- Patent Application Process in Japan
- Other Types of Applications
- Protecting Against Third-Party Patent Applications or Patent Rights
- Practice of Trademark Applications
Patent Application Process in Japan
PCT National Phase Entry
Every PCT application designating Japan must enter the Japan national phase within 30 months from the priority date. When the application enters the Japan national phase, a Japanese translation of the application must be submitted, and the term for submitting the translation can be extended by up to 2 months. However, if the translation has not been submitted by the end of this 2 month period, the application is deemed to be withdrawn.
In the event that an application contains some errors, a voluntary amendment to correct the errors may be filed at the time the application enters the Japan national phase. However, please note that a voluntary amendment cannot be properly filed until either the term for submitting the translation has expired or a Request for Substantive Examination has been filed. This is due to the fact that under the terms of the PCT Treaty, the designated offices are prohibited from prosecuting the application before the application enters the national phase. Furthermore, no new matter may be introduced in the voluntary amendment and Japan adheres to a very strict definition of new matter.
Paris Route Application
Under the Paris Convention, a patent application can be directly filed in the Japan Patent Office and claim priority based on the Paris Convention. Through this route, the original application can be filed in a non-Japanese language such as English; however, if the application is filed in a language other than Japanese with the Japan Patent Office under the Paris Convention, then a Japanese translation must be filed within 16 months from the priority date. If the translation is not submitted within this timeframe, the application is deemed to be withdrawn.
Request for Substantive Examination
As part of the patent application process, filing a Request for Substantive Examination is necessary step in order to begin the examination process for a patent application under Japanese law. Furthermore, a Request for Substantive Examination for any patent application pending before the Japan Patent Office (JPO) must be filed within 3 years of the filing date. The official fee for filing a Request for Substantive Examination is calculated based on the number of claims that have been filed. At the time the Request for Substantive Examination is filed, we recommend that an applicant also file a voluntary amendment to cancel any dependent claims which do not properly relate back to an independent claim. Please note that if a Request for Substantive Examination is not filed within 3 years, the application is deemed to be withdrawn.
Request for Accelerated Examination
In Japan there are three methods for requesting accelerated examination. The three methods are Accelerated Examination, Super Accelerated Examination, and the Patent Prosecution Highway (PPH).
Accelerated Examination is available to applicants who have filed an application with the Japan Patent Office and this method greatly expedites the patent prosecution process. According to the Japan Patent Office website, in 2012 the average amount of time between the request and a First Action was about 1.9 months. Note, however, that this process must be conducted in Japanese and the applicant or applicant’s representative must be domiciled in Japan. Furthermore, there are six categories under which the application must fall in order to qualify for Accelerated Examination. These are working-related applications; internationally-filed applications; applications filed by SMEs, individuals, universities, or public research institutions; green-technology related applications; earthquake disaster recovery support-related applications; and Asian Business Location Law related applications. Generally, the request is filed with the Request for Substantive Examination. Requests for Accelerated Examination for divisional applications must be filed separately. The applicant is also required to submit the results of a prior art search and compare the invention to the results of the prior art search.
Super Acceleration Examination, as the name implies, is a faster process than the Accelerated Examination process. Under the Super Acceleration process a First Action is issued within 1 month of the Request for Super Acceleration Examination. Note, however, that Designated Office applications usually receive a response within 2 months from the filing of the request. In order to be eligible for Super Acceleration Examination, the following conditions must be met:
- Applications that have Requested Examination and has not been unexamined.
- The application is both a working-related application and an internationally filed application.
- The application has been submitted online (paper applications do not qualify) 4 weeks before the filing of the Request for Super Acceleration Examination.
- The application shall not be withdrawn under Article 42(1) of the Patent Act. Please note however, that response time to Office Actions is also reduced. For Japanese applicants the response period is 30 days while overseas applicants have 2 months to respond to the Office Action.
The Patent Prosecution Highway (PPH) increases the speed of the examination process for corresponding applications filed in participating intellectual property offices. Under the PPH program, an applicant may file a request for accelerated examination under the PPH program, if an Office of First Filing of a participating intellectual property office (including Written Opinions from the ISA, IPEA and IPER) has recognized patentability in a final ruling on at least one claim. The JPO processes an application under the PPH by conducting an examination according to the existing accelerated examination process which means that the amount of time to process an application under the PPH would be the same as under normal Accelerated Examination.
