Patent
Patenting Procedures through Paris Route
The Patenting Procedures through Paris Routes will be described below with reference to the following flowcharts
Patenting Procedures through Paris Route
Japanese Patent Application
1. FILING DOCUMENTS
The applicant should file following documents to the JPO.
(1) Petition
(2) Claims
(3) Description
(4) Drawings (if needed)
(5) Abstract
1.1 PETITION
The petition should contain following items:
The name of the applicant;
The domicile/residence of the applicant;
The name of the inventor;
The domicile/residence of the inventor.
The applicant can be a physical/legal person. All documents above must be written in Japanese except applications in a foreign language (see the item 4 below).
1.2 CLAIMS
Claims must be numbered consecutively and their dependency should be referenced by number. Multiple dependent claims are admissible.
1.3 DESCRIPTION
Description should contain following items:
Title of the invention;
Brief description of drawings (if needed);
Detailed description of the invention.
Detailed description of the invention is required to contain a problem to be solved, means for solving the problem and matters necessary for understanding the technical significance of the invention. Unlike the US practice, other documents cannot be incorporated by references into the description. In this case, applicant should put the contents directly into the description.
1.4 DRAWINGS
Drawings must be numbered consecutively. Colored drawings are not admissible.
1.5 ABSTRACT
Abstract should contain a brief description of the invention and the number of a representative figure of the accompanying drawings.
2. OFFICIAL FEE
The applicant should make a payment of 15,000JPY as an official filing fee to the JPO when filing the application(AS OF AUGUST 1, 2011).
3. ATTORNEY
An applicant who does not have domicile/residence in Japan should designate a Japanese patent attorney as his/her/its representative.
4. APPLICATION IN FOREIGN LANGUAGE
The applicant can file a patent application which contains a petition written in Japanese accompanied by documents written in a foreign language (only English is admissible currently) containing items to be described in claims, description, drawings and abstract. The application is received as a regular national application and the date of receipt is accorded as the filing date. The applicant is required to submit a Japanese translation within 14 months from the priority date. See Q5 in Q&A for more detailed information. The official fee for filing a foreign language application is 24,000JPY (not 15,000JPY.)(AS OF AUGUST 1, 2011)
5. APPLICATION CLAIMING PRIORITY
The applicant can claim priority under the Paris Convention and TRIPS. To claim priority, the applicant is requested to:
specify the date and the name of the country of the earliest application in the request;
submit the priority certificate to the JPO within 16 months from the priority date with a document containing the application number of the earliest application. If the country of the earliest application is a country which exchanges priority document data with the JPO, the submission can be omitted. These countries are currently US, Korea and the EPO.
Request for Examination
No application will be examined unless examination is specifically requested. A request for examination can be filed within three years from the filing date by the applicant or a third party. If a request for examination was not filed by the due date, the application shall be deemed withdrawn. It is impossible to revive the application even if filing of the examination request were missed in error.
The official fee for filing a request for examination is as follows:
118,000JPY + 4,000JPY -per claim(AS OF AUGUST 1, 2011. Please see http://www.jpo.go.jp/cgi/linke.cgi?url=/tetuzuki_e/ryoukin_e/ryokine.htm for details)
Recently, the JPO has announced that an application will be examined after 27 months from the filing of a request for examination (according to the Japan Patent Office Annual Report 2008). Please note, however, that the period of time before the issuance of the first action varies depending on the technical field.
It is possible to have examination of applications accelerated. As to the accelerated examination, please refer to Q67 of Q&A.
The half amount of the request for examination fee shall be refunded to the applicants upon their request if they withdraw or abandon the application before the examination procedure has been started.
Arguments and/or Amendments
The applicant may file arguments and/or amendments to the description, claims or drawings within the period of time for response designated in the Notice of Reasons for Rejection. Normally, a three-month period for response is set. An extension of time for up to three months is available by filing a written request and paying the prescribed fee.
