New Digitization Procedures in Japan – Submission of Priority Document

Background

In order to enjoy the benefit of priority, it is generally necessary to file a priority certificate with the Japan Patent Office (“JPO”).  However, the filing of the certificate may be waived under certain conditions.

Previous Practice:

When we receive filing instructions from our overseas clients, the Japanese application usually enjoys the benefit of the priority.

Typically, in the case of a PCT national phase entry into Japan, the PCT application claims priority to the original (local) application.  We check the PCT/IB/304 form in the WIPO database to confirm that the priority has been sufficiently claimed in the international stage. 

If the PCT/IB/304 shows some deficiency, e.g. the column “Date of receipt of priority document” is not indicated or the priority document was not furnished in compliance with Rule 17.1(a), (b) or (b-bis), under the previous practice (until December 31, 2023), it was necessary to file a certified copy of the priority document with the JPO.  We have asked our clients to obtain the certificate from the Patent Office in their jurisdiction and to mail the original copy to us.

Meanwhile, in the case of filing a Japanese application under the Paris Convention claiming priority, if a DAS (Digital Access Service) code (4-digit confirmation number) is available, it is possible to omit the filing of a certified copy of the priority document.  If the DAS code is not available, it was required to submit a certified copy of the priority document.

In the case of a trademark application, there is no access code and therefore a certified copy was required in the same manner.

New Practice:

However, on or after January 1, 2024, as part of the new digitization procedure, the JPO no longer requires the certified copy of the priority document.  That is, the JPO accepts the electronic filing of the following documents:

1. PDF scanned copy of the priority document; and
2. Priority document issued electronically by the first country’s Patent Office (in PDF format).

It is still possible to submit the certified copy of the priority document in the same way as before, and further, it is possible to submit a printed copy of the certificate. 

We believe the above comments will be clear to you.  Should you have any further questions, please do not hesitate to contact us.