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Flowchart for Entering PCT National Phase in Japan

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Basic Procedures for Obtaining a Patent in Japan

Filing

(1) To enter a PCT application into the Japanese national phase, please provide the following documents by the deadline, i.e., 30 months from the earliest priority date claim:

  1. A copy of the PCT specification, claims and drawings;
  2. A copy of the Request;
  3. A front page of WIPO Publication;
  4. Any amendments under PCT article 19(1) and/or 34(2); and
  5. A copy of an International Preliminary Examination Report.

(2) To file a Japanese patent application based on the Paris Conventions, please provide:

  1. A copy of the specification, claims, drawings and abstract;
  2. The full name and address of each inventor;
  3. The full name and address of each applicant;
  4. The filing date of each priority application;
  5. The application number of each priority application; and
  6. The priority documents (these must be filed within 16 months from the priority date).

No executed documents are required for filing an application. A power of attorney is required only when special representation becomes necessary such as when an appeal or an opposition is to be filed. We will let you know when a power of attorney becomes necessary.

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Translation

An application must be filed in Japanese since all proceedings in the Japan Patent Office are performed in Japanese.

(1) For PCT cases, it is possible to file a Japanese translation of the application within two months from the entry into the Japanese national phase. In this case, we first need to enter the Japanese national phase by filing a National Form Paper.

(2) For Paris cases, we can first file an application in any language to secure the priority date and thereafter file a Japanese translation within 14 months from the priority date, if you would like to delay the filing of the translation.

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Application Number

After filing a patent application, a patent application number is issued.

(1) For a PCT case, the Japanese Patent Office assigns a patent application number after 33-34 months from the filing date of the priority application.

(2) For a Paris Convention case, a patent application number is assigned as soon as the application is filed.

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Publication of Unexamined Application

The application is laid open to public inspection after 18 months from the date of filing.

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Request for Examination

In order for an application to be examined, it is necessary to file a document entitled "Request for Examination" in the Japan Patent Office by the due date for paying the official fee in which the fee is calculated based on the number of claims. The deadline for filing a Request for examination for a PCT case is three years from the International filing date, and three years from the filing date in Japan for a Paris Convention case. If an examination request is not filed by the deadline, the Japan Patent Office will deem the application withdrawn and irrevocably lapsed. An extension of time is not obtainable and there is no remedy to revive an application that has failed to meet the deadline. A third party may file a Request for Examination for any laid open patent applications, in which case, the Japan Patent Office will notify the applicant.

After filing a Request for Examination, an application is usually examined after nine and a half months (9.5 months) from the date of filing a Request for Examination. If the examiner finds no reasons for rejection in the application, the application will be granted a patent. If the examiner finds reasons for rejection, a Notification of Reasons for Rejection (official action) will be issued. It is necessary to respond to such a notification to prosecute the application by filing an Amendment and an Argument. Such a notification may be issued two to three times if claims include reasons for rejection.

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Notification of Reasons for Rejection

If you receive a Notification of Reasons for Rejection, it is necessary to file a response to the office action within three month from the forwarding date of the notice.

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Decision of Rejection

If you receive a Decision of Rejection, it is necessary to file an Appeal together with an Amendment (and an Appeal Brief) within four months from the forwarding date of the notice.

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Grant a Patent

The annuity fees for the 1st to 3rd years must be paid within 30 days from the forwarding date of the Notice of Allowance as a registration fee upon issuance.

After paying the registration fee and a patent is registered at the Japan Patent Office, the Certificate of Patent is issued.

The fourth year annuity must be paid during the third year or prior thereto from the date of registration.

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Publication of Patent Gazzette

After registration, the patent is published as it appeared in the Official Gazette.  Even after the patent is registered, any person may file an invalidation trial request at anytime if it has a flaw, even after expiration of the patent term.

Patents published after April 1, 2015, the date of the opposition system came into effect, in the patent gazette are subject to the opposition system.  An opposition may be filed within six months from the publication date of the patent.

 

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