In this article, we will provide information on the procedures for entering a PCT application into the national phase in Japan, focusing on the following five frequently asked questions.
1.Time limit: 30 Months from the Priority Date
Q: When is the deadline for entering a PCT application in Japan?
A: The time limit for entering into the national phase in Japan is 30 months from the priority date.
- Requirements for Restoration in Case of Missed Deadlines
In Japan, the requirements for restoration in case of missed deadlines have been relaxed since the revision of the law, effective April 1, 2023. This remedy also applies to the submission of a translation of an international patent application filed in a foreign language, allowing for the possibility of submitting national entry documents together with the translation even if 30 months have elapsed.
For more information, please refer to the following article.
- Applicant/Inventor Changes Due to Name Change or Assignment
If the name of the inventor or applicant is changed after filing the PCT application, or if the name is changed due to an assignment, etc., the “current correct name” and “new name” should be indicated in the documents for entering into Japan. If these procedures have not been completed at the national stage, the name change will be processed at the time of entering into Japan with certifying documents.
At the time of national entry, please verify whether there have been any changes regarding the applicant or inventor since the filing of the international application.
2.Special Time Limit for Submitting Translations
Q: Is there a means available for cases where it is unlikely that Japanese translations will be ready by the deadline for national entry in Japan?
A: Yes, there is. If you submit your national documents during the following period (i), you may submit translations within two months from the date of submission of national documents.
3.Amendment and Request for Examination
Q: When is the deadline for submitting a request for examination?
A: Within three years from the international filing date.
Since the official fee for requesting examination depends on the number of claims, it is recommended that the applicant consider amending claims around the time of request for examination, especially when there are many claims at the time of filing the international application.
The beginning of the period during which amendments can be made depends on when the national documents and translations are submitted, but amendments can be submitted with the request for examination after the national documents and translations have been submitted.
（Schedule of fees (Official JPO fees) https://www.jpo.go.jp/e/system/process/tesuryo/hyou.html#RequestForExamination）
4.Submit Documents for Qualified Exception to Loss of Novelty!
Q: If I enter a PCT application filed after a presentation at an academic conference, etc., to Japan, can I apply for something qualify like a grace period?
A: By submitting documents within the prescribed period, you may qualify for an exception to the examination process for presentations at the conferences. It is important to submit documents at the time of (or immediately after) national entry in Japan to qualify for this exception.
If a “declaration as to non-prejudicial disclosures or exceptions to lack of novelty” has been filed in the national phase, a form may be omitted. However, even in that case, the following document must still be submitted
In other words, in order to apply for the above regulations in Japan, it is necessary to submit some documents at the national entry phase. Please note again that the procedures are different from those in the U.S. and other countries, and that an application filed at the examination stage will not be filed in time.
5.Reconfirming Priority Documents
Q: If priority documents were not submitted during the international phase, can they be submitted after entry into Japan?
A: Yes, they can.
A certificate of priority may be filed from the time of submitting the national documents to within two months after the expiration date of the national document filing period.
If the applicant wishes to request restoration of the right of priority in Japan for an international application for which the priority period has expired, the prescribed document must be submitted within one month after the expiration of the time limit for submission of the national documents (or within one month after the date of the request for examination if the request for examination was filed within that time limit).
Japan will adopt the “unintentional” standard for the restoration of the right of priority for international applications whose priority period has expired on or after April 1, 2023. If the priority right has been restored by the receiving office based on the “due care” or “unintentional” criterion, it will be effective in Japan unless there is reasonable doubt (no need to request the restoration of the priority right again in Japan).
* In addition to the above points, we have received many inquiries about PPH at the time of entering into Japan. Please refer to the following article for frequently asked questions and answers about PPH.
“How to expedite the examination of your patent application”
https://www.eng.takaokalaw.jp/2023/04/06/how-to-expedite-the-examination-of-your-patent-application/
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