FAQ on Japanese Patent Practice

PCT National Phase Entry into Japan

If you already filed PCT application in your country, it is required to file a Petition for Entry within 30 months from the international filing day or the priority date, whichever is earlier.

It is possible to file a Japanese translation of a PCT application later, within 2 months from the date on which the Petition for Entry is filed.

  • Basic Filing Fee: JPY60,000
  • Translation Fee: JPY25 (per English word)
  • Government Fee: JPY14,000

Yes, in such a case, we will review the translation to satisfy the JPO’s formality requirements only with no additional charges. However, we recommend our IP attorneys’ proofreading (JPY5/word) before filing to proceed with later prosecution smoothly.

It is practically possible, but we make it a rule to refrain from translating any amendments at the time of entering the national phase so that we can avoid the possibility of putting a reason for rejection or invalidation into the application.

No, under the current Japanese practice, it is practically not necessary to file a Power of Attorney at the time of the filing of the national phase entry into Japan. 

However, when we receive instructions to enter the national phase in Japan with respect to a PCT application, we usually ask the applicant to have a General Power of Attorney duly executed and return the original copy to us.

The reason why we ask the clients in advance to provide us with the Power is that we would like to keep it in hand for the possible future instances. For example, a Power is required when filing an Appeal, but it is sometimes difficult for the applicant to provide us with the Power before the deadline.

Unlike the IDS system in the U.S., there are NO duty of disclosure requirements for patent applications in Japan. Only one thing similar thereto is a duty of describing prior art close to the claimed invention in the specification. Therefore, there are NO related deadlines. It is not required to add prior art information to the application once the application is filed. If the application has no such disclosure without any reason, the Examiner may order to submit prior art information which can be of help for examination.

We usually receive a notice of the Japanese patent application number from the JPO in a couple of weeks, but in some cases a few months after filing a Petition for Entry of the PCT application.

Yes. If you filed a PCT application in your jurisdiction, you can file a Petition for Entry into Japan and a full Japanese translation of the application by yourselves before the Japan Patent Office (without appointing a Japanese representative).

Request for Examination in Japan

A Request for Examination must be filed within 3 years from the international filing date.

A Japanese patent application will not be examined unless a Request for Examination is filed. If examination is not requested in time, the application will be regarded as having been withdrawn.

  • Government Fee: JPY106,000 (basic fee) + JPY3,600 x N (the number of claims)

  • Attorney’s Fee: JPY50,000

    Please note that the Government Fee is calculated simply based on the number of claims, regardless of the number of independent claims, multiple dependent claims, etc.

    Further, the Government Fee changes based on the international filing date, ISR, etc. For more details, please see our website or contact info@allegropat.com for specific quotation. 

The newly revised deduction practice regarding Official Fees before the JPO applies to Japanese patent applications filed on or after April 1, 2019. 

Under the new practice, medium and small sized companies, which are not controlled by large enterprise, may file a request for half or two-thirds deduction of Official Fees without submitting any certificate before the JPO.

If the applicant satisfies either of the following conditions, please let us know:

  • Condition (a-1): payroll number being 300 or less and capitalized at JPY 300,000,000 or less
  • Condition (a-2): established within 10 years and capitalized at JPY 300,000,000 or less

The conditions depend on the category of business, etc. Hence, upon request, we will check if the applicant would be eligible for the deduction, and if eligible, we will file a Request for Examination together with a request for deduction. For more details, please see the below link at the Japan Patent Office website.

If a foreign counterpart is granted by a foreign patent office, you are eligible for the PPH in Japan. It is also possible to file a request for the PCT-PPH based on the positive WO/ISA, WO/IPEA or IPER. 

We usually file a request for the PPH together with a Request for Examination. It is possible to file a request for the PPH later, but one of the requirements is that the examination at the JPO has not yet commenced. 

No government fee is required for the PPH.

Response to Office Action

In general, we receive a first Office Action in about 10 months from the filing of a normal Request for Examination. 

