Before You Apply (Updated Summer 2020)
Q1: A filing deadline of a PCT application has passed. Is any patent protection available in Japan?
A1: When a deadline for entering the Japanese national phase has already passed, there is no way to file the case with a claim for priority.
Q2: The present invention was published in printed matter three months ago. Is it possible to file a patent application in Japan?
A2: Yes. However, an application must be filed within six months from the publication date to take advantage of provision under Section 30 (1) of the Japanese Patent Law (exceptions to lack of novelty of invention).
Further, it is necessary to submit a document proving that the invention claimed in the application is included in the invention presented in the printed publication. The document can be the original or a copy of the printed publication. If the printed publication was written in a foreign language, a Japanese translation must be attached. The publication and its translation must be submitted within 30 days from the filing of the application. No grace period is obtainable.
Q3: The present invention was exhibited prior to filing an application in Japan. Is it still possible to file a patent application claiming this invention?
A3: Under the Japanese Patent Law, once an invention is publicly exhibited in Japan or elsewhere prior to filing an application, the claimed invention is not considered novelty. However, if the invention was exhibited, it is possible to file an application in Japan within one year from the exhibition date under Section 30 (2) of the Law (exceptions to lack of novelty of invention).
To satisfy the requirements under Section 30(2), it is necessary to submit a document proving that the invention claimed in the application is included in the invention disclosed in the exhibition within 30 days from the filing of the application. You can obtain the details of the document to be submitted by accessing to the JPO’s home page (https://www.jpo.go.jp).
Q4: Is it possible to file any foreign language applications before the Japanese Patent Office?
A4: For an application based on the Paris Convention, it is possible to file the application in any language to secure a filing date. A Japanese translation must be filed within 16 months from the priority date.
Regarding PCT national entry, the national entry must be completed by the 30-months deadline and the filing of a Japanese translation may be postponed up to two months from the date of the national entry
Q5: How long does it take for a translation of one application?
A5: Usually, it takes about two weeks. However, it is possible to delay filing of a Japanese translation of an application by two months from the date of national entry.
When You Apply (Updated Summer 2020)
Q6: What documents are necessary for filing a PCT application?
A6: When entering the Japanese national phase of a PCT application, the following documents are needed:
- A copy of the PCT specification, claims and drawings;
- A copy of the Request;
- A front page of WIPO Publication;
- Any amendments under PCT article 19(1) and/or 34(2); and
- A copy of an International Preliminary Examination Report.
Q7: What is necessary for filing an application (based on the Paris Convention)?
A7: When filing a Japanese patent application, the following documents and information are needed.
- A copy of the specification, claims, drawings and abstract;
- The full name and address of each inventor;
- The full name and address of each applicant;
- The filing date of priority application;
- The application number of the priority application; and
- The priority documents (these can be filed within 16 months of the earliest priority date of the priority application(s)) or the DAS codes of relevant priority documents, if necessary.
Q8: Are any executed documents required for filing an application?
A8: No executed documents are required for filing an application. The JPO no longer requires a power of attorney for filing a regular patent application including entry into the Japanese national phase of a PCT application. However, a power of attorney is needed when special representation becomes necessary, such as when an appeal is to be filed. We will let you know when a power of attorney becomes necessary. However, please note that we may occasionally require a power of attorney, especially from a new client.
Q9: Regarding a PCT application, is it possible to substitute the originally filed application with the amended application under PCT Article 34?
A9: No. It is not possible to substitute the originally filed application with the amended application under PCT Article 34 in Japan. We must file both an original application and, separately, each amendment under PCT Article 34. (It is possible to substitute the originally filed claims with claims that were amended under Article 19, if it has been published.) Therefore, please provide us with an original specification and claims (in English) and an Article 34 amendment (in English).
Q10: Regarding a PCT application, is it possible to file amendments that have not been accepted during the international phase?
A10: No. When entering the Japanese national phase, we can file only the published application and amendments under PCT Article 19 and/or 34 that have been filed at the international phase. If you would like to change the claims, specification or drawings, it is possible to file an amendment after entering the Japanese national phase. However, we recommend that such amendments be filed at the time of filing a request for examination.
Q11: Regarding a PCT application, the International Preliminary Examination Report does not show an amendment under PCT Article 34 has been filed even though such an amendment was filed at the international stage. Can the amendment be filed as a PCT Article 34 amendment when entering Japanese national phase?
