Japanese Patent & Utility Model

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Japanese Patent FAQs

Before you apply

  1. A filing deadline of a PCT application has passed. Is any patent protection available in Japan?
  2. The present invention was published in printed matter three months ago. Is it possible to file a patent application in Japan?
  3. The present invention was exhibited prior to filing an application in Japan. Is it still possible to file a patent application claiming this invention?
  4. Is it possible to file any foreign language applications before the Japanese Patent Office?
  5. How long does it take for a translation of one application?
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When you apply

  1. What is necessary for filing an application (based on the Paris Convention)?
  2. What documents are necessary for filing a PCT application?
  3. Are any executed documents required for filing an application?
  4. Regarding a PCT application, is it possible to substitute the originally filed application with the amended application under PCT Article 34?
  5. Regarding a PCT application, is it possible to file amendments that have not been accepted during the international phase?
  6. Regarding a PCT application, the International Preliminary Examination Report does not show an amendment under PCT Article 34 has been filed even though such an amendment was filed at the international stage. Can the amendment be filed as a PCT Article 34 amendment when entering Japanese national phase?
  7. The ownership of the PCT application has been changed at the international stage. How can this change be recorded before the Japanese Patent Office?
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After you apply

  1. When is the deadline for filing a request for examination?
  2. A request for examination was not timely filed by the due date. Is there any option available for revising the application?
  3. When do filing priority documents become due (under the Paris Convention)?
  4. Why is an identification number assigned to an applicant and how does it work?
  5. When do renewals fees for a patent application have to be paid?
  6. What is the maximum period of protection for a patent?
  7. What documents are necessary for recording a change of the ownership?
  8. What documents are necessary for recording a change of applicant's name and/or address?
  9. In order to record a change of the ownership with the Japanese Patent Office, is it possible to use an assignment document (or sales contract), which was made for transfer of the patent rights in another country?
  10. Is it possible to correct the number of the inventors after filing an application?
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Additional Fees Required by the PCT for a Search of All Filed Claims After a Determination that Claims Do Not Meet Unity of Invention Requirements

  1. If we do not pay additional fees in response to an Invitation to Pay Additional Fees from a PCT Searching Authority, do we preserve the right in Japan to file the unsearched PCT claim set and claim priority from the PCT application?
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Exceptions to Lack of Novelty of Invention

  1. We disclosed an invention prior to filing a patent application. Is there a grace period in Japan?
  2. When filing a PCT application during the international stage, we did not indicate exceptions to lack of novelty for the invention. Are exceptions to lack of novelty of invention still available in Japan?
  3. Does a Declaration as to Non-Prejudicial Disclosures or Exceptions to Lack of Novelty have to be filed with a PCT application in order to obtain the benefit of the 6-month grace period in Japan?
  4. Does it make a difference if the PCT application is filed at the IB or at the USPTO in order to obtain the benefit of the 6-month grace period in Japan?

Missed Priority Deadline

  1. We failed to meet the 12-month deadline for filing a PCT application.  Can we claim priority in Japan?  Is there any remedy in Japan?
  2. If the receiving office restores the priority, does the applicant need to file a request for restoration?

  3. What are necessary procedures for requesting restoration of priority in Japan?

PCT application filed with a missing page

  1. An applicant filed a PCT application in a receiving office that was missing one page of claims. However, the applicant included the missing page when they filed the priority application. The international date was maintained when the applicant filed a Confirmation of Incorporation by Reference of Elements and Parts.

    Will the international filing date for the Japanese national phase of the PCT application be accepted by the JPO?