After a Request for Substantive Examination has been filed examination of the application will begin, and the applicant will receive an Official Action from the Examiner. According to the Japan Patent Office statistics, in 2015 the average amount of time it took to receive a first Official Action under the normal examination system was about 9.5 months. An amendment and/or argument can be filed in response to the Official Action. The term for filing a response to the Official Action is 3 months and extensions totaling up to 3 months are available.
In the event that a response to the Official Action is not filed, the application is not immediately deemed to be withdrawn. In many cases, a Final Rejection on the same grounds as those stated in the Official Action will be issued, and the rejection of the application will only be finalized after the term for filing an appeal has expired.
If the objections or rejections in the Official Action are not overcome in the response to the Official Action, the Examiner will issue a Final Rejection. Upon receipt of the Final Rejection, the applicant has 3 months (4 months for nonresidents) from the date the Final Rejection was sent to file an appeal or the rejection of the application will be finalized.
If the applicant appeals the Final Rejection, an amendment may simultaneously be filed with the appeal. However, please note that while under the old Japanese Patent Laws, an applicant was able to file an amendment within a predetermined period after filing the appeal, under the current laws, an applicant CANNOT file amendments after the appeal has been filed. Therefore, it is critical that the applicant consider the contents of the Final Rejection and determine if there are any amendments to the claims or specification which the applicant wishes to make before filing the appeal.
Contrary to amendments, an Appeal Brief may be filed after filing for an appeal. In most cases, the JPO will request that an Appeal Brief be filed within about 1 month after the filing of the Notice of Appeal. Furthermore, the appeal may be dismissed if the applicant does not file an Appeal Brief within the predetermined period.
A final method for response to a Final Rejection would be to file a divisional application. Furthermore, a divisional application can be filed regardless of whether or not an appeal is filed. However, please note that this is substantively the final opportunity to file a divisional application, and we strongly recommend that the applicant file a divisional application at this stage, if the applicant has been considering filing a divisional application.
Reconsideration by the Examiner prior to the Appeal
If an amendment is filed simultaneously with a Notice of Appeal in order to revise the contents of the application, the appeal case will be transferred back for examination, and in most cases, the Examiner who issued the Final Rejection will reexamine the application. For this reason, we recommend that the applicant file an amendment when filing a Notice of Appeal, particularly because in most cases in which an amendment is filed with a Notice of Appeal a patent is granted.
Examination of Appeal Cases
In the case of an appeal, three Appeal Examiners will examine and review whether or not the Examiner’s determinations in the Final Rejection are appropriate. The Appeal Examiners also have the ability to determine whether or not the application should be objected to or rejected on grounds independent from those stated in the Final Rejection. If the Appeal Examiners find other grounds for rejection or objection, an Official Action will be issued, and the applicant is invited to respond to the action through an amendment or argument.
In the event that all of the reasons for rejection and objection have been overcome, the Appeal Board issues a Decision to Grant a Patent.
Appeal to the Intellectual Property High Court
If the applicant is not satisfied with the Decision of Rejection by the Appeal Board, the applicant can appeal the Appeal Board’s decision by filing another appeal with the Intellectual Property High Court (IP High Court). The IP High Court does not independently determine whether or not there are reasons for rejection or objection, but instead only determines whether or not the determinations made and the procedures followed during the appeal at the JPO were appropriate. If the IP High Court finds that the determinations or procedures in the appeal at the JPO were inappropriate and also that these errors affected the determination made in the Decision of Rejection, the IP High Court will revoke the Decision of Rejection at the JPO.
If the Decision of Rejection at the JPO is revoked, the appeal case will be returned to the three Appeal Examiners, and the application will be reexamined and a new decision will be made but bound by the decision from the IP High Court.
Other Types of Applications
1. Divisional ApplicationA Divisional Application can be filed with the Japan Patent Office at any time before the Official Action from the Examiner is received; however, a divisional application can only be filed after the Official Action is received (i) if an amendment can be filed, (ii) within 4 months after receiving the Final Rejection, or (iii) within 30 days after receiving the Decision to Grant a Patent.
Please note that the time period described in “the Decision to Grant a Patent” in the aforementioned item (ii) refers only to decisions made prior to filing an appeal. Thus, an applicant CANNOT file any divisional applications following the receipt of a Decision to Grant a Patent if the decision came after the reconsideration by the Examiner on the simultaneously filed amendment, or after the Decision to Grant a Patent following the appeal at the JPO.
