Japanese Patent FAQs
Q.When can an applicant file an amendment in Japan?
The following is the time period for filing an amendment:
1) An amendment may be filed at any time before a first office action is issued.
2) An amendment may be filed within three months from the date of the Notification of Reasons for Rejection.
3) An amendment may be filed within four months from the date of the Decision of Rejection together with an appeal and an appeal brief.
Q.When entering the Japanese national phase, can claims be amended or deleted?
It is not possible to amend claims via an amendment when entering the national phase. If you would like to file an amendment, it is possible to file it after completing entry into the Japanese national phase. However, we recommend that such an amendment be filed at the time of filing a request for examination.
However, it is possible to delete claims at the time of entry into the Japanese national phase from a PCT application. Please note that such deletion should only leave independent claim(s) remaining or claim set(s) comprising independent claims and dependent claims. Otherwise, you may receive an official rejection for the reason that the filed Japanese translation is not a true translation of the PCT application, i.e., indefinite description. Further, please note that the Article 19/34 amendments must be filed as-is and cannot be deleted.
Q.Can claims be amended prior to a substantive examination, and if so, when is the deadline for filing such an amendment?
Yes. It is possible to file an amendment prior to a substantive examination. Usually, an application is examined after nine and a half months (9.5 months) from the date of filing a request for examination.
Q.Are there limitations when new claims may be added under Japanese patent law
When adding new claims, those claims must be supported by the disclosure of the application. New matter cannot be added. It is possible to add claims that correspond to a relevant patent granted in foreign countries. In that case, please inform us of the location of the support in the specification for the new claims since we need to explain this in a petition when filing a voluntary amendment. However, please note that amendments are restricted to narrowing of the claim scope in case of appeals.