Request for Examination in Japan
Request for Examination in Japan
Practice tips for international clients when filing a request for examination in Japan.
Please note that a Japanese patent application is not examined unless a request for examination is filed. If an examination is not requested in a timely manner, the application will be regarded as having been withdrawn.
01. Deadline
In the case of a Japanese national phase application based on a PCT application, a request for examination must be filed within three years from the international filing date, regardless of whether the PCT application claims priority.
02. Cost
The estimated costs for filing a request for examination are as follows (in Japanese yen):
- Official Fee: JPY 124,000 (basic fee) + JPY 3,600 x N (the number of claims)
- Attorney's Fee: JPY 30,000
- Attorney's Fee (if applicable) for reviewing claims, providing comments/proposals, preparing amendments, written statement, etc.: JPY 45,000 - 60,000 (depending on the workload)
Reduction for Small Entity, University, etc.:
According to the current Japanese practice, medium and small-sized companies (not controlled by large enterprises), universities, and other entities may submit a request for a reduction in the official fee. This reduction can be either half or two-thirds of the standard fee. The request can be made without the need to submit any certificate before the JPO.
Please note that the reduction rate is subject to change depending on various factors. If you would like us to file a request for deduction, please explicitly instruct us to do so when you provide us with your instructions regarding request for examination. Our additional service fee for filing the request for reduction would be JPY 10,000. To determine the applicant's eligibility for the deduction, please provide the following information:
(r-1): number of employees
(r-2): capital amount
(r-3): years since establishment
A rough approximation would be acceptable. Upon request and eligibility, we will file a request for examination along with a request for deduction.
- Official Fee: JPY 124,000 (basic fee) + JPY 3,600 x N (the number of claims)
- Attorney's Fee: JPY 30,000
- Attorney's Fee (if applicable) for reviewing claims, providing comments/proposals, preparing amendments, written statement, etc.: JPY 45,000 - 60,000 (depending on the workload)
Reduction for Small Entity, University, etc.:
According to the current Japanese practice, medium and small-sized companies (not controlled by large enterprises), universities, and other entities may submit a request for a reduction in the official fee. This reduction can be either half or two-thirds of the standard fee. The request can be made without the need to submit any certificate before the JPO.
Please note that the reduction rate is subject to change depending on various factors. If you would like us to file a request for deduction, please explicitly instruct us to do so when you provide us with your instructions regarding request for examination. Our additional service fee for filing the request for reduction would be JPY 10,000. To determine the applicant's eligibility for the deduction, please provide the following information:
(r-1): number of employees
(r-2): capital amount
(r-3): years since establishment
A rough approximation would be acceptable. Upon request and eligibility, we will file a request for examination along with a request for deduction.
03. Amendment
At the time of filing a request for examination, it is recommended that the Japanese claims be amended to conform to the Japanese patent practice. Please find below some illustrative examples of Japanese patent practice, which may not always align with the claims of a PCT national phase application.
Restriction of Multiple-Multiple Dependent Claims:
Please be advised that the Japanese patent rule has recently been amended to impose restrictions on multiple-multiple dependent claims*. Please be advised that, in the case of a PCT national phase application, this new rule applies to an application whose "international filing date" is April 1, 2022, or later.
According to the new rule, if a Japanese application includes multiple-multiple dependent claims, the application will be rejected, and the multiple-multiple dependent claims will not be examined.
In our practice, when a request for examination is filed, we review the claim dependencies and propose claim amendments to avoid the possibility of receiving an unnecessary office action.
*Please be advised that the JPO defines the term "Multiple-Multiple Dependent Claim" as follows: "Any dependent claim that depends from more than one other claim ('multiple dependent claim') which depends from any other multiple dependent claim."
Preferable Examples:
Please note that the use of terms such as "optionally," "for example," "in particular," "preferably," and similar expressions in claims, indicating a preferable example, is generally not permitted under Japanese patent practice.
In our practice, when a request for examination is filed, we propose to either delete the specified terms or limitations, or to add dependent claims directed to the preferable examples.
Medical Procedures:
According to Japanese patent practice, methods for medical operations, treatments, or diagnoses for humans are not considered patentable subject matter.
In our practice, when a request for examination is filed, we propose to amend the claims directed to medical procedures. For example, we propose to amend them so that they are directed to a method of treating or diagnosing non-human animals, a pharmaceutical composition, etc.
Restriction of Multiple-Multiple Dependent Claims:
Please be advised that the Japanese patent rule has recently been amended to impose restrictions on multiple-multiple dependent claims*. Please be advised that, in the case of a PCT national phase application, this new rule applies to an application whose "international filing date" is April 1, 2022, or later.
