FAQ

  1. Where can I learn the general flow for obtaining a patent right in Japan?

    You can go to http://www.jpo.go.jp/cgi/linke.cgi?url=/tetuzuki_e/t_gaiyo_e/pa_right.htm and get an overview of procedures for obtaining a patent right in Japan.

  2. How can I specifically get help from Primeworks through the steps of prosecution?

    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

  3. Must a foreign applicant appoint a professional representative?

    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.

  4. Can applications in Japan be filed in English?

    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.

  5. Can Japanese applications be published earlier than 18 months from 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.

  6. How soon after filing an application must a request for examination be filed in Japan?

    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 If no request for examination is filed within the prescribed period, the application is deemed to be withdrawn.

  7. What is the time limit to reply to official actions?

    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.

  8. Are Japanese file histories open to public inspection?

    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). Since March 2006, file histories and the text of communications from the JPO to applicants dating from July 2003 onwards have been available via the JPO’s free "Industrial Property Digital Library (IPDL)". The IPDL is available at http://www.ipdl.inpit.go.jp/homepg_e.ipdl Please note that currently the electronic file histories can only be accessed via the Japanese page of the IPDL. An easy, step-by-step guide is available in the "Tips & tricks for searching" section: Tips& tricks for searching databases

  9. How long does it take on average for a patent to be granted in Japan?

    Average patent pendency in Japan is currently between five and six years. The average time required from request to examination until the first office action is approximately 26 months. However, in recent years legislation has been passed and measures introduced to reduce patent pendency and to streamline granting procedures in Japan.

  10. What is the term of a Japanese patent?

    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.

  11. What is the term of a Japanese utility model?

    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.)

  12. At what time are annual fees due in Japan?

    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).

  13. Can a lapsed patent be restored?

    If the applicant misses the deadline for payment of the annual fees, there is a grace period for payment of six months. If the patent owner fails to renew the annual fees within this grace period, the patent right lapses. However, if the reasons for failure to make the payment are beyond the control of the patent owner, he has another six-month period from the lapse date during which he can have the lapsed patent right restored.

  14. Do SPCs (supplementary protection certificates) exist in Japan?

    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.

  15. How can one challenge a granted patent in Japan?

    The opposition system was abolished on 01 January 2004 and invalidation is thus now the only means of challenging a granted patent in Japan. Invalidation procedures can be requested by anyone at any time (even after expiration of the patent term).

  16. How long is the opposition period in Japan?

    Before 1996, the opposition period was three months from the date of publication of the examined application (pre-grant opposition system). From 01 January 1996 onwards, opposition was possible within six months of the publication date of the granted patent (post-grant opposition system). On 01 January 2004, opposition was abolished and invalidation became the only means of challenging the granted patent.

  17. What are Patent Abstracts of Japan (PAJ)?

    "Patent Abstract of Japan" or "PAJ" are English abstracts of Japanese unexamined patent applications. Patent Abstracts of Japan are produced by the JPO and Japan and include the bibliographic information, abstract and a representative drawing of Japanese unexamined patent publications from 1976 to date. Due to the translation work involved, the time delay between publication of an unexamined patent application in Japan and the availability of the corresponding PAJ abstract is approximately four months.
    Further information on Patent Abstracts of Japan is available at:
    http://www.epo.org/patents/patent-information/subscription/espace-national/japan.html

  18. What is the practice on patent marking in Japan?

    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.

  19. Where can I get an English machine-translation of a Japanese patent or utility model document?

    You can obtain English machine-translations for Japanese patent and utility model documents from 1993 onwards on the Japan Patent Office’s free-of-charge "IPDL" (Industrial Property Digital Library) internet service at http://www.ipdl.inpit.go.jp/homepg_e.ipdl From the IPDL homepage, please choose the "Patent & Utility Model Gazette DB" link. A simple number search will – as a first search result – return the PAJ English abstract, where available. Clicking the "Detail" button on the top of the result screen will start the machine-translation of the original Japanese unexamined application. Alternatively, clicking the "Japanese" button will display the original Japanese document. In cases where no PAJ English abstracts exist you will immediately get the machine-translation from the Japanese.

  20. What is the average life time of a patent in Japan?

    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.

  21. Where can I find the resources for Japanese IP Laws?

    For Patent Act (Patent Law), go to:
    http://www.japaneselawtranslation.go.jp/law/detail/?ft=2&re=01&dn=1&yo=&kn[]=%E3%81%A8&x=14&y=23&ky=&page=14

    For Utility Model Act (Utility Model Law), go to:
    http://www.japaneselawtranslation.go.jp/law/detail/?ft=2&re=01&dn=1&yo=&kn[]=%E3%81%97&x=13&y=14&ky=&page=13

    For Design Act (Design Patent Law), go to:
    http://www.japaneselawtranslation.go.jp/law/detail/?ft=2&re=01&dn=1&yo=&kn[]=%E3%81%84&x=13&y=13&ky=&page=1

    For Trademark Act (Trademark Law), go to:
    http://www.japaneselawtranslation.go.jp/law/detail/?ft=2&re=01&dn=1&yo=&kn[]=%E3%81%97&x=19&y=18&ky=&page=12

    For Copyright Act (Copyright Law), go to:
    http://www.japaneselawtranslation.go.jp/law/detail/?ft=2&re=01&dn=1&yo=&kn[]=%E3%81%A1&x=18&y=17&ky=&page=5

    For Unfair Competition Prevention Act (Unfair Competition Prevention Law), go to:
    http://www.japaneselawtranslation.go.jp/law/detail/?ft=2&re=01&dn=1&yo=&kn[]=%E3%81%B5&x=22&y=16&ky=&page=2

  22. Can I still file a Japanese patent application if a product incorporating the invention was already sold in Japan before the Japanese application is filed?

    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.

  23. Is a Japanese grace period applied to an offer for sale?

    The Japanese grace period is applied only when the invention is disclosed by a test, a presentation in a printed publication, a presentation through electric telecommunication lines or a study meeting. Therefore, the grace period is not applied to the offer for sale.

  24. When using a Patent Prosecution Highway program from U.S. to Japan, do claims in Japanese application need to be same with a U.S. granted patent?

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

  25. Must I pay an examination fee when requesting an examination?

    Due to the recent economic crisis, JPO now carries out preferential countermeasures so that the payment of the examination fee can be deferred for up to one year from the date the examination request is made. This measure would be effective for two years from April 1, 2009. So, if the examination is requested before March 31, 2011, the applicant can defer the payment of the examination fee up to one year from the date the examination request is made.

  26. What types of amendment can be made with an appeal process?

    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

  27. Is it possible to extend the deadline for filing an appeal and divisional application in Japan?

    It is not possible to extend the deadline for filing an appeal and divisional application in Japan.

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