In most cases, this means that the final opportunity to file a Divisional Application would be at the same time as the filing of a Notice of Appeal against the Final Rejection. Thus, if an applicant wishes to obtain patents on a variety of embodiments, the applicant must file the divisional application within 4 months of receiving the Final Rejection.
Please also be aware that with respect to item (iii), an applicant will not be able to file a Divisional Application after the payment of the annuities for registration of a patent even if the Divisional Application is received within the 30 day time period.
2. Application ConversionApplications can be converted from one type to another type. For example a design rights application can be converted into a utility model application or vice versa. In order to convert an application from one type to another, the application to be converted must be currently pending before the Japan Patent Office. The rules and requirements for converting an application from one type to another vary depending on the type of application being converted from and to. Furthermore, the original application will be deemed to be withdrawn in order to avoid double registration of the rights.
When choosing to file a converted application, the application should fulfill the individual applicant’s needs, i.e. whether the applicant wishes to obtain patent rights, design rights or utility model rights. Thus, please feel free to contact us to ask whether a converted application based on your pending applications should be filed.
Protecting Against Third-Party Patent Applications or Patent RightsTo protect against third-party patent applications or patent rights the following measures can be taken.
1. Prior Art SearchOur former JPO Examiners can conduct a prior art search of third-party applications and patents that could affect the patentability of the client’s invention. In the event that any prior art is found, three different courses of action can be taken to protect against the third-party patent application or patent rights. These options include filing third-party observations, filing an opposition, and filing for an invalidation trial.
At Sakamoto and Partners when a prior art search is conducted, the former Examiners who conduct the search consult with the firm’s patent attorneys who then work together to determine which publications are most relevant to the client’s case. In the event that a client has conducted a previous prior art search, the former Examiners and the attorneys consider the results of both the search that is conducted at Sakamoto and Partners as well as the results from the client’s previous prior art search when making a relevance determination. This practice ensures that the patent application process runs as smoothly and cost-effectively as possible.
Furthermore, conducting a prior art search in Japan may reveal relevant prior art that was not discovered during a foreign prior art search. These prior art publications can then be utilized to invalidate third-party patents in foreign patent offices.
2. Third-Party ObservationsA third-party opposition is a means to submit a prior art opposition on a pending third-party patent application. This submission allows a filer to assert that the invention lacks novelty or an inventive step and can be based on both patent publications as well as other types of publications. Furthermore, a third-party observation can also be filed on the basis of evidence other than publications such as public use or on the basis of objections to either the claims or the specification.
Moreover, contacting the Examiner in charge of examining the patent application can be very effective when filing a third-party observation.
3. OppositionAfter a patent has been allowed and published in the JPO Patent Gazette, an opposition to the allowed patent can be filed by anyone but only within 6 months from the date of publication of the Gazette. However, grounds for opposition are limited to those with regard to a public interest such as the lack of novelty or an inventive step, the addition of new matter, and objections to the claims.
4. Trial for InvalidationA “trial for invalidation” is a means to legally invalidate a patent right (or a utility model right, design right, or trademark right) that was granted but rather should have been rejected under the law. In these circumstances, a trial for invalidation declares that the patent right or registration right never existed.
A trial for invalidation can be filed against a third-party patent; however, invalidation is limited to interested parties such as those who may be infringing the patent or those who are in the process of preparing a product that may be infringing the patent.
The trial for invalidation is an inter partes procedure rather than an ex parte procedure as is the case in an opposition. This allows the filer sufficient opportunity to assert and demonstrate grounds for invalidation. However, when a trial for invalidation is filed, the filer must submit all grounds for revocation at that time and can be estopped from bringing claims in the future.
Practice of Trademark Applications1. Types of Trademark ApplicationsThere are two types of trademark applications: the direct trademark application, also known as the Paris Route, and the trademark application in accordance with the Madrid Protocol.
Under the direct trademark application, an applicant can file a trademark application directly with the Japanese Patent Office; however, foreign applicants who do not have an address in Japan must elect a representative residing in Japan at the time of filing the trademark application.
Under the trademark application in accordance with the Madrid Protocol, an applicant can file an international application with a Patent Office of a member state of the Madrid Protocol and initially or subsequently designate the Japan Patent Office to review the trademark application. Using this route the applicant can file a trademark application without electing any representative residing in Japan and the trademark application will be examined by an Examiner at the Japan Patent Office after the international registration and international publication.
