Filing Requirements – Paris Route
For overseas applicants, there are basically two ways to file a patent application in Japan, that is, the Paris route and the PCT route.
As to the Paris route, there are two ways to file an application: (1) Japanese application and (2) foreign language application.
The documents to be filed are basically the same, and the difference is in the timing of filing the documents. As to item (1), it is necessary to file a Japanese application within 12 months from the priority date. Meanwhile, as to item (2), it is possible to file an application in English at first within the 12-month period, and then, prepare and file a Japanese translation within 16 months from the priority date.
The official fee for filing a foreign language application is slightly higher, but the merit is that it is possible to file an amendment based on the original English specification. That means, even if there are mistranslations at the filing stage, it is possible to correct them later.
Filing Requirements – PCT Route
As to the PCT route, it is possible to file only a Petition for Entry at first, and then, prepare and file a Japanese translation later.
The petition must be filed within 30 months from the priority date (or, if the priority is not claimed, from the international filing date). Then, the Japanese translation may be filed within 2 months from entry into the national phase. That is, if you wish to defer the filing of a translation, for example in the case of a voluminous specification, I think it advisable to file the petition closer to the 30-month deadline.
If a translation is not filed, the Japanese application is deemed to be withdrawn, and the JPO will refund the official fee.
Claiming Priority
In the case of the Paris route, we usually list the DAS code in the application. But, if the DAS code is not available, we will have to file a certified copy of the priority document which should be obtained from the Patent Office in your jurisdiction.
In the case of the PCT route, a priority document should already be filed in the international stage. But, if we check the WIPO form, which I will mention later, and find that the priority document has not been filed in a timely manner at the international stage, we have to file a certified copy of the priority document within 32 months from the priority date.
Other Documents
Power of Attorney
A power of attorney is NOT required at the filing stage. I think most Japanese firms ask you to provide a power of attorney when filing a Japanese application, but it is actually for keeping it in hand for possible future instances. For example, a power is required when filing an appeal against a decision of rejection. The reason why Japanese firms ask their clients in advance to provide a power is that the JPO previously required an original copy of a power with a handwritten signature. So, it was sometimes difficult for us to immediately obtain such a power when needed, sometimes 10 years later after filing.
However, the practice in Japan has significantly changed due to the COVID-19 outbreak. Under the new practice, the JPO no longer requires a handwritten signature on a power of attorney. But, the JPO still requires an original copy. If the applicant prints or types the officer name (and also the date) on the power and returns the WORD format to us by e-mail, that would be OK. We will print out the power and submit it as an original copy with the JPO. Meanwhile, if either the officer name or the date is handwritten in the power, we need an original thereof, which means you should send a hard copy to us by post.
Amendment
Overseas applicants sometimes ask us to file amendments at the time of entering the national phase.
However, I think it advisable to translate and file the original specification at first, and file amendments later, probably together with a request for examination. This is because, the judgment of new matter is very strict in Japan. And further, if the Japanese translation includes original disclosure of the PCT application, we can file a divisional application based on it.
Deposition/Sequence Listing
If you are in the biotech field, you should be aware of the deposition/sequence listing.
In Japan, the deposition must be made before the priority date. We sometimes receive PCT applications in which accession numbers are blank. I think it is OK in some countries to add accession numbers after the filing, but in Japan, such an addition would cause issues of new matter.
As to the sequence listing, if it is not filed in the international stage, we receive a notice from the JPO, and then, we can submit data including the sequence listing.
WIPO Forms to be checked
When we are advised to enter the national phase in Japan, we check the status and various forms at the WIPO database.
IB304
In particular, as to the priority, we check the IB304 form. If this form is not issued, or, if the form is issued but the receipt date is not indicated, we have to file a certified copy of the priority document before the JPO. If there is an asterisk next to the receipt date, this means that the priority document was not filed in a timely manner at the international stage. Again, we have to file a certified copy before the JPO.
We sometimes see that priority rights are restored in the international stage. In this case, we have to check if the restoration is also effective in the Japanese national phase.
In the case of “due care”, the priority right is basically effective in Japan. However, in the case of “unintentional”, it is not effective in Japan. In this case, we have to get permission from the JPO based on the Japanese specific rule.
IB306
If the name/address of the inventor/applicant is changed in the international stage, we have to check the IB306 form.
