This article outlines the examination process for Japanese patent applications, culminating in the grant of patent rights. The model case presented below illustrates the entire process, highlighting key deadlines and associated expenses.
To initiate the examination of a Japanese patent application, a Request for Examination must be filed within 3 years from the application date.
If the Japan Patent Office (JPO) identifies reasons for refusal, a Notification of Reasons for Refusal is typically issued within approximately 10 months from the examination request date, although this period may vary depending on the specific case. For overseas applicants, the response period to an Office Action (OA) is 3 months, with the option to request up to two extensions, each extending the period by up to 3 months.
Upon resolution of all reasons for refusal, a decision to grant the patent is issued. The patent right is then established by payment of the patent fee within 30 days of this decision.
In cases where the reasons for refusal cannot be overcome through OA responses and a decision of refusal is issued, the applicant may file a request for appeal. For detailed information on the appeal process against decisions of refusal, refer to:
https://www.eng.takaokalaw.jp/2023/02/09/appeal-against-decision-of-refusal-for-patents/
It is important to note that official fees, particularly those for the request for examination and the request for appeal, are calculated based on the number of claims at the time of filing each request. Consequently, applicants may reduce official fees by strategically reviewing and potentially amending the number of claims at these critical junctures.
1.Request for Examination
A request for examination must be submitted within 3 years from the filing date (or international filing date for PCT applications). The official fee for this request is calculated based on the number of claims. Consequently, for applications with numerous claims, submitting an amendment to reduce the claim count concurrently with the examination request can result in a lower official fee.
Two distinct systems are available for expediting the examination process. For a comprehensive comparison of these systems, refer to:
https://www.eng.takaokalaw.jp/2023/04/06/how-to-expedite-the-examination-of-your-patent-application/
Applications containing multiple dependent claims (multi-multiple claims) at the time of examination may face exclusion from examination or be subject to amendment restrictions similar to those applied in Final OAs. To mitigate these risks, it is advisable to address multi-multiple claims prior to the commencement of examination. For further information on the treatment of multi-multiple claims, please refer to:
https://www.eng.takaokalaw.jp/2023/07/06/restriction-of-multi-multi-claims-in-japan-and-asia/
2.Response to Office Action
The interval between filing a request for examination and receiving an Office Action (OA) varies, with an average duration of approximately 10 months. For overseas applicants, the OA response period is 3 months, with the option to request up to two extensions, each extending the period by up to 3 months. Each extension request incurs an official fee of 2,100 yen. Amendments in response to the First OA are subject to fewer restrictions and offer greater flexibility compared to those made in response to the Final OA. Particular attention should be paid to Japan-specific provisions, such as Article 50-2, which imposes limitations on the scope of amendments permissible for divisional applications. For a comprehensive analysis of the Article 50-2 limitations, refer to:
https://www.eng.takaokalaw.jp/2023/10/13/japan-specific-notices-that-limit-the-scope-of-amendments-that-may-be-made-to-divisional-applications/
In addition, the following articles offer in-depth examinations of key aspects specific to Japanese patent examination:
(1) Human diagnostic methods
(2) Support requirements
(3) Enablement requirements (feasibility requirements)
These resources provide valuable insights into the nuances of Japanese patent examination:
（１）https://www.eng.takaokalaw.jp/2023/11/17/treatment-of-medical-related-inventions-in-japanese-patents/
（２）https://www.eng.takaokalaw.jp/2023/12/01/specific-examples-of-violations-of-support-requirements-and-suggested-responses/
（３）https://www.eng.takaokalaw.jp/2023/12/15/specific-examples-of-japanese-enablement-requirements-and-points-to-consider/
3.From Decision to Grant a Patent to Registration
Upon resolution of all reasons for refusal, or if no such reasons exist, a patent is granted. The patent right is then established by payment of the patent fee within 30 days of the grant decision. Japanese patents do not require maintenance fees prior to grant; only post-registration annuities apply, with the first annuity due date calculated from the registration date.
The patent allowance period presents an opportunity to file a divisional application. It is important to note that any divisional application must be filed before the patent registration. Consequently, the decision to file a divisional application post-grant must be made promptly.
Name change procedures after registration are both costly and complex. Therefore, it is advisable to complete any necessary name change procedures during the application stage, prior to patent grant.
Japan has implemented electronic issuance of patent certificates as of April 2024, aligning with practices in China and the United States. However, patent agents retain the option to request paper certificates if desired.
Japanese patent law includes a post-registration opposition system. Notably, more than 85% of patents subjected to opposition are maintained, either with or without claim corrections. This high rate of patent maintenance following opposition proceedings is a distinctive feature of the Japanese patent system.
4.After Decision of Refusal
If the OA response fails to overcome the reasons for refusal and a decision of refusal is issued, an appeal may be filed. Should an amendment be submitted concurrently with the appeal request, the Examiner will conduct a re-examination. The success rate for such re-examinations is approximately 50% or higher. For more detailed information on appeals against decisions of refusal, refer to:
https://www.eng.takaokalaw.jp/2023/02/09/appeal-against-decision-of-refusal-for-patents/
A divisional application can be filed within three months of the first decision of refusal. It is crucial to note that this may be the final opportunity to file a divisional application for the case.
As of April 1, 2024, a new provision in Japanese patent law allows for the examination of divisional applications filed after a decision of refusal to be based on the results of the appeal of the original application. For more information on this new procedure, see:
Takaoka IP is dedicated to helping you navigate the intricacies of the Japanese patent and trademark system. Our recommendations are strictly aligned with the latest Japanese laws, regulations and standards, and we can help develop customized strategies that address specific client requirements for the most effective rights acquisition.
