Japanese Patent FAQs
After You ApplyUpdate 2020.6.9
Q.When is the deadline for filing a request for examination?
A request for examination must be filed within three years from the filing date (or the international filing date for a PCT case).
Q.A request for examination was not timely filed by the due date. Is there any option available for revising the application?
Article 48(3) of the Japanese Patent Law prescribes that, if a request for examination has not been made within the time limit, the application shall be deemed withdrawn. Accordingly, there is no way to restore the case, not even if the deadline was missed due to a mistake or an error.
Q.What is the non-extendable deadline for filing priority documents (under the Paris Convention)?
Priority documents must be filed within 16 months of the earliest priority date of the priority application(s).
However, it is possible to avoid submitting paper priority documents to the JPO by requesting that the JPO obtain electronic data on priority documents from an overseas IP office through the WIPO Digital Access Service (“DAS”). In order to use this document retrieval method, please let us know the DAS codes of relevant priority documents, if necessary.
Please also see the JPO’s website for further details:
Q.When do filing priority documents become due (under the Paris Convention)?
Priority documents can be filed within 16 months from the priority date. There is no need to file priority documents that were originally filed with the European Patent Office or the Korean Intellectual Property Office. The Japanese Patent Office does not accept priority documents in electronic form or in the form of a photocopy.
Q.Why is an identification number assigned to an applicant and how does it work?
An identification number is assigned to an applicant based on its name and address, and then it is used to identify the applicant for all of its applications. Then, if your client changes its name or address, you do not need to change the applicant’s name or address in each of the pending applications. Instead, it is sufficient to apply to change the information with respect to the assigned identification number. That is, you just need to change the recorded name or address, and the change will be reflected in all of the cases filed using that identification number.
The identification number concept was introduced with the “electronic” filing system to reduce the burden on both the applicants and the JPO by keeping certain standardized information on file. Therefore, it is recommended (although not required) that the identification number be used in all future applications. If additional applications are filed through other patent firms, you should inform them of the applicant’s identification number.
Q.When do renewals fees for a patent application have to be paid?
The annuity fees for the 1st to 3rd years must be paid as a registration fee upon issuance (within 30 days from the forwarding date of the notice of allowance). The fourth year annuity must be paid during the third year or prior thereto from the date of registration. In Japan, no annuity fees are required for pending applications.
Q.What is the maximum period of protection for a patent?
The term of a patent right is 20 years counted from the Japanese filing date (for a PCT case, from the international filing date).
Q.What documents are necessary for recording a change of the ownership?
An assignment and a power of attorney need to be filed. We can provide you with our assignment form and power of attorney form.
Powers of attorney from both assigner and assignee and an assignment need to be filed.
Q.What documents are necessary for recording a change of applicant's name and/or address?
Basically, no executed documents are needed (however, sometimes a power of attorney is needed for old applications). We can record such changes with the JPO based on the information you provided.
A power of attorney is needed. We can provide you with our power of attorney form.
Q.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?
Yes. It is possible to record the change of ownership by submitting a notarized copy (photo copies are not acceptable) of the assignment document (or sales contract). However, in the document, the full address of the assignor and the Japanese patent application number (or PCT application number) must be listed.
Q.Is it possible to correct the number of the inventors after filing an application?
Yes. In order to, for example, exclude an inventor in an application, a declaration from the excluded inventor to the effect that he or she is not an inventor of the application is needed. Also, declarations from the other inventors to the effect that they are the only original inventors of the application are needed. We can provide you with sample forms of the declarations to be signed by inventors.
No. There is no way to change the inventors. This is because, according to the JPO, information about the inventors is not included as the registered items recorded in the JPO’s official register.