FAQ for Patent Application in Japan
FAQ for Patent Application in Japan
|What is the required document for filing a patent application in Japan?|
|(A) To enter a PCT application into the Japanese national phase, please provide the following documents by the deadline, i.e., 30 months from the earliest priority date claim:
(1) A copy of the PCT specification, claims and drawings
|(B) To file a Japanese patent application based on the Paris Conventions, please provide the following documents by the deadline, i.e., 30 months from the earliest priority date claim:(1) A copy of the specification, claims, drawings and abstract
(2) Full name and address of inventor
(3) Full name and address of applicant
(4) Filing date of priority application
(5) Application number of the priority application
(6) Priority documents
|What kind of language can be used to file an application?|
|An application must be filed in Japanese since all proceedings in the Japan Patent Office are performed in Japanese. We will prepare and file Japanese translation documents.|
For PCT cases, it is possible to file a Japanese translation of the application within two months from the entry into the Japanese national phase. In this case, we first need to enter the Japanese national phase by
filing a National Form Paper.
For Paris cases, we can first file an application in any language to secure the priority date and thereafter file a Japanese translation within 16 months from the priority date.
|Can I (individual residing outside Japan) apply for a Patent right in Japan?|
|If you belong to a company, please contact us through its IP works or related department. If this
is not the case, we can introduce to you our associated law firm in your country. Please feel free to ask us.
|When is it necessary for the applicant to file a power of attorney?|
|The Japanese Patent Office no longer requires a power of attorney for filing a regular patent application including entry into the Japanese national phase of a PCT application. A power of attorney is required
only when special representation becomes necessary, such as when an appeal is to be filed or a change of ownership is to be recorded.
|What types of forms for claims are allowed in Japan?|
|Claims in independent and single dependent format and in single independent and multiple dependent formats are all acceptable to the Japan Patent Office.|
|Does the number of claims affect the cost of filing an application?|
|When filing an application, the cost is not affected by the number of claims. There is no surcharge for multiple dependent claims.
However, when filing a Request for Examination, the official fee is calculated based on the number of claims.
|When entering the Japanese national phase, can claims be amended or deleted?|
|It is not possible to amend claims via an amendment when entering the national phase. If you would like to file an amendment, it is possible to file it after completing entry into the Japanese national phase. However, we recommend that such an amendment be filed at the time of filing a request for examination.|
|However, it is possible to delete claims at the time of entry into the Japanese national phase from a PCT application. Please note that such deletion should only leave independent claim(s) remaining or claim set(s) comprising independent claims and dependent claims. Otherwise, you may receive an official rejection for the reason that the filed Japanese translation is not a true translation of the PCT application, i.e., indefinite description.
Further, please note that the Article 19/34 amendments must be filed as-is and cannot be deleted.
|Is it necessary to file a Request for Examination of patent applications?|
|In order for an application to be examined, it is necessary to file a document entitled “Request for Examination” with the Japan Patent Office by the due date with payment of official fee in which the fee is calculated based on the number of claims. The deadline for filing a Request for Examination for a PCT case is three years from the International filing date, and three years from the filing date in Japan for a Paris Convention case. If an examination request is not filed by the deadline, the Japan Patent Office will deem the application withdrawn and irrevocably lapsed. An extension of time is not obtainable and
there is no remedy to revive an application that has failed to meet the deadline. A third party may file a Request for Examination for any laid open patent applications, in which case, the Japan Patent Office will notify the applicant.