If you file a request for an accelerated examination, we usually receive a first Office Action in about 3 months.

The due date for filing a response to an Office Action is 3 months.

No Government Fee is basically required. However, please note that examination surcharges will be incurred based on the number of claims that is increased from the one at the time the request for examination was filed.

Meanwhile, for foreign applicants, the due date can be extended to 6 months at maximum by obtaining a two (2) month extension at a first request and a one (1) month extension at a second request.

The costs for each extension would be:

  • Government extension fees: JPY 2,100
  • Service Fees: JPY 4,000

Under the Japanese patent practice, “A consists essentially of X” is interpreted to mean that A may include, in addition to X, minor impurities that cannot technically be completely removed from the batch or a trace amount of components that do not affect the aimed object or the intended results of the claimed invention.

With regard to the term “substantially consisting of” interpreted in Japan, it means that it cannot contain any other element that will have some influence on the claimed composition regarding the aimed object of the claimed invention.

Yes. The Japanese patent law requires that a patent application should describe information regarding a publication(s) of prior art of which an applicant is aware at the time of filing an application (Article 36(4)(ii)). If an application does not satisfy this requirement, an examiner issues a notice to give an opportunity for an applicant to file an argument (Article 48septies). However, in practice, it is rare for us to receive such a notice.

A general description of the prior art would not be sufficient under the Japanese patent practice. It is basically required to discuss specific prior art references and to list publication numbers of such references.

Please note that, under the current Patent Law, the judgment of new matter is very strict, much stricter than that in the U.S. practice.

In this regard, it is impermissible to incorporate any words or expressions which are not directly and exclusively derived from the description of the original specification even if such words or expressions are obvious to one skilled in the art from the specification and the state of the art. In other words, what can be incorporated into the claims and/or the specification in an Amendment are only almost exactly the same words and expressions (perfectly identical support on a word-by-word basis is required) as those given in the original claims and specification. If this rule of amendment is violated, it can constitute a reason for rejection or invalidation as introduction of new matter.

In this connection, we should indicate, in a response, the basis or supporting description in the original specification for each item of amendment.

In addition, under the current Law, if an Amendment filed in response to a first office action necessitates a new ground(s) of rejection, the next office action will be made final.  After the final office action, amendments will be still further restricted so that new issues which are not recited in the claims pending at that time cannot be presented as with the case of the U.S. practice, and increasing of the number of claims will be impermissible.  Also, we do not have a system of continuation applications.  Therefore, in view of the two aspects of very strict restrictions to amendments (i.e., very strict interpretation of new matter and restricted options for amendments after a final office action), utmost care should be taken in formulating and preparing amendments.  Also, it would be advisable to present a variety of claims having different broadnesses of scope and reciting different aspects of the invention in a response to the first office action, in order to have various types of claims examined before the final action.  This will enable us to ascertain the Examiner’s position on the various scopes of the claims and to determine possible courses of action to be taken or the direction in which the claims should be further amended, in order to place the application in condition for allowance.

The due date for filing a Notice of Appeal is 4 months for foreign applicants. Please not that the due date cannot be extended. 

An Amendment can be filed only at the time of the filing of the Notice of Appeal.

Although we usually file an Appeal Brief together with the Notice of Appeal, but it is possible to file an Appeal Brief later. If an Appeal Brief is not filed together with the Notice of Appeal, the JPO will notify applicants to file the Appeal Brief within 1 month.

The Government Fee for filing an Appeal would be: JPY49,500 + JPY5,500 x N (the number of claims)

Post Allowance

The registration fee (first three annuities) must be paid within 30 days of the receipt of the Decision to Grant.

Please note that it is possible to file a request for 30 days extension of the term for paying the first three annuities.

The costs for the registration of a patent would be:

  • Registration Fee (initial 3 annuities): (2,100 + 200 x N) x 3
  • Service Fees: JPY 30,000

Please note that the registration fee (first three annuities) must be paid at once for three years for all the claims.