Basically, the applicant may amend the description, claims and/or drawings within the original disclosure when the rejection has not been made final. When amending claims, it is particularly required that amended claims and rejected claims meet the requirement of unity of invention.
When the rejection is made final, amendments to the description, claims and/or drawings are limited to those for the purpose of:
1) deleting a claim,
2) restricting the scope of claims (limited to the cases where the restriction is to restrict matters required to identify the invention stated in a claim or claims, and, in addition, there is no change resulting to industrial applicability and the problem to be solved of the invention stated in the claims or claims prior to the amendment as a result of the amendment),
3) correcting a typographical error, or
4) clarifying an ambiguous statement (limited to the matters stated in the reasons for refusal in the Notice of Reasons for Refusal.)
The applicant may file a divisional application within the designated period of time for response. For example, the applicant may file a divisional application directed to non-elected claims.
Decision of Allowance by Examiner
1. Notice of allowance
Where no reasons for rejection are found for a patent application, the examiner shall render a decision to the effect that a patent is to be granted. Thereafter, a certified copy of the examiner’s decision to the effect that a patent is to be granted (notice of allowance) will be served.
2. Divisional applications after notice of allowance
In applications filed on or after April 1, 2007 and after a decision has been made to allow the application during examination (not in the Appeal procedure), an applicant can file a divisional application within 30 days from the date on which a notice of allowance has been served. However, the applicant cannot file a divisional application after payment of the issue fee.
It is to be noted that subject matter disclosed in the original specification but not disclosed in the final specification immediately before the notice of allowance can not be claimed in the divisional application. (See Q. 24 of Q&A)
Payment of Issue Fee
In order to have a patent issued, annuity fees for the 1st to 3rd years must be paid as an issue fee within 30 days from the date of the Notice of Allowance. After payment of the issue fee, a patent will be registered and a certificate of grant will be sent to the applicant.
The annuity fees for the 1st to 3rd years are 2,300JPY + 200JPY per claim annually (AS OF AUGUST 1, 2011).
The term of patent is 20 years from the filing date and the annual fee for each year from the 4th and subsequent years should be paid if the patentee wishes to maintain their rights. Please also see Q34 in Q&A for the details.
Appeal to the Appeal Board
When an examiner's decision of rejection is not acceptable, an appeal against the decision of rejection may be requested within 3 months (4 months for a resident abroad) after the receiving date (mailing date in case of on-line delivery) of the official notice of the decision of rejection.
When a plurality of persons or corporations is registered as applicants, all the applicants must request the appeal together. Art. 9 of the Patent Law provides that an agent needs to be expressly empowered to request an appeal against rejection.
Reasons for appeal may be submitted after filing the request for the appeal as an amendment to the request. When the amendment is not submitted, an order to submit the amendment will be notified, and the request for the appeal will be rejected if no response is made to the order.
The description, claims and drawings to be examined in the appeal are those which are on file at the time of requesting the appeal. When an amendment to the description, claims or drawings is submitted at the time of requesting the appeal, the amended description, claims and drawings will be examined. When a decision to reject an amendment to the claims is notified together with a decision of rejection, and no amendment is submitted at the time of requesting an appeal, the claims of the rejected amendment will be examined in the appeal.
The amendment submitted at the time of requesting the appeal is admissible if the amendment does not introduce any new matter that is beyond that disclosed in the originally filed application, and if the amendment is intended to delete a claim; to restrict the claims, (limited to the cases where the restriction is to restrict matters required to identify the invention stated in a claim or claims, and, in addition, the industrial applicability and the problem to be solved of the invention stated in the said claim or claims prior to the amendment are identical with those after the amendment.); to correct a typographical error; or to clarify an ambiguous statement (limited to the matters stated in the Official Action).
A divisional application may be filed during certain period of time (see “Unique JPO practices” for details) after the receiving date of the official notice of the decision of rejection. The divisional application is considered to be legitimate if all the matters described in the description, claims and drawings fall within the range of the matters described in the description, claims and drawings of the originally filed application.