A11: No. The JPO will accept only published application and the amendments that appear in the International Preliminary Examination Report. Therefore, if you correct the error with the IPEA, the JPO will accept the Article 34 amendment. If you do not correct the error with the IPEA, it is possible to file a regular amendment to reflect these amendments after entering the Japanese national phase.
Q12: The ownership of the PCT application has been changed at the international stage. How can this change be recorded before the Japanese Patent Office?
A12: If you file a request to record the change of the applicant with the WIPO prior to the deadline of entering the national phase, please send us a copy of the request you filed (and/or Form PCT/IB/306, if you have it). If you do so, we can file the application in the name of the assignee when entering the Japanese national phase. Otherwise, an assignment and a power of attorney need to be filed with the JPO to change the ownership. We can provide you with our assignment form and power of attorney form, if necessary.
After You Apply (Updated Summer 2020)
Q13: When is the deadline for filing a request for examination?
A13: A request for examination must be filed within three years from the filing date (or the international filing date for a PCT case).
Q14: A request for examination was not timely filed by the due date. Is there any option available for revising the application?
A14: Article 48(3) of the Japanese Patent Law prescribes that, if a request for examination has not been made within the time limit, the application shall be deemed withdrawn. Accordingly, there is no way to restore the case, not even if the deadline was missed due to a mistake or an error.
Q15: What is the non-extendable deadline for filing priority documents (under the Paris Convention)?
A15: Priority documents must be filed within 16 months of the earliest priority date of the priority application(s).
However, it is possible to avoid submitting paper priority documents to the JPO by requesting that the JPO obtain electronic data on priority documents from an overseas IP office through the WIPO Digital Access Service (“DAS”). In order to use this document retrieval method, please let us know the DAS codes of relevant priority documents, if necessary.
Please also see the JPO’s website for further details:
Q16: When do filing priority documents become due (under the Paris Convention)?
A16: Priority documents can be filed within 16 months from the priority date. There is no need to file priority documents that were originally filed with the European Patent Office or the Korean Intellectual Property Office. The Japanese Patent Office does not accept priority documents in electronic form or in the form of a photocopy.
Q17: Why is an identification number assigned to an applicant and how does it work?
A17: An identification number is assigned to an applicant based on its name and address, and then it is used to identify the applicant for all of its applications. Then, if your client changes its name or address, you do not need to change the applicant’s name or address in each of the pending applications. Instead, it is sufficient to apply to change the information with respect to the assigned identification number. That is, you just need to change the recorded name or address, and the change will be reflected in all of the cases filed using that identification number.
The identification number concept was introduced with the “electronic” filing system to reduce the burden on both the applicants and the JPO by keeping certain standardized information on file. Therefore, it is recommended (although not required) that the identification number be used in all future applications. If additional applications are filed through other patent firms, you should inform them of the applicant’s identification number.
Q18: When do renewal fees for a patent application have to be paid?
A18: The annuity fees for the 1st to 3rd years must be paid as a registration fee upon issuance (within 30 days from the forwarding date of the notice of allowance). The fourth year annuity must be paid during the third year or prior thereto from the date of registration. In Japan, no annuity fees are required for pending applications.
Q19: What is the maximum period of protection for a patent?
A19: The term of a patent right is 20 years counted from the Japanese filing date (for a PCT case, from the international filing date).
Q20: What documents are necessary for recording a change of the ownership?
An assignment and a power of attorney need to be filed. We can provide you with our assignment form and power of attorney form.
Powers of attorney from both assigner and assignee and an assignment need to be filed.
Q21: What documents are necessary for recording a change of applicant’s name and/or address?
Basically, no executed documents are needed (however, sometimes a power of attorney is needed for old applications). We can record such changes with the JPO based on the information you provided.
A power of attorney is needed. We can provide you with our power of attorney form.
Q22: In order to record a change of the ownership with the Japanese Patent Office, is it possible to use an assignment document (or sales contract), which was made for transfer of the patent rights in another country?
Yes. It is possible to record the change of ownership by submitting a notarized copy (photo copies are not acceptable) of the assignment document (or sales contract). However, in the document, the full address of the assignor and the Japanese patent application number (or PCT application number) must be listed.
Q23: Is it possible to correct the number of the inventors after filing an application?
Yes. In order to, for example, exclude an inventor in an application, a declaration from the excluded inventor to the effect that he or she is not an inventor of the application is needed. Also, declarations from the other inventors to the effect that they are the only original inventors of the application are needed. We can provide you with sample forms of the declarations to be signed by inventors.
No. There is no way to change the inventors. This is because, according to the JPO, information about the inventors is not included as the registered items recorded in the JPO’s official register.