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Acceleration of Japanese Prosecution

2011年12月1日

It is often asked how a client outside of Japan may speed up prosecution of patents in Japan.

Recently, attention has focused on using the Patent Prosecution Highway (PPH) as a means of expediting examination, but there are several other available paths that may be taken to accelerate the process in Japan. Specifically, Applicants who file in Japan may request Accelerated Examination or Super Accelerated Examination.
I.Accelerated Examination
Accelerated Examination is available to those filing to the Japanese Patent Office (JPO), e.g., those who file a domestic application, file with a receiving office under PCT and then enter the national phase in Japan, etc. Filing for Accelerated Examination is beneficial because prosecution of a Japanese application will be greatly expedited compared to taking the more traditional filing route.

The procedure must be carried out in Japanese only, and Applicant or Applicantfs Representative must have either an address or a domicile in Japan in order to receive Accelerated Examination.

Further, the application must adhere to one of five special categories for making special:

Working Invention-Related Applications – Applications filed by an Applicant or licensee who has already commercialized the invention or has plans to commercialize within two years from the filing date of a request to accelerate examination

Internationally Filed Applications – Applications for inventions that were filed with at least one foreign IP Office as well as the JPO or filed as an international application under PCT

Academic Institute-Related Applications or SME Applications – Applications filed by a university, college, public research institute, small or medium entity, or an individual person.

Green Technology – Applications related to green technology for preservation or conservation of the environment

National Disaster Prevention – Applications related to aiding in disaster prevention in Japan, e.g., earthquakes, flooding, etc. (This is a limited time offer that lasts, at the moment, one year from August 1, 2011)

An Applicant wishing to request for Accelerated Examination may file the request along with or after the request for regular examination. However, both requests are usually filed concurrently, at which point, examination immediately begins. The acceleration of the application only applies to the current examination and does not apply to divisional filed to the application. Applicants can request for Accelerated Examination of a divisional application.

Along with the request, Applicant is required to submit the results of a prior art search and comments comparing the invention to the results of the prior art search. It should be noted that Japanese prior art disclosure is less strict than other filing offices, such as the USPTO. Submitting prior art to the JPO does not mean that the Applicant must conduct a thorough prior art search, but an explanation must be given to the Examiner as to how the present invention differs from any prior art.
II.Super Accelerated Examination
Another option for expediting Japanese prosecution is to request for Super Accelerated Examination. As the name suggests, this is even faster than Accelerated Examination. Applications eligible for the Super Accelerated Examination system are likely to account for about 15% of applications requesting accelerated status that are filed annually with the JPO

To be eligible for Super Accelerated Examination, Applicant must meet both of the following requirements:
1. There must be a corresponding foreign application filed and commercialization or plans for commercialization of the invention in Japan within two years of filing; AND
2. All documents required for prosecution must be filed online four (4) weeks prior to filing a request for Accelerated Examination

After a request for Accelerated Examination, the JPO will determine whether the application qualifies for Super Acceleration. If so, the Examiner will issue the first Office Action within one month.

Foreign Applicants then have only two months to respond (Japanese applicants have 30 days to respond), which is a non-extendable time period. If the Applicant responds after the deadline, Super Accelerated Examination will cease. However, it should be noted that the application itself will not be rejected by the JPO if the Applicant responds within 3 months. After the response has been received, the Examiner will then issue the next Office Action (usually Final) within one month.
III.Cost for Acceleration

The JPO does not require any additional fees for expediting prosecution, either through regular Accelerated Examination or through Super Accelerated Examination. There is no official fee for making special an application. Please note, though, that preparation of the request for acceleration or Super Acceleration may incur additional attorneyfs fees.
IV.Comparison Timeline
Below is a figure that shows the estimated timeline of accelerated examination.
It is recommended that the Applicant file for Accelerated Examination with the JPO whenever applicable. This method may be considered in some circumstances in lieu of PPH, because there is no delay in waiting for a patent to be issued in a corresponding foreign office. Accelerated Examination and Super Accelerated Examination are meaningful alternatives to PPH when trying to expedite prosecution in Japan.

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