In the case where the trademark application includes no reasons for rejection, the International Bureau will issue a Statement of Grant of Protection, and the applicant will be required to pay annuities in order to have the application registered. Please note that Rule 34 (3) (a) is applied to a trademark application pending before the Japan Patent Office, i.e. an individual fee payable in two parts.
However, if the trademark application includes reasons for rejection, the Japan Patent Office will issue the Official Action written in English. The applicant will then be required to elect a representative residing in Japan in order to respond to the Official Action.
2. Trademarks Allowable in JapanTrademarks consisting of characters, figures, signs, three dimensional shapes, colors, or any combinations thereof, or movements of characters or figures, hologram, sounds, and position are basically allowable in Japan.
3. ApplicationIn the application the applicant must describe and specify the trademark that the applicant seeks, designate goods and services, and provide the name and address of the applicant in the application documents in order to file a trademark application.
The Japan Patent Office uses a classification system known as “similar group codes” to group together designated goods and services. If an applicant applies for 8 or more similar group codes, the Examiner will issue an Official Action in order to confirm the applicant’s intent to use the trademark for the designated goods and services. Also note that additional fees will be assessed as the number of similar group codes increases.
4. Publication in the Official GazetteOnce a trademark application has been filed, the application will immediately be disclosed in the JPO Official Gazette. There is no fee for disclosure in and issuance of the Official Gazette.
5. Formality Examination of the ApplicationAfter being published, a Japan Patent Office Examiner will conduct a formality examination of the trademark application in order to determine whether the application meets the necessary procedural and formal requirements. In the event that the Examiner finds any defects in the trademark application, the Director of the JPO will issue an invitation to correct the application.
6. Substantive ExaminationAt this stage the Examiner will substantively examine the trademark application and make as determination as to whether the trademark has a distinctive feature, whether the trademark is similar to other registered trademarks, and whether the designated goods and services have been appropriately assigned.
This means that a trademark, which is identical or similar to other trademarks and belonging to other entities, cannot be registered for the same or similar designated goods or services. Similarity between trademarks will be judged based whether consumers and traders with ordinary attentiveness are able to distinguish the trademark from those belong to other parties. The trademark will be consider in the totality of all it elements including features such as appearance, sound, and concept.
7. Official ActionWhere an application fails to meet the substantive requirements, the Examiner will issue the Official Action. The applicant has the option to respond to the Official Action by submitting either a written argument or an amendment to overcome the grounds for rejection.
If the applicant fails to respond to the Official Action, the Examiner will issue the Final Rejection.
8. Final RejectionIf the applicant is unable to overcome the grounds for rejections or objection, the Examiner will issue the Final Rejection. An appeal may be filed with the Japan Patent Office within 3 months from the receipt of the Final Rejection. If the applicant fails to file an appeal with the Japan Patent Office, the Final Rejection will be finalized.
9. Appeal at the Japan Patent OfficeAn applicant may file an appeal at the Japan Patent Office within 3 months from the receipt of the Final Rejection.
10. Decision of RegistrationIf the Examiner determines that the application meets the substantive requirements for issuance of a trademark, a Decision of Registration will be issued. In order for the trademark to become registered, a registration fee must be paid within 30 days from the decision.
The trademark right will not be registered unless the registration fee is paid.
11. Trademark GazetteThe registered trademark will be published in the Trademark Gazette.
12. OppositionAny person can file an opposition within 2 months from the publication in the trademark gazette.
13. Request for Accelerated ExaminationA Request for Accelerated Examination can be filed under the following conditions;
- An applicant or a licensee is actually using the trademark in the application for the designated goods or services at the time of the request, or is preparing to use the trademark to a respectable degree, and the trademark in the application needs to be registered as soon as possible e.g., under the condition that other parties are using the trademark, and
- The second situation in which an applicant may request Accelerated Examination is when the applicant can show that the mark is either currently being used, or that the applicant has made considerable progress in preparing to use the trademark, and the mark is designated ONLY for goods and services.
Where the conditions for Accelerated Examination have been met, the Examiner will allow the Request for Accelerated Examination and the applicant should receive the first Official Action in about 2 to 3 months from the request.
14. Trial for Cancellation of registered Trademark not in UseIn the event that a registered trademark has not been used for 3 years, any person, regardless of whether the person is an interested party, can request that the registered trademark be cancelled. Furthermore, the trademark will be cancelled unless the holder of the trademark can show that there has been actually use of the trademark within last 3 years or that there was just cause for the non-use.