Japanese Patent Procedure
PATENT PROCEDURES BEFORE JAPAN PATENT OFFICE (JPO)
(Note: The following information should be used only for general reference purposes. If you need more detailed information in a specific situation, please contact us.)
1. Filing Japanese Patent Application
(1) Filing Japanese Patent Application by claiming Convention Priority
A Japanese patent application can be filed by claiming a Convention priority within one year from a priority date, by submitting a request, description, claims, drawings (optional, but normally required), and abstract in the JPO. If there is not sufficient time to translate description etc. into Japanese, an applicant can file a request with English description, claims, drawings, and abstract, and in this case, must submit Japanese translation of these documents within one year and two months from the priority date.
(2) Filing Japanese Patent Application based on PCT
In order to file a national-stage application based on PCT, an applicant must submit Japanese translation of description, claims, drawings, and abstract of a PCT application within 30 months from a priority date. If an applicant submits a request for national-stage entry ("Kokunai Shomen") during the two-month period before the 30-month deadline, the applicant can submit Japanese translation of the description, claims, drawings, and abstract within two months from the submission date of the request for national-stage entry.
If an applicant has filed an amendment based on PCT Article 19, the applicant can submit Japanese translation of amended claims in addition to/ instead of original claims. In addition, if an applicant has filed an amendment based on PCT Article 34, the applicant must submit Japanese translation of the amendment in order for the amendment to be considered.
<Disclosure of Prior Art Information>
Japan does not have a strict information disclosure requirement such as that in U.S. An applicant only need to list at least one prior art document in the specification. On the other hand, a third party can also submit prior art documents to a patent application or a patent.
2. Request for Examination
An applicant (or anyone) can file a Request for Examination within three years from the date of filing of an application in Japan, or the international filing date if the application is based on PCT. If a Request for Examination is not filed by the due date, the application is deemed to be withdrawn.
< Accelerated Examination>
A Request for Accelerated Examination can be filed depending on whether predetermined conditions are met (e.g. the applicant is a small business of a predetermined size, etc).
3. Publication of Application
An application is published after 18 months elapses from the priority date. In case of a PCT national-stage application, a Japanese version of the PCT application is published at predetermined timing after its Japanese translation is submitted.
4. Substantive Examination
Main requirements for patentability are described below.
(1) Statutory Subject Matter
It is required that a subject matter is an invention having industrial applicability. For example, a patent is not granted to a natural law itself, a discovery, a matter that goes against natural laws, a matter that does not utilize natural laws, a non-technical idea etc. A computer program is patentable under the Japanese patent law.
An invention is unpatentable if (i) the invention was publicly known in or outside of Japan before filing of the application; (ii) the invention was publicly implemented in or outside of Japan before filing of the application; or (iii) the invention is described in a publication which was distributed in or outside of Japan before filing of the application or the invention was made available to public through electronic communication lines (e.g. Internet etc.) in or outside of Japan before filing of the application.
(3) Inventive Step
An invention is unpatentable if a person having an ordinary skill in the art could have readily made the invention before filing of the application on the basis of inventions disclosed in publications which were distributed in or outside of Japan before filing of the application or on the basis of inventions available to public through electronic communication lines (e.g. Internet etc.) in or outside of Japan before filing of the application.
(4) Article 29 bis
An invention is unpatentable if the invention is described in a patent publication that is filed before the filing date of the present invention but published after the filing date of the present invention. This provision does not apply if the inventor or the applicant of both applications is the same person or company.
(5) Exception on Loss of Novelty
If the inventor or the assignee of an invention discloses his invention to public, the inventor or the assignee can file a patent application within six months from the date of disclosure. The application must be accompanied by a proof document showing that the invention is eligible for this provision.
(6) Double Patenting
If two or more patent applications are filed for the same invention, the first applicant can obtain a patent.
5. Special Types of Application
(1) Divisional Application
A divisional application can be filed based on a patent application (i) during a period in which amendments to the specification etc. can be made; (ii) within 30 days from a decision of grant; and (iii) within three months from a decision of rejection. No new matter can be added. Note that there is no U.S. CIP type application in Japan.
(2) Application Claiming Domestic Priority
An application can be filed by claiming domestic priority within one year from the filing date of a prior application.
6. Office Actions from JPO
(1) First Notification of Reasons for Rejection (First Office Action)
The applicant can make amendments to claims, description, or drawings within a specified period (typically 60 days for Japanese residents and three months for foreign residents; extension of periods can be made on request). The amendments shall not go beyond the claims, description, or drawings as originally filed.
Also, the amendments shall be such that amended claimed invention satisfies unity of invention (i.e., having special technical feature) relative to pre-amendment claimed invention for which patentability has been examined.
(2) Final Notification of Reasons for Rejection (Final Office Action)
If the applicant files an amendment in response to a first notification of reasons for rejection, and another reason for rejection arises as a result of the amendment, the applicant will receive a final notification of reasons for rejection. In this case, amendments are limited to canceling claim(s), restricting element(s) of claim(s), correcting typographical error(s), and clarifying indefinite language.
(3) Decision for Rejection
If the applicant files a response in response to a notification of reasons for rejection, and the examiner still maintains the reasons for rejection, the applicant will receive a decision for rejection. In this case, the applicant can file an appeal to a board of appeals within three months from the date of the decision for rejection. A divisional application can also be filed within this period.
(4) Decision for Grant
If the applicant receives a decision for grant, the applicant must pay a registration fee within 30 days from the date of the decision for grant. A divisional application can also be filed within this period.
7. Trial and Appeal
(1) Appeal to Decision for Rejection (Kyozetsu Satei Fufuku Shinpan)
The applicant can file an appeal to a board of appeal within three months from the date of a decision for rejection. The board of appeal is constituted by three appeal examiners (Shinpankan) at JPO.
(2) Opposition (Igi Moushitate)
A third party can file an opposition within six months from the date of publication of a patent. The opposition is a procedure in writing which is considered by a board of appeal at JPO.
(3) Trial for invalidation (Mukou Shinpan)
A third party (only a party having an interest) can file a request for trial for invalidation any time in order to invalidate a patent. The trial for invalidation is an inter partes procedure which is considered by a board of appeal at JPO.
(4) Trial for Reexamination (Teisei Shinpan)
A patentee can file a request for trial for reexamination of a patent if an error is found in the patent, if a relevant prior art is newly discovered, and so on. The trial for reexamination is an ex partes procedure which is considered by a board of appeal at JPO.
(5) Appeal to IP High Court
If a decision made by a board of appeal at JPO is unsatisfactory, an appeal can be made to the Intellectual Property High Court within 30 days from the decision.
8. Patent Rights
(1) Patent Term
A patent term begins from the date of registration of a patent. A patent term ends at the day after 20 years from the filing date of the patent. There is no patent term adjustment as in the U.S. There is an exception for patents in the fields of pharmaceuticals and agriculture.
(2) Remedies against Patent Infringement
A patentee can demand injunction and damages against an infringer.