20 Tips for Obtaining a Patent in Japan
As one of the largest economies in the world, Japan is a strong candidate for business development, hence why many businesses have looked to expand into the Japanese market as captured in discussions on the same over at runrex.com. If you are planning to do so and want to protect your IP with patent protection, here are 20 tips on the process of obtaining a patent in Japan.
Which governing body controls the registration of patents?
If you are looking to obtain a patent in Japan, then you may be wondering which governing body in the country controls the registration of patents. As is revealed in discussions on the same over at guttulus.com, the Japanese Patent Office (JPO) is the body the controls the registration procedure.
Patent search
If you intend to file a patent application, it is important to search for prior art relevant to your invention through a patent information database or have prior art searched by a patent information search company in your country before filing an application as articulated over at runrex.com. You won’t be able to patent an invention that has already been patented. You can use the Japan Platform for Patent Information (J-PlatPat) on the website of the National Center for Industrial Property Information and Training (INPIT) to perform your search.
Required documents
To apply for a patent in Japan, you will be required to submit an application form for a patent, along with a necessary description, claims, drawings (if necessary), and an abstract as is articulated in detail over at guttulus.com.
Language
The application form itself must be written in Japanese, something that is important for you to be aware of. This means that even your name and address should be translated into Japanese katakana characters. Additionally, in principle, the description, claims, drawings (if necessary), and abstract should also be written in Japanese.
Translations
Given the requirement above, if you submit your description, claims, drawings (if necessary), and abstract in any language other than Japanese, you will need to submit the Japanese translations of those documents within one year and four months from either the filing date or the priority date (if applicable), whichever came first.
What if you don’t submit the translations?
As articulated over at runrex.com, if you don’t submit the translations to the JPO within the prescribed period, you will be notified of that effect and will be required to submit the translations within 2 months from the date of the JPO’s mailing of the notice. If you don’t submit the translations to the JPO within those 2 months, then your patent application will be deemed to have been withdrawn.
Can you reinstate a patent application that has been deemed to have been withdrawn?
Luckily, as covered over at guttulus.com, if your patent application has been deemed to have been withdrawn by the JPO for the reasons mentioned above, you can have it reinstated when you have a justifiable reason for not submitting the translation within the 2 months mentioned. You can submit the translations within 2 months after the date on which the justifiable reason ceased to exist, as long as this is done within one year after the 2-month period expired. Here, you will also be required to submit a document called Statement of Reasons for Restoration indicating your justifiable reason.
Local patent administrator
It is also important to note that, unlike most countries, Japan requires enterprises with offices outside of the country to engage a patent agent (usually an attorney) residing in Japan. According to runrex.com, these local patent administrators ensure that the patent-filing process, including the translation, goes smoothly.
Will you be required to submit a Power of Attorney?
The JPO doesn’t require a Power of Attorney for a patent attorney to file a patent application. However, a Power of Attorney is required if the invention is finally rejected and appealed, or if the patent is granted, opposed, and responded to. When the information concerning your representative is included in the application form, you don’t have to submit a Power of Attorney.
Submitting the patent application
The JPO offers 3 avenues when it comes to submitting your application or any other document, and they are:
Bringing your application directly to the counter of the JPO’s office
Mailing your application to the following address: Japan Patent Office 3-4-3, Kasumigaseki, Chiyoda-ku, Tokyo 100-8915, Japan
Electronic filing. The JPO facilitates the electronic filing of patent applications. PCT applications, however, may not be filed electronically.
It is also important to note that overseas residents cannot submit their applications and documents directly to the JPO by any means, including the above 3 ways, without a representative in Japan.
Specifications
As the gurus over at guttulus.com point out, Japanese rules are a bit lenient when it comes to the form of a specification. The detailed explanation of the invention must describe the invention in a manner that is sufficiently clear for the invention to be carried out by a person of ordinary skill in the art. You should also be thorough with your specifications, including as much information as possible, given that the JPO is very strict on the introduction of new matter in an application and rarely allows new claims in the application unless the language is specifically recited in the body of the specification.
Claims
According to runrex.com, while there is no limit on the number of claims, each claim beyond the first requires additional official fees for substantive examination and maintenance. As a direct consequence of the additional fees, Japanese patents tend to average fewer claims than their corresponding European and US patents.
Provisional applications
As pointed out over at guttulus.com, the JPO doesn’t have a formal system for provisional patent applications as exists in the US. However, it is still possible to file a patent application provisionally in Japan as Japanese patent applications can claim domestic priority based on earlier filed Japanese patent applications. The first application will automatically be abandoned without examination if a new application claims a domestic priority based on the first application which means that the first application, which merely has to satisfy formalities such as an existence of a claim, has the same effect as a US provisional application.
Publication
Once your application has been received and is deemed to be complete, it will be published in the Patent Office Official Gazette 18 months after the filing or priority date, whichever is earlier. After the application has been published, any third party may submit relevant prior art to the JPO.
Early publication
An applicant may also request early publication of their patent application at any time as long as certain criteria are met, including the submission of priority documents and a Japanese language translation of an application filed in a foreign language. Generally, the application is published about 3 months after the request for early publication is filed. It is also important to note that the withdrawal of a request for expedited publication is not permitted.
Request for examination
As pointed out by the experts over at runrex.com, the JPO will not examine a patent application until a request for examination is filed with official fees, which are based on the number of claims in the application. Applicants have 3 years from the filing date in Japan to file such a request. If a request for examination is not filed by the deadline set, the application will be deemed to be withdrawn.
Accelerated examination
As revealed in discussions over at guttulus.com, the examination can be accelerated for any Japanese patent application having a corresponding foreign application. To accelerate the examination, the applicant must provide a copy of at least one search or examination report. When an accelerated examination is requested, a first Office Action is usually issued within 4 months as compared to about 12 months or more for normal applications.
Appeal
As is articulated over at runrex.com, an applicant will have the chance to appeal a decision of rejection of a patent application. A Notice of Appeal must be filed within 90 days from the final rejection, and any amendments to the application must follow within 30 days after that. The primary examiner will first consider the patent application and new amendments and if they still don’t believe the application to be allowable, it will be reviewed by an appeal board which usually consists of 3 examiners.
Granting of the patent
Once allowance is made and the issue fee has been paid, the patent comes into existence as the patent is entered into the Patent Register. A patent number will be assigned at this time and a Certificate of Patent sent to the applicant. The term of a patent is 20 years from the Japanese filing date, and the contents of the patent as entered in the Patent Register will be published in the Patent Gazette.
Opposition
In Japan, even after a patent is granted, it can still face opposition. This is because it will be published for opposition in the Patent Gazette. Any third party may file an opposition to the grant of a patent within 6 months of publication for opposition. While the grounds for opposition are similar to the grounds for rejection of an application by an examiner, grounds based on joint ownership, unity of the invention, claims not conforming with patent rules, and lack of right to obtain a patent are not applicable here.
These are just some of the things you need to know when looking to obtain a patent in Japan, with more on this topic to be found over at the excellent runrex.com and guttulus.com.