|When is the deadline for filing a response to an office action?|
|If you receive a Notification of Reasons for Refusal, it is necessary to file a response to the office action within 3 months from the dispatch date of the Notification of Reasons for Refusal.|
|If you receive a Notification of Decision of Rejection, it is necessary to file an appeal together with an amendment (and an appeal brief) within four months from the forwarding date of the notice. Although an amendment must be filed together with the appeal, it is possible to defer the filing of an appeal brief for approximately one month or so. In this case, the JPO will issue an official order, normally within approximately two weeks, stating that the applicant must submit an appeal brief within 30 days from the forwarding date of the official order.|
|What are the procedures for registration after the Request for Examination?|
|After filing a Request for Examination, an application is usually examined after nine and a half months (9.5 months) from the date of filing a Request for Examination. If the examiner finds no reasons for rejection in the application, the application will be granted a patent. If the examiner finds reasons for rejection, a Notification of Reasons for Rejection (official action) will be issued. It is necessary to respond to such a notification to prosecute the application by filing an Amendment and an Argument. Such a notification may be issued two to three times if claims include reasons for rejection.|
|When may we expect to receive examination results in a normal application procedure?|
|Normally, an application is examined within approximately nine and a half months (9.5 months) after filing a Request for Examination.|
|When can an applicant file an amendment in Japan?|
|The following is the time period for filing an amendment:|
|(1) An amendment may be filed at any time before Notification of Decision to Grant a Patent is issued.|
|(2) An amendment may be filed within three months from the date of the Notification of Reasons for Rejection.|
|(3) An amendment may be filed within 30 days from the filing date of a Demand for Appeal. A Demand for Appeal may be filed within 120 days from the date of the Notification of Decision of Rejection.|
|When do registration fees for a patent application have to be paid?|
|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 Notification of Decision to Grant a Patent). The 4th 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.|
|How long does it take for a patent certificate to be issued after the patent registration fee is paid?|
|It is usually takes 2 to 3 weeks that the Patent is registered in the Japan Patent Office after the payment of the registration fee.
A patent certificate will be issued about two weeks after registration.
|When can a Japanese patent be enforced?|
|The patentee can enforce a patent against infringers when the patent is registered in the Japan Patent Office. However, since the Japan Patent Office does not inform us of the date of the registration in the Japan Patent Office prior to the issuance, it is difficult to know when a patent will be registered. If you would like to enforce a patent before we receive the patent, it will be necessary for us to perform a daily online check to determine whether or not the patent has been registered.|
|What is the maximum period of protection for a patent?|
|The maximum period of a patent right is 20 years counted from the Japanese filing date (for a PCT case, from the international filing date).|
|When do registration fees for a patent application have to be paid?|
|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 Notification of Decision to Grant a Patent). The 4th year annuity must be paid during
the third year or prior thereto from the date of registration.
|We missed one annuity payment. Is there a grace period after the due date during which annuity payments can still be made? If so, how long is such a grace period?|
|It is possible to maintain the patent by paying a doubled maintenance fee within six months after the due date.|
|Is it possible to amend claims after a patent application has matured into a patent?|
|It is not possible to substantively amend claims after payment of the registration fee. Only cancellation of claims, correction of typos, and narrowing scope of claims are allowed after issuance of a patent.|
|Regarding a PCT application, is it possible to substitute the originally filed application with the amended application under PCT Article 34?|
|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).|
|Regarding a PCT application, is it possible to file amendments that have not been accepted during the international phase?|
|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.|
|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.|
|An assignment and a Power of Attorney from both assigner and assignee and an assignment need to be filed.|
|What documents are necessary for recording a change of applicant’s name and/or address?|
|Basically, no documents are needed. We can record such changes with the Japan Patent
Office based on the information you provided.
|A power of attorney is needed. We can provide you with our power of attorney form.|
|In order to record a change of the ownership with the Japanese Patent Office, is it possible to use an assignment document , which was made for transfer of the patent rights in another country?|
|It is possible to record the change of ownership by submitting a notarized copy (photo copies
are not acceptable) of the assignment document. However, in the document, the full address of the assignor and the Japanese patent application number (or PCT application number) must be listed.
|The ownership of the PCT application has been changed at the international stage. How can this change be recorded before the Japanese Patent Office?|
|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. 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 Japan Patent Office to change the ownership. We can provide you with our assignment form and power of attorney form, if necessary.|
|How long does it take to record an assignment at the Japan Patent Office?|
|For patent applications, it takes about two months from the date the assignment is filed until it is recorded (the Japan Patent Office will not issue any notice thereof for patent applications).|
|For issued patents, it takes about two weeks from the date the assignment is filed until it is recorded and about one month until we receive notice thereof from the Japan Patent Office.|
|Is it possible to file one or more divisional applications based on the original application?|
|More than one divisional application can be filed based on the original application.|
|Can the second divisional application be filed from a first divisional application?|
|The divisional application can be filed based on the first divisional application. The second divisional application can also be filed but it is subject to many limitations. Accordingly, it is highly recommended
to file the divisional application based on the original application.
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