Japanese Patent FAQs
When You ApplyUpdate 2020.6.15
Q.What documents are necessary for filing a PCT application?
When entering the Japanese national phase of a PCT application, the following documents are needed:
- A copy of the PCT specification, claims and drawings;
- A copy of the Request;
- A front page of WIPO Publication;
- Any amendments under PCT article 19(1) and/or 34(2); and
- A copy of an International Preliminary Examination Report.
Q.What is necessary for filing an application (based on the Paris Convention)?
When filing a Japanese patent application, the following documents and information are needed.
- A copy of the specification, claims, drawings and abstract;
- The full name and address of each inventor;
- The full name and address of each applicant;
- The filing date of priority application;
- The application number of the priority application; and
- The priority documents (these can be filed within 16 months of the earliest priority date of the priority application(s)) or the DAS codes of relevant priority documents, if necessary.
Q.Are any executed documents required for filing an application?
No executed documents are required for filing an application. The JPO no longer requires a power of attorney for filing a regular patent application including entry into the Japanese national phase of a PCT application. However, a power of attorney is needed when special representation becomes necessary, such as when an appeal is to be filed. We will let you know when a power of attorney becomes necessary. However, please note that we may occasionally require a power of attorney, especially from a new client.
Q.Regarding a PCT application, is it possible to substitute the originally filed application with the amended application under PCT Article 34?
No. It is not possible to substitute the originally filed application with the amended application under PCT Article 34 in Japan. We must file both an original application and, separately, each amendment under PCT Article 34. (It is possible to substitute the originally filed claims with claims that were amended under Article 19, if it has been published.) Therefore, please provide us with an original specification and claims (in English) and an Article 34 amendment (in English).
Q.Regarding a PCT application, is it possible to file amendments that have not been accepted during the international phase?
No. When entering the Japanese national phase, we can file only the published application and amendments under PCT Article 19 and/or 34 that have been filed at the international phase. If you would like to change the claims, specification or drawings, it is possible to file an amendment after entering the Japanese national phase. However, we recommend that such amendments be filed at the time of filing a request for examination.
Q.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?
No. The JPO will accept only published application and the amendments that appear in the International Preliminary Examination Report. Therefore, if you correct the error with the IPEA, the JPO will accept the Article 34 amendment. If you do not correct the error with the IPEA, it is possible to file a regular amendment to reflect these amendments after entering the Japanese national phase.
Q.The ownership of the PCT application has been changed at the international stage. How can this change be recorded before the Japanese Patent Office?
If you file a request to record the change of the applicant with the WIPO prior to the deadline of entering the national phase, please send us a copy of the request you filed (and/or Form PCT/IB/306, if you have it). If you do so, we can file the application in the name of the assignee when entering the Japanese national phase. Otherwise, an assignment and a power of attorney need to be filed with the JPO to change the ownership. We can provide you with our assignment form and power of attorney form, if necessary.