According to the new rule, if a Japanese application includes multiple-multiple dependent claims, the application will be rejected, and the multiple-multiple dependent claims will not be examined.
In our practice, when a request for examination is filed, we review the claim dependencies and propose claim amendments to avoid the possibility of receiving an unnecessary office action.
*Please be advised that the JPO defines the term "Multiple-Multiple Dependent Claim" as follows: "Any dependent claim that depends from more than one other claim ('multiple dependent claim') which depends from any other multiple dependent claim."
Preferable Examples:
Please note that the use of terms such as "optionally," "for example," "in particular," "preferably," and similar expressions in claims, indicating a preferable example, is generally not permitted under Japanese patent practice.
In our practice, when a request for examination is filed, we propose to either delete the specified terms or limitations, or to add dependent claims directed to the preferable examples.
Medical Procedures:
According to Japanese patent practice, methods for medical operations, treatments, or diagnoses for humans are not considered patentable subject matter.
In our practice, when a request for examination is filed, we propose to amend the claims directed to medical procedures. For example, we propose to amend them so that they are directed to a method of treating or diagnosing non-human animals, a pharmaceutical composition, etc.
04. PPH
The Patent Prosecution Highway (PPH) is a procedure that accelerates examination in the JPO. It is either based on allowance granted by a foreign patent office (standard PPH) or on positive WO/ISA, WO/IPEA, or IPER (PCT-PPH).
Deadline:
- After a request for examination is filed at the JPO; and
- Before Examination at the JPO has not yet commenced.
In practice, we typically file the PPH request and the examination request concurrently.
Cost:
The estimated costs for filing a PPH request are as follows (in Japanese yen):
- Official Fee: JPY 0
- Attorney's Fee: JPY 75,000 - 90,000 (depending on the workload)
At our firm, if a counterpart application is granted in another jurisdiction or a positive search report is issued during the international stage, we actively utilize the PPH procedure. This would significantly accelerate the JPO examination process and enhance the allowance rate.
If we receive a client's request for the PPH, we will review the WIPO database and/or the foreign countries' Patent Office database to obtain the prosecution history and relevant materials. We generally prepare the necessary documentation on our end, but if there are any materials unavailable to us, such as non-patent literature cited during the prosecution, we ask you to provide us with additional information.
In standard PPH, it is essential that each claim of the Japanese patent application corresponds to a claim of the counterpart application at the time of filing the PPH. This does not imply that the Japanese claims should be exactly the same as the counterpart claims. However, it must ensure that the differences between the claims are within the range of linguistic difference between English and Japanese, or that the scope of the Japanese claims should be narrower than that of the counterpart claims.
Please note that the PPH is committed to initiating the examination of the Japanese application in the near future, within a few months. However, it is important to understand that this does not guarantee the granting of a patent on the Japanese patent application. This approach merely accelerates the examination process. Japanese Examiner will conduct a subsequent search in Japan and issue a rejecting office action if it finds at least one reason for rejection, such as finding a pertinent prior art reference.
Deadline:
- After a request for examination is filed at the JPO; and
- Before Examination at the JPO has not yet commenced.
In practice, we typically file the PPH request and the examination request concurrently.
Cost:
The estimated costs for filing a PPH request are as follows (in Japanese yen):
- Official Fee: JPY 0
- Attorney's Fee: JPY 75,000 - 90,000 (depending on the workload)
At our firm, if a counterpart application is granted in another jurisdiction or a positive search report is issued during the international stage, we actively utilize the PPH procedure. This would significantly accelerate the JPO examination process and enhance the allowance rate.
If we receive a client's request for the PPH, we will review the WIPO database and/or the foreign countries' Patent Office database to obtain the prosecution history and relevant materials. We generally prepare the necessary documentation on our end, but if there are any materials unavailable to us, such as non-patent literature cited during the prosecution, we ask you to provide us with additional information.
In standard PPH, it is essential that each claim of the Japanese patent application corresponds to a claim of the counterpart application at the time of filing the PPH. This does not imply that the Japanese claims should be exactly the same as the counterpart claims. However, it must ensure that the differences between the claims are within the range of linguistic difference between English and Japanese, or that the scope of the Japanese claims should be narrower than that of the counterpart claims.
Please note that the PPH is committed to initiating the examination of the Japanese application in the near future, within a few months. However, it is important to understand that this does not guarantee the granting of a patent on the Japanese patent application. This approach merely accelerates the examination process. Japanese Examiner will conduct a subsequent search in Japan and issue a rejecting office action if it finds at least one reason for rejection, such as finding a pertinent prior art reference.