Japan Patent Prosecution
Patent Prosecution in Japan
Practice tips for international clients when responding to an office action in Japan.
Once a request for examination has been filed, the Japan Patent Office (JPO) will typically issue its first notification within 10-12 months. We are pleased to confirm that we will provide a timely report on the notification, in accordance with each client’s preference.
01. Office Action
Once the examination at the JPO has commenced, we typically receive an allowance or a first office action from the JPO within 10-12 months. For details regarding the allowance, please refer to Item 03 below.
Deadline:
In almost every case, we receive at least one office action. The deadline for filing a response to an office action is three months.
Overseas applicants may be eligible for a three-month extension. An initial extension of two months can be granted at the first request, followed by a subsequent extension of one month at the second request. This provision allows for a six-month period following the receipt of an office action.
In the meantime, if an office action is issued during the appeal procedure (appeal against a decision of rejection explained below), extensions of the term can be obtained in monthly increments, up to three months (that is, a six-month period in total).
Cost:
(1) Attorney’s Fee
The estimated costs for filing a request for examination are as follows (in Japanese yen):
- Attorney's Fee: JPY 75,000 - 200,000(depending on the workload)
Our comprehensive service offerings include:
(i) Studying an office action and reporting with a detailed analysis and proposed amendments;
(ii) Preparing an English translation of the office action; and
(iii) Preparing and filing a response, including an amendment and an argument, and reporting.
In the meantime, our firm offers a variety of customized plans tailored to meet the individual needs of each client. For clients seeking cost savings, we utilize a machine translation from the J-PlatPat database and supplement it in our reporting letter. For certain clients, we offer the option of accepting their draft response to reduce expenses related to item (i).
(2) Extension Fee
The estimated costs for filing a request for each extension are as follows (in Japanese yen):
- Official Fee: JPY 2,100
- Attorney's Fee: JPY 5,000
Our Report:
When we receive an office action, we carefully review it and prepare a reporting letter. This letter includes a detailed analysis and proposed amendments to overcome the rejections raised in the office action. We typically complete this letter within one month.
For clients seeking cost savings, we offer a complimentary brief repotting letter along with a machine translation of the office action, typically delivered within a few days.
Response to the JPO:
After we have communicated with our clients and received formal instructions, we prepare a response, including an amendment and an argument, and submit it with the JPO on or before the due date.
In the amendment, the Japanese claims are amended as agreed with the clients. In the argument, for example, we submit extensive remarks contending the differences between the present invention as claimed and the inventions disclosed in the cited references. We also submit detailed explanations about the satisfactoriness of the support, enablement, and clarity requirements.
Once the necessary documentation is submitted with the JPO, we provide a report along with a copy of the submitted documents on the same date.
Deadline:
In almost every case, we receive at least one office action. The deadline for filing a response to an office action is three months.
Overseas applicants may be eligible for a three-month extension. An initial extension of two months can be granted at the first request, followed by a subsequent extension of one month at the second request. This provision allows for a six-month period following the receipt of an office action.
In the meantime, if an office action is issued during the appeal procedure (appeal against a decision of rejection explained below), extensions of the term can be obtained in monthly increments, up to three months (that is, a six-month period in total).
Cost:
(1) Attorney’s Fee
The estimated costs for filing a request for examination are as follows (in Japanese yen):
- Attorney's Fee: JPY 75,000 - 200,000(depending on the workload)
Our comprehensive service offerings include:
(i) Studying an office action and reporting with a detailed analysis and proposed amendments;
(ii) Preparing an English translation of the office action; and
(iii) Preparing and filing a response, including an amendment and an argument, and reporting.
In the meantime, our firm offers a variety of customized plans tailored to meet the individual needs of each client. For clients seeking cost savings, we utilize a machine translation from the J-PlatPat database and supplement it in our reporting letter. For certain clients, we offer the option of accepting their draft response to reduce expenses related to item (i).
(2) Extension Fee
The estimated costs for filing a request for each extension are as follows (in Japanese yen):
- Official Fee: JPY 2,100
- Attorney's Fee: JPY 5,000
Our Report:
When we receive an office action, we carefully review it and prepare a reporting letter. This letter includes a detailed analysis and proposed amendments to overcome the rejections raised in the office action. We typically complete this letter within one month.