Entry of a PCT application in Japan

  1. The deadline for entering the Japanese national phase has passed. Is there any remedy for entering the PCT application into the national phase in Japan?
  2. A 30-month Japanese national phase deadline was missed due to an administrative error. Specifically, an incorrect PCT application No. was written when filing the Request of the PCT application. Is there any remedy for the failure of the 30-month deadline in Japan?
  3. What reasons were accepted as reasonable justification for the failure of the 30-month deadline of the national entry of PCT applications?
  4. The deadline for entering the Japanese national phase has passed. If we disclaim the earliest priority date and the 30 months deadline for the second priority has not yet passed, is it possible to enter the Japanese national phase?
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Claim Format

  1. What types of forms for claims are allowed in Japan?
  2. Does the number of claims affect the cost of filing an application?
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Methods for Treatment of the Human Body

  1. Is there any general prohibition as to the patenting of methods for treatment of the human body by surgery or therapy in Japan?
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Priority Requirements

  1. In what combinations and timing can utility, design and utility models claim benefit of each other?
  2. What types of country applications can claim priority based on a PCT, and on which type of country filing can a PCT base a priority claim?
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Prior Art Disclosure

  1. Is it necessary to disclose all material prior art references that we are aware of?
  2. What is the time frame for submitting the prior art?
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Depositing Biological Material

  1. Is it necessary to deposit biological material on or before the earliest filing date to which the application to be filed will claim priority?
  2. Do you handle deposits of biomaterial?
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Application Number for Japanese National Phase of a PCT Application

  1. When is a Japanese patent application assigned an application number?
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Publication

  1. How can I obtain patent publications?
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Prior Art Submission by a Third Party

  1. Can a third party submit prior art in a pending application?
  2. What are the deadlines to submit prior art in a pending application?
  3. What documentation is required for submitting prior art?
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Examination

  1. When is the deadline for filing a request for examination?
  2. What is the cost for filing a request for examination?
  3. A request for examination was not timely filed by the due date. Is there any option available for reviving the application?
  4. When may we expect to receive examination results in a normal application procedure?
  5. How can I find out whether or not an application has been granted a patent?
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Refund of Examination Fee

  1. Is it possible to obtain refund of the official fee for request for examination which has been paid if a decision has been made to abandon the application?
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Expedited Examination

  1. Does the Japanese Patent Office have a practice by which an applicant can petition the Patent Office to expedite the prosecution of a patent application? If so, what are the circumstances that would allow an applicant to expedite the prosecution?
  2. What are the differences among the five types of the accelerated examination?
  3. If we file a request for accelerated examination at the time of entry of Japanese national phase of a PCT application, when does the substantive examination start?
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Amendment

  1. When can an applicant file an amendment in Japan?
  2. When entering the Japanese national phase, can claims be amended or deleted?
  3. Can claims be amended prior to a substantive examination, and if so, when is the deadline for filing such an amendment?
  4. Are there limitations when new claims may be added under Japanese patent law?
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Office Action

  1. When is the deadline for filing a response to an office action?
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Extension of Time

  1. Is it possible to extend the time to respond to an office action titled "Notification of Reasons for Rejection"? What is the cost?
  2. Is it possible to extend the time to respond to an office action titled "Decision of Rejection"?
  3. Is it possible to respond to an office action after the deadline?
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Divisional Application

  1. When can an applicant file a divisional application in Japan?
  2. Is it necessary to file a request for examination for a divisional application even though a request for examination has been filed for the original application?
  3. Is it possible to file one or more divisional applications based on the original application?
  4. Can a second divisional application be filed from a first divisional application?
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Appeal

  1. When may we expect to receive a decision in an appeal examination after issuance of the names of the appeal examiners?
  2. The applicant assigned a patent application to another entity.  Do we need to record the change of ownership at the time of filing an appeal? 
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Issuance (Registration)

  1. How long before the patent issues after payment of the registration fee?
  2. When can a Japanese patent be enforced?
  3. Is it possible to obtain multiple certified copies of the Japanese patents granted to an applicant?
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Post Issuance of Patent

  1. Is it possible to cancel claims for an issued patent to reduce the annuity fee?
  2. Is it possible to amend claims after a patent application has matured into a patent?
  3. What documentation must be filed for correcting claims for an issued patent?
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Annuity

  1. We missed one annuity payment. Is there a grace period after the due date during which annuity payments can still be made? If so, how long is such a grace period?
  2. When do renewals fees for a patent application have to be paid?
  3. What are the official fees for annuities?
  4. How long does it take for an annuity to appear publicly?
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Reviving an Abandoned Case

