Patent Filing in Japan
An application for the grant of patent can be filed in Japan along with prescribed fees at the Japan Patent Office (JPO).
Who can apply for patent in Japan?
Any applicant, legal entity or organization who has a residential or business address in Japan can file the patent application. Otherwise, the applicant, legal entity or organization has to appoint a professional representative registered before the patent office to represent them in patent prosecution proceedings.
What are the details required for filing Patent application in Japan?
The following details are required for filing a Japanese patent application based on Convention application under Paris route:
- copy of the specification, claims, drawings and abstract;
- full name and address of inventor(s);
- full name and address of applicant(s);
- filing date of priority application(s);
- application number of priority application(s); and
- priority documents (must be filed within 16 months from the priority date).
What are the different types of patent applications in Japan?
- Ordinary Application or Complete Application
- Convention Application
- PCT Application
- Divisional application
How to file an ordinary patent application in Japan?
An ordinary patent application is the application which is filed with the Japan Patent Office without claiming priority from any other application under process with any other country’s Patent Office. Please note that in Japan, it is not yet possible to file a provisional patent application. Hence an applicant has to file a complete patent application with Japan Patent Office in order to get a filing date.
How to file Convention Application in Japan?
Japan is a member of the Paris Convention since July 15, 1899. Hence an application can be filed in convention countries within twelve months from the date of priority of patent application filed in Japan or a convention application can be filed in Japan within twelve months from the date of priority of a patent application of a convention country.
How to file PCT Application in Japan?
Japan joined the Patent Cooperation Treaty (PCT) on October 01, 1978. Since then, it is possible to designate Japan in International Patent Application filed via the PCT route.
What are the details required for entering a PCT application into Japanese national phase?
The following details are required for entering a PCT application into Japanese national phase, before the deadline of 30 months from earliest priority date:
- application/request form;
- copy of the PCT specification, claims and drawings;
- front page of WIPO Publication;
amendments under PCT article 19(1) and/or 34(
How to file Divisional application in Japan?
As per Japan Patent Act, if an application comprises multiple inventions then the applicant may divide it into two or more applications. However, the scope of the descriptions and drawings of the divisional applications may not extend beyond the original application.
Language– All the details and other formal documents must be filed in Japanese language.
- PCT Application: The Japanese translation of the application is required to be filed within two months from the entry into Japanese national phase.
- Convention Application: The Japanese translation of the application is required to be filed within 14 months from the priority date.
Patentability Criteria in Japan
The basic criteria for patentability are:
- inventive step; and
- industrial applicability.
As per Article 2(1) of the Japan Patent Act, an ‘invention’ is defined as “the highly advanced creation of technical ideas by which a law of nature is utilized”
Non-patentable inventions in Japan
Under the Japan Patent Act, the following are not patentable inventions:
- any invention that is liable to injure public order, morality or public health;
- laws of nature;
- scientific discoveries;
- inventions not using the laws of nature (e.g. economic laws, mathematical methods etc.);
- inventions contrary to a law of nature;
- arbitrary arrangements (e.g. rules for playing a game);
- mental activities;
- personal skills;
- mere presentation of information;
- aesthetic effects (e.g. paintings, carvings);
- methods for medical treatment of the human body.
Patent Examination in Japan
A patent application submitted with the JPO is checked so as to ensure that all the necessary procedural and formal requirements are fulfilled. An invitation to correct the application is made where necessary documents are missing or required sections are not filled.
When is the time to file office action response in Japan?
A reply to the office action is required to be filed within three months from the date of issuance of notice.
A request for examination is required to be made within 3 years from the International filing date in case of PCT application, and three years from the filing date in Japan for a Paris Convention case.
When is Patent application published in Japan?
A patent application in Japan is published after the expiry of 18 months from the date of filing. However, a request for early publication can be made in regard to the application with JPO.
From April 1, 2015 onwards, two patent opposition procedures are available:
- Invalidation trial request: This request can be filed by interested parties any time after grant (and even after the patent has expired), challenging one or more claims of a patent.
- Opposition procedure: It can be initiated by anyone, but only within six months from the publication of granted patent.
Patent Grant in Japan
The patent is granted to an application if no grounds for rejections are found. After the grant of patent, applicant has to pay first 3 years’ annuities as a registration fee within 30 days from the forwarding date of the Notice of Allowance. After registration, the Patent is published in the Official Gazette.
|Relevant Office||Japan Patent Office (JPO)|
|Law in Force||Japan Patent Act (No. 121 of 1959)|
|PCT Contracting State||Yes|
|Prosecution Process||Filing Publication Examination Grant Invalidation trial request or Patent opposition Renewal|
|Registration Term||20 years from the date of filing|
Patent Restoration Japan
As per the Japan Patent Act, if an applicant not only misses the annual-fee payment deadline but also the six-month grace period, patent lapses. However, if non-payment was due to reasons beyond control, the applicant has six more months from the lapse date during which the patent can be restored subject to payment of a penalty charge.