee for an oral hearing, and as a general rule, promptly after the termination of each hearing.

Bilateral Opinion

・Application Fee
400,000 yen(+tax)
The applicant shall pay the application fee at the time an application for an Advisory Opinion is submitted. 30,000 yen(+tax) of this shall be a reception / acceptance confirmation procedure fee. In the case of the respondent's refusal of acceptance, the application fee, after deducting the reception / acceptance confirmation procedure fee, shall be reimbursed to the applicant.

・Cross Invalidation Determination Application Fee
200,000 yen(+tax)
In the case where the respondent makes an application for Cross Invalidation Determination against the applicant in the proceedings of the Scope Determination, it shall pay this application fee at the time of such application for Cross Invalidation Determination.

・Fee for Oral Hearing
100,000 yen(+tax) / one hearing
Both applicant and respondent shall pay the same amount of fee for each oral hearing (100,000 yen(+tax) each / one hearing), and as a general rule, promptly after the termination of each hearing.

（2）Additional Fee (Applicable to both Unilateral Opinion and Bilateral Opinion)

One half of the application fee above (with regard to an application for a Cross Invalidation Determination, the same amount as the application fee thereof) shall be added to the application fee for each additional matter to be considered in an application, or each additional number of Subject Matter or Subject Product, etc. on which an application is made.

Matters to be considered

whether or not a specific product or method falls within the technical scope of the patent invention or registered utility model;
whether or not a specific design falls within the scope of the registered design and similar design thereto;
whether or not a specific mark falls within the scope of the trademark right or effect of the right based on defensive trademark registration; or
4. whether or not there are grounds for invalidation in the patent or registration with regard to a specific patent, utility mode registration, design registration, or trademark registration (including defensive trademark registration, hereinafter, the same). Provided, this shall be limited to the application for an Advisory Opinion based on the grounds specified by the applicant

Number of Subject Matters

Patent or utility mode registration: Number of patent claims or utility mode registration on which an Advisory Opinion is requested (Even in the case where one claim refers to one or more other claims, it shall be counted as one.)
Registered design: Number of registered designs on which an Advisory Opinion is requested.
Registered trademark: Number of categories of designated goods or designated services of the registered trademark on which an Advisory Opinion is requested.

Number of Subject Products, etc

Number of products, methods, designs, or trademarks specified in a written application for an Advisory Opinion.

Beneficiary Bank Account

Japan Intellectual Property Arbitration Center
Mitsui Sumitomo Bank Kasumigaseki branch office
Ordinary Deposit Account No. 6559091

Formats and Samples for Center's Advisory Opinion Proceedings

(Samples are in the process of being created.Thank you for your patience.)

Please see the following formats for the proceedings of Center's Advisory Opinion.

Written Application for Center's Advisory Opinion
1. Invalidation Determination
2. Scope Determination
Written Answer to Center's Advisory Opinion
Written Designation of Particular Interested Persons
Power of Attorney (Japanese)

Procedural Rules for Cente's Advisory Opinion

The proceedings of Center'fs Advisory Opinion shall be conducted in accordance with the Procedural Rules for Center's Advisory Opinion.