FAQ

You can go to https://www.jpo.go.jp/e/system/patent/gaiyo/patent.html and get an overview of procedures for obtaining a patent right in Japan.

We not only give you timely updates in writing but also provide you with a unique prosecution chart designed to draw your attention to the specific stage of prosecution you are in. A sample chart is available for any interested overseas corporate user of our website. Please contact: info@primeworks-ip.com

Currently, the prescribed time limit for submitting a request for examination is three years from application date. For applications filed before 01 October 2001, this time period was seven years from application date. If no request for examination is filed within the prescribed period, the application is deemed to be withdrawn.

There is a time limit of three months for replying to official actions (except those only relating to formal requirements). It is also possible to apply for an extension of the time limit; the extension can be another three months. The same time limit applies for replies in opposition cases or responses in trial cases. In the case of an official action with respect to formal requirements, the time limit for filing a reply is 30 days with no possibility of extension.

A request for examination must be filed within three years of the application date. After the request for examination is filed, it generally takes an average of about one and a half to two years for the patent to be granted.The average time required from the request for examination until the first official action (First Office Action) is approximately 10 months. However, in recent years legislation has been passed and measures introduced to reduce patent pendency and to streamline granting procedures in Japan.

Yes. If the applicant, legal entity or organization does not have a residential or business address in Japan, they must appoint a professional representative registered before the patent office to represent them in the patent prosecution procedure in Japan.

Since 01 July 1995, it has been possible to file a patent application in English. However, a Japanese translation of the English application has to be furnished to the Japan Patent Office (JPO) within two months of application date.

A 1999 amendment to the Japanese patent law, which became effective on 1 January 2000, introduced an “early publication” system in Japan. Under this early publication system, an applicant may request that his patent application be laid open for public inspection even before the expiration of 18 months from the application date (or in case a priority or domestic priority is claimed, 18 months from the earliest priority date). Such early publication may be of interest for provisional protection or for claiming compensation from an infringing third party.

Japanese file histories are available for public inspection once an application has been published. Usually, the first publication of an application takes place 18 months after the application date (or in case a priority or domestic priority is claimed, 18 months after the earliest priority date). Japanese file histories are available for viewing using the Japan Platform for Patent Information (J-PlatPat). The J-PlatPat is available at https://www.j-platpat.inpit.go.jp/web/all/top/BTmTopEnglishPage .

If the invention is an internal part of the sold product and cannot be seen by viewing the product, the invention will be considered to be kept in secret and is not deemed to lose novelty under Article 29(1) of Japanese Patent Laws. Therefore, you can still file the Japanese patent application.

The Japanese grace period is applied when the novelty of the invention is lost (i.e., disclosed) due to an act of the person who has the right to obtain a patent. Therefore, the grace period is also applied when the right holder makes an offer for sale. The grace period is one year from the date the novelty was lost.

Yes. However, JPO does not require claim-by-claim identity if claims in Japan is same with or narrower than claims in U.S.

Before 01 July 1995, the term of a Japanese patent was defined as “15 years from the date of examined publication but not in excess of 20 years from filing date”. From 1995 onwards, the term of a Japanese patent is simply defined as “20 years from filing date”. This new definition also applies to all patents that were already in force on 01 July 1995.

Before 1994, the term of a Japanese utility model was defined as “10 years from the date of examined publication but not in excess of 15 years from filing date”. In 1994, the term of a utility model was reduced to only six years from the application date. However, a revision of the Japanese utility model law, which will be effective as of 1 April 2005, increases the term of utility models to 10 years from the application date. (The new 10-year term applies to all utility models filed on or after 1 April 2005.)

At the grant of a patent, the annual fees for the first three years must be paid all together as a lump sum constituting the registration fee. Further annual fees are due yearly in advance. For patents granted up to 1996 (old Japanese patent law), annual fees are due for each year as from the date of publication of the examined document. For all patents granted according to the new Japanese patent law (01 January 1996 onwards), the due date for annual fees is the date of grant (registration).

If the patent owner misses the deadline for payment of the annual fees, there is a six-month grace period for late payment, during which payment can be made along with an increased amount. If the patent owner fails to make the payment within this grace period, the patent right lapses. However, even after the lapse, the right can be restored under one of the following conditions:
(1) Restoration based on Reasonable Grounds: If there were reasonable grounds (e.g., disaster, illness) for the failure to pay the annual fees, the restoration procedure can be taken within two months from the date the cause of failure ceased to exist.
(2) Restoration without Reasonable Grounds (Special Provision): Even if there were no reasonable grounds for the failure to pay, an application for restoration can still be filed within one year from the original deadline for payment.