  1. Is it possible to revive an abandoned patent or patent application and what procedure, circumstances and costs are required to do so?
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Power of Attorney

  1. When is it necessary for the applicant to file a power of attorney?
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Change of Ownership, Assignment

  1. What documents are required for recording a change in ownership based on an assignment?
  2. The full address of the assignor is not indicated in the assignment document and no one is available to sign a new assignment document. What should we do?
  3. The applicant no longer exists as it became bankrupt. What types of documents are required to record the change of ownership?
  4. Is there any time period within which an assignment must be recorded?
  5. How long does it take to record an assignment at the JPO?
  6. Does the JPO issue an official notification when recordation of change of ownership is completed?
  7. Does the JPO allow e-signatures for submitted documents, such as assignment documents?
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Change of Ownership, Merger

  1. What documents are required for recording a change in ownership based on a merger?
  2. What are the problems for patent applications that could occur from not recording an ownership change based on a merger?
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Ownership, Exploitation

  1. Where a patent right is jointly owned, is the exploitation by each of the joint owners allowable without consent of all joint owners?
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Recordation of Name Change and Address Change

  1. What documents are required for recordation of a change of name and/or address of the applicant (or the patentee)?
  2. Why do you need to know the date of address or name change when recording the address or name change after a patent was issued?
  3. If a change of name of the applicant (simple name change) is filed in one particular application, does the JPO automatically updates the change in all other applications for the same applicant?

License

  1. Is it possible, or indeed necessary, to officially record details of a Licensee (i.e, not an Assignee) in Japan?
  2. Is it possible to record a Licensee before a patent is granted for a patent application?
  3. We recorded a license agreement for a patent application with the JPO (provisional exclusive license agreement). If we file a divisional application, will the license agreement also be recorded with the divisional application?
  4. If we file a divisional application of a patent application in which a provisional license agreement has been recorded, is it possible to avoid adding the divisional application to the recordation of the license agreement of the parent case?
  5. Can anyone access the information of a deed of license agreement once such a deed has been filed with the Japanese Patent Office?
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Practice and Use of Patented Invention

  1. Are there any requirements for issued patents in Japan to be used? In other words, under Japanese law, must the patented invention be made, used, or sold?

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Security Agreement

  1. Can a security agreement for patent applications be recorded in the JPO?
  2. What documents are required for recordation of a security agreement?

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Employment Agreement

  1. What are the consequences if an employment agreement or an assignment (from the inventors to the company) failed to mention Japanese ownership rights before a PCT application was filed?
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Opposition Procedures

  1. Is an oral hearing required for opposition procedures?
  2. How many responses can be filed to an opposition?
  3. Is it possible to extend the time for filing an argument and corrections to claims?
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Invalidation Procedures

  1. What is the nature of an invalidation procedure in Japan?
  2. What are the differences between opposition procedure and invalidation procedure?
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Official Fees

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Business Methods

  1. Is there updated information regarding the extent to which business methods may be protected by patents in Japan?
  2. Is patenting of software or business methods available in Japan?
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Software Patents

See Business Methods.

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JPO Updates

  1. Where to look for updates from the Japanese Patent Office, such as patent law changes?
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Marking

  1. Is virtual marking sufficient to provide constructive notice to the public of patent rights in Japan?
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Enforcement

  1. How long after the expiration of a Japanese patent can a patent owner still bring an infringement suit?
  2. Are there any differences procedurally when an infringement suit is commenced after the expiration of a patent?
  3. Does Japan recognize a provisional right to early damages before the patent is granted?
  4. What are the requirements for getting provisional rights?
  5. How much is the compensation for pre-grant damages (provisional right)?
  6. Is it possible to obtain an injunction to prohibit an infringer’s activity based on provisional rights?
  7. How long can the patentee take advantage of provisional rights?
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JPO Patent Search

  1. Does the Japanese Patent Office offer any service where they perform patentability searches, prior art searches or invalidity searches for a fee in view of an issued US patent?