For clients seeking cost savings, we offer a complimentary brief repotting letter along with a machine translation of the office action, typically delivered within a few days.
Response to the JPO:
After we have communicated with our clients and received formal instructions, we prepare a response, including an amendment and an argument, and submit it with the JPO on or before the due date.
In the amendment, the Japanese claims are amended as agreed with the clients. In the argument, for example, we submit extensive remarks contending the differences between the present invention as claimed and the inventions disclosed in the cited references. We also submit detailed explanations about the satisfactoriness of the support, enablement, and clarity requirements.
Once the necessary documentation is submitted with the JPO, we provide a report along with a copy of the submitted documents on the same date.
02. Decision of Rejection
Deadline:
If the reasons for rejection raised in the office action are not addressed, a decision of rejection is issued.
For overseas applicants, the legal term for filing an appeal is four months (non-extendable).
Specifically, the deadline for filing a notice of appeal is four months, and any amendments must be submitted at the same time. An appeal brief can be filed at a later date. In practice, we typically file a notice of appeal, an amendment, and an appeal brief on the same day.
Cost:
The estimated costs for filing an appeal are as follows (in Japanese yen):
- Official Fee: JPY49,500 (basic fee) + JPY5,500 x N (the number of claims)
- Attorney's Fee: JPY 150,000 - 250,000 (depending on the workload)
Our Practice:
We generally provide a report and prepare and file the necessary documentation with the JPO in the same manner as that for an office action outlined above.
In the meantime, a divisional application may be filed within four months after the receipt of the decision of rejection. Please be advised that this is the final opportunity to file a divisional application unless a further office action is issued in this application. In other words, if no further office action is issued in this application, it will no longer be possible to file a divisional application later on (for example, even when a decision of grant is issued by the examiner or a favorable decision of appeal affirming a grant is issued by the board of appeals). Therefore, we typically advise our clients to consider filing a potential divisional application.
If the reasons for rejection raised in the office action are not addressed, a decision of rejection is issued.
For overseas applicants, the legal term for filing an appeal is four months (non-extendable).
Specifically, the deadline for filing a notice of appeal is four months, and any amendments must be submitted at the same time. An appeal brief can be filed at a later date. In practice, we typically file a notice of appeal, an amendment, and an appeal brief on the same day.
Cost:
The estimated costs for filing an appeal are as follows (in Japanese yen):
- Official Fee: JPY49,500 (basic fee) + JPY5,500 x N (the number of claims)
- Attorney's Fee: JPY 150,000 - 250,000 (depending on the workload)
Our Practice:
We generally provide a report and prepare and file the necessary documentation with the JPO in the same manner as that for an office action outlined above.
In the meantime, a divisional application may be filed within four months after the receipt of the decision of rejection. Please be advised that this is the final opportunity to file a divisional application unless a further office action is issued in this application. In other words, if no further office action is issued in this application, it will no longer be possible to file a divisional application later on (for example, even when a decision of grant is issued by the examiner or a favorable decision of appeal affirming a grant is issued by the board of appeals). Therefore, we typically advise our clients to consider filing a potential divisional application.
03. Allowance
If the examiner determines that the application meets the necessary standards for allowance, we receive a decision to grant. In the event that an appeal has been filed, the board of appeals issues a favorable appeal decision.
Deadline:
To register the application as a patent right, the registration fee (first three annuities) must be paid within 30 days. Please note that further annuities are subject to annual variation.
Cost:
The estimated costs for paying the registration fee are as follows (in Japanese yen):
- Official Fee: JPY 12,900 (basic fee) + JPY 900 x N (the number of claims)
- Attorney's Fee: JPY 30,000
Deadline:
To register the application as a patent right, the registration fee (first three annuities) must be paid within 30 days. Please note that further annuities are subject to annual variation.
Cost:
The estimated costs for paying the registration fee are as follows (in Japanese yen):
- Official Fee: JPY 12,900 (basic fee) + JPY 900 x N (the number of claims)
- Attorney's Fee: JPY 30,000