SPCs or supplementary protection certificates are known as “patent term extensions” in Japan. Such patent term extensions can be granted for inventions in the pharmaceutical and agrochemical fields, if permission or approval of governmental institutions is a requirement for commercialization of the patented invention. If several approvals have to be sought, several patent term extensions can be granted for one patent. The maximum duration of each patent term extension is five years.

According to the “Patent activity at the Trilateral Office” reports of 2006 and 2007, over 50% of granted Japanese patents were maintained for at least 17 years.

Yes, as a rule, you must pay the prescribed examination fee at the time you file a Request for Examination. However, a system for reduction or exemption of fees is available for small and medium-sized enterprises (SMEs) and individual business owners, etc.

Currently, there are primarily two systems for challenging the validity of a patent granted in Japan and disputing the right:
Patent Opposition System: This is an administrative procedure where the Japan Patent Office (JPO) is requested to revoke a patent. It can be filed by anyone, but is subject to a time limit.
Patent Invalidation Trial System: This is a trial procedure requested to the JPO to invalidate a patent. It is an inter-partes trial structure and can only be requested by a party with an interest (an interested party).

The following time requirements are stipulated for the Patent Opposition System and the Patent Invalidation Trial System:
Time Requirement for the Patent Opposition System:
Period: A petition can only be filed within six months from the date of publication of the Patent Gazette. Once this period has passed, the opposition cannot be filed.
Time Requirement for the Patent Invalidation Trial System:
Period: A trial can be requested at any time while the patent right is in force. (Note: It can also be requested after the patent right has expired, but only by an interested party.)

Types of amendments which can be made with the appeal are as follows;
(i). Deletion of a claim or claims last examined
(ii). Restriction of claims
The industrial applicability and the problem to be solved of the invention stated in claims prior to the amendment (that is, claims last examined) should be identical with claims after the amendment (that is, claims in appeal).
(iii). Correction of minor errors
(iv). Clarification of an ambiguous statement

The deadlines for both filing an appeal against an examiner’s decision of refusal and a divisional application are generally statutory and not subject to extension.
However, a crucial exception applies to non-residents (applicants without a domicile or residence in Japan):
Appeal: The deadline to file an appeal is formally extended by the Commissioner of the JPO for non-residents. While the statutory period is three months, it is effectively six months for those residing abroad.
Divisional Application: The deadlines for filing a divisional application are not extendable, even for non-residents. These must be strictly adhered to.

Patent Abstract of Japan” or “PAJ” are English abstracts of Japanese unexamined patent applications, produced and provided by the Japan Patent Office (JPO). PAJ includes bibliographic information, an abstract, and a representative drawing of unexamined patent publications dating from 1976 onwards. It is used to quickly grasp the content of Japanese patent documents in English. Currently, PAJ can be searched and viewed via the Japan Platform for Patent Information (J-PlatPat).
https://www.j-platpat.inpit.go.jp/web/all/top/BTmTopEnglishPage

Patent marking exists in Japan, but it is not compulsory. The reference to the patent may be placed either on the patented product itself or on the packaging, and it must be in Japanese. False marking, as well as the sale and distribution of falsely marked products are considered criminal offences.

You can currently obtain English machine-translations for Japanese patent and utility model documents free of charge through the services provided by the Japan Platform for Patent Information (J-PlatPat). Access J-PlatPat and input the document number (application number, publication number, etc.) using a search menu such as “Patent & Utility Model Number Search/OPD.” After displaying the details of the publication on the search results screen, you can instantly view the machine translation of the full text (or abstract) of the gazette by clicking the “Translate” button or selecting the English display option.
https://www.j-platpat.inpit.go.jp/web/all/top/BTmTopEnglishPage

For Patent Act (Patent Law), go to:
https://www.japaneselawtranslation.go.jp/ja/laws/view/4097

For Utility Model Act (Utility Model Law), go to:
https://www.japaneselawtranslation.go.jp/ja/laws/view/4259/je

For Design Act (Design Patent Law), go to:
https://www.japaneselawtranslation.go.jp/ja/laws/view/3269

For Trademark Act (Trademark Law), go to:
https://www.japaneselawtranslation.go.jp/ja/laws/view/4032

For Copyright Act (Copyright Law), go to:
https://www.japaneselawtranslation.go.jp/ja/laws/view/4207

For Unfair Competition Prevention Act (Unfair Competition Prevention Law), go to:
https://www.japaneselawtranslation.go.jp/ja/laws/view/3629