(1) If the form is already issued, there is no problem. We will file a Japanese national phase entry based on the updated information. (2) If the change was completed closer to the 30-month deadline, it is practically possible to file a Japanese application before the IB306 form is issued, but we should explain the situation in the Japanese application. (3) Meanwhile, if the procedure was completed after the 30-month deadline, we have to file a Japanese application based on the original information, and then, complete the necessary procedures before the JPO. In this connection, please note that additional official fees will be incurred.
Relief Measures for Late Filing – PCT Route
There is a rule in Japanese patent practice about unintentional missing of deadlines. It covers the deadline to submit national phase entry of a PCT application.
In the normal process, in order to validly enter the national phase after the lapse of a 30 month period, it must be verified that there is a “legitimate reason”. In this respect, simply inadvertent failure does not meet the requirements. In general, the legitimate reason is very restricted and the chance of success in getting permission from the JPO is very low.
On the other hand, last year, the JPO revised the guideline regarding the procedure to get permission based on the COVID-19 outbreak, and under the new guideline, it is NOT required to submit any certificate. I believe that the chance of success is much higher than the normal process.
The request for such permission should be filed within two months from the time the cause was resolved. We believe it advisable to file all of the documents, including 1) request for permission, 2) petition for entry, and 3) Japanese translation, within the 2-month period at the same time, to be on the safe side.
It takes about 6 months, and sometimes more, to receive a notice from the JPO whether the request has been accepted.
Grace Period – PCT Route
Even if an invention is disclosed to the public, you may obtain a patent protection in Japan under certain conditions. Japanese patent law regarding the “Grace Period” has been revised several times, and the recent revision was that the period was expanded from 6 months to 1 year.
In the case of the PCT route, it is necessary to file a PCT application within 1 year from the disclosure. Even if the application claims priority, please note that the international filing date should fall within the 1 year period.
We also have to file a statement and a certificate within 30 days. The starting date of this 30 days period is actually case-by-case, it depends on the timing of filing a translation or a request for examination. Typically, 30 days starts from the submission of Japanese translation.
The statement is to merely request for the grace period. In the certificate, we should explain the “facts of publication”, such as date of publication, place, name of the person who published the invention.
Post-Filing Procedures
After you file a Japanese patent application, you receive an application number later.
But, this does not mean that the national phase entry was safely completed. That is, we often receive an application number before filing a translation, but if we do not file the translation, the application will be deemed to be withdrawn. As to the relief measures for the late filing, we receive an application number before we get the permission from the JPO.
As to the PCT route, we usually receive an application number in a week or so after the petition for entry, but sometimes it takes a few months.
As you know, a request for examination must be filed within 3 years: (1) from the Japanese filing date for Paris route; and (2) from the international filing date for the PCT route, even if the application claims priority.
Recent Changes
Assignment Procedures
As explained previously, the JPO no longer requires original copies of handwritten documents, such as a power of attorney. But, there are some exceptions. The JPO still requires an original copy of a handwritten document related to an important procedure, such as an assignment.
In this respect, the new practice which was enforced on January 1st, this year is that the JPO requires that the intention of the assignor should be confirmed. This means, the assignment procedures should be completed on our side, but we have to confirm that the assignor’s intention was actually confirmed through the local representative.
Patent term extension
The duration of patents related to pharmaceuticals may be extended, if patented inventions were unable to be worked for because it was necessary to obtain regulatory approval.
But in the new practice, which is applied to applications filed on or after March 10, 2020, it is possible to extend the patent term regardless of the technical fields of patents.
Under the new practice, we can request an extension of patent term if: (1) a patent takes more than five years to issue from the filing date; or (2) patent examination continues more than three years from the date of filing a request for examination.
Registration/Maintenance Fee Increase
Finally, the JPO has decided to increase some of the official fees on or after April 1st, this year.
For overseas applicants, I think the increases in registration fee and maintenance fee would be relevant. The slide shows the changes regarding the first three annuities, but all of the registration and maintenance fees will be increased, and also the fees related to trademarks will be increased.
*We share a PPT material on “Patent Filing Requirements before the Japan Patent Office”, on which Hiroshi Higuchi, a Managing Partner of Allegro IP, recently gave a presentation at the MIPLA Virtual Webinar
