In our recently published article “Five Points to Consider When Entering PCT Applications into the National Phase in Japan, ” we discussed five frequently asked questions about the procedure for entering the national phase of PCT applications in Japan.
In this article, we will discuss the translation requirements for entering the national phase of PCT applications in the Asian Pacific region outside Japan, with a particular focus on countries that require translation into languages other than English. We will also highlight important considerations when filing Japanese translations.
1. Japanese Translation Requirements for PCT National Phase Entry
As detailed in our previous article, the deadline for national phase entry in Japan is 30 months from the priority date. If the national phase documentation is submitted within this time limit, the Japanese translation may be filed within 2 months from submission date without any special extension procedures. (This two-month translation submission is only available when the national phase documentation is submitted between two months prior to the deadline and the deadline date itself.)
Following the law revision effective April 1, 2023, the requirements for re-establishment of rights after missed deadlines have been relaxed, including for translation submissions. Further details can be found in our article at : “[Revision of Japanese Patent Law] Relaxation of restoration requirements after the period has lapsed“
2. Non-English Translation Requirements in Asian Pacific Region
In the Asian Pacific region, several countries require translations of PCT applications into languages other than English at the time of national phase entry, including Japan, China, Korea, Thailand, Vietnam, and Indonesia. The table below outlines the deadline of entering national phase, submission of translations, and grace period for each country.
While most jurisdictions permit translation submissions up to 32 months from the priority date upon completion of prescribed national phase entry procedures, notable exceptions exist: Thailand requires translations within 30 months from the priority date, and Vietnam within 31 months.
The information presented in the table below reflects the requirements as of September 10, 2024. Consultation with local representatives regarding current requirements is recommended prior to initiating procedures.
3. Key Points to Consider When Entering PCT Applications into the Japanese National Phase
１）Claim Language Commonly Cited in Clarity Requirement Violations
During examination in Japan, certain terms in foreign-originated applications are frequently cited as violations of the clarity requirement under Patent Act, Article 36, Paragraph 6, Item 2.
Terms such as “about,” “approximately,” “substantially,” and “essentially” in claims often trigger rejection on grounds of ambiguous description. Unlike in other jurisdictions, maintaining such qualifying terms rarely resolves the rejection. Resolution typically involves deletion of these terms.
Similarly, the use of “said” or “the” frequently results in rejection when the referenced term lacks an antecedent basis in the claim, particularly when these articles modify terms appearing for the first time in the claim.
Such clarity violations are frequently cited by examiners. To avoid unnecessary office actions, particularly in cases requiring expedited patent grant, consideration should be given to preemptively removing such terms through voluntary amendment.
２）Multi-Multi Claims Restriction
The Japan Patent Office (JPO) has implemented restrictions on multiple dependent claims depending on multiple dependent claims (“Multi-Multi Claims”). These restrictions apply to PCT applications with international filing dates on or after April 1, 2022 entering the Japanese national phase.
The presence of Multi-Multi Claims at the start of examination may result in claims being excluded from examination scope. Moreover, amendments made to address Multi-Multi Claims may be subject to the same strict limitations as those applicable to Final Office Action responses. Therefore, addressing Multi-Multi Claims is recommended either at the time of Japanese national phase entry or when filing the examination request.
For more information on the Multi-Multi Claims restriction, please refer to this article.
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