Practice Tips for foreing applicants when filing PCT National Phase Entry into Japan
When we receive instructions to enter the national phase in Japan with respect to a PCT application, we are sometimes requested to submit amendments of claims and/or specification of a PCT application which were made in the international phase or are proposed for the national phase entry. Further, we sometimes receive Substitute Sheets of the PCT application without the originally filed documents. It is our policy not to translate the preliminary amendment at the time of entering the national phase in a PCT application for the reason as explained below.
Under the current Japanese Patent Law and practice, the standard for the new matter judgement is extremely strict. Further, if the amendment translated at the time of national phase entry includes any new matter which does not have clear support in the original disclosure in the sense that the Japanese patent practice requires, it will cause the application grounds for rejection and invalidation. Therefore, we have to be very careful not to introduce any new matter into the translation filed at the time of entering the national phase. Even if we are told that the proposed amendments have clear support, we will NOT file them because it is practically difficult for anyone other than Japanese patent attorneys to judge whether or not proposed amendments is permissible to be filed. Further, since it is practically impossible for us to determine whether the proposed amendments have perfect support in the original application at the time of translating an application due to time constraints, 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. If they have perfect support, they can be filed at any time later when we can file amendments during the prosecution, i.e. any time until the end of the term for filing a response to a first office action or, in the case that no office action is issued, until receipt of a decision of grant. We will look into the possibility of filing such amendments later according to your request, as some costs will be incurred therefor. The best opportunity of doing so will be at the time of filing a request for examination or preparing a response to a first office action.
Under the circumstances, we translate the originally filed documents at the time of filing a national phase entry into Japan. Then, we will review and file the amendments later, usually at the time of filing a request for examination. For the clients who wish to preserve rights for filing a future divisional application directed to the original claims of the PCT application, we will revise the specification to incorporate all the original claims of the PCT application into the end of the specification.
If you have any questions, please do not hesitate to contact us at email@example.com.
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.
Once we file a General Power of Attorney with the Japan Patent Office, the submission of a Power of Attorney, which is normally required for each application, will no longer be required. Submission of a General Power of Attorney does not mean that the applicant cannot be represented by any other Japanese attorneys. The applicant will still be able to appoint other attorneys.
If the applicant prefers a case specific Power of Attorney, we will prepare such a power upon request.
However, 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. 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.
Meanwhile, when we receive a case transferred from the other representative, it is required to file the Power to complete the formality of the transfer before the JPO.
If you have any questions, please do not hesitate to contact us at firstname.lastname@example.org.
2 month grace period for filing Japanese translation (non-PCT route):
Application filings in foreign languages (non-PCT route):
1) Under the new rule, it is possible to file patent applications in English or other foreign languages.
2) The legal term for filing a Japanese translation remains 16 months from the priority date. However, under the new rule, even if a Japanese translation is not filed within the legal term, the JPO will notify applicants of the failure to file, and the applicants may file the Japanese translation within a 2 month grace period following the notification (that is, within about 18 months from the priority date in total). Please see the flowchart copied below.
Article 30 of the Japanese Patent Law defines “Exceptions to lack of novelty of invention”.
Under the current Japanese patent law, there is a 6 months grace period for an invention that has lost its novelty against the will of the inventor or due to the inventor’s own act.
However, the Japanese patent law has been revised, and the new grace period is 1 year. The new law applies to Japanese patent applications filed on or after June 6, 2018.
The Japanese Patent Law permits exceptions to lack of novelty in special cases, for example, cases in which an invention is disclosed against the inventor’s will, an invention is disclosed due to the inventor’s conduct, etc. In order to receive the permission from the JPO, a Japanese patent application must be filed within 6 months from the date on which the invention was disclosed. In the case of a PCT application, a Japanese national phase entry must be filed within 6 months from the date on which the invention was disclosed in a foreign country.
The JPO recently agreed on the principle of extending the grace period from 6 months to 12 months, and the Japanese Patent Law will be revised in this regard probably next year.
We will keep you informed of any developments in this connection.
Our firm carries out the missions of supporting the most advanced venture and start-up companies across the world in obtaining patent protection in Japan. For such clients, we offer a Special Package including the following:
- Patent Application before the Japan Patent Office
- Translation into Japanese
- Request for Half Deduction of Official Fees
- Request for Expedited Examination (optional)
Please note that half of the Official Fees with respect to the Request for Examination and Annual Fees can be deducted under special conditions. For example, in the case of a PCT national phase application in Japan including 20 claims, the Official Fee for filing a Request for Examination is JPY 178,000 (about USD 1680). The deduction can be applied to a foreign applicant, if the applicant satisfies the following requirements and submits certain certificates:
- Established within 10 years OR Exempt from Corporation Tax
- Capitalized below JPY 300,000,000 (about USD 3 million)
If you wish to have more details regarding necessary materials, applicable conditions, etc., please contact us at email@example.com.
As you may know, the JPO’s Official Fees can be deducted if an applicant is qualified as a small entity, which includes a small venture company, a small enterprise, an individual, etc. The deduction can be applied to a foreign applicant, if it is possible to submit certain application forms. If you wish to have more details, please contact us at firstname.lastname@example.org.
One third of the Official Fees can be deducted for small entities with respect to a Request for Examination, Annual Fee, etc. Under the current Japanese practice, it is said that the average fees required for a small entity to file and prosecute a Japanese patent application is about 4,000 US dollars.
The JPO recently agreed on the principle of marking down the fees required for a small entity to half-price, that is about 2,000 US dollars. Further, the scope of eligible small entities will be expanded. The Japanese patent law will be revised in this regard probably in 2019.
As a result, the fees required for a small entity will reach a minimum level among major developed countries as shown in the following graph.
1) Translation in the drawings:
When entering the national phase in Japan, no submission of drawings that do not require any translations to the JPO conforms to the PCT rules, and it is always the case. Please note that the examiner should review all drawings submitted during the international phase.
If the PCT application has drawings including no English words, we do not file such drawings in the Japanese application.
2) Color drawings:
Please note that JPO does not accept color drawings in any case, but we can submit color photos as supplementations if submission of such photos is considered to be effective for the examination by an examiner. Therefore, we will submit the color photos of the color drawings for the examiner’s review after we file the translation.
3) Original drawings and substitute drawings:
In the case that the content of the substitute sheets is perfectly identical to that as filed, we do not need the original. We check the original drawings on the WIPO web site and confirm if the content of substitute drawings is identical to the originals.
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.
1) Effect of early filing of PCT national phase entry into Japan:
The early filing of the national phase entry has an effect on the deadline of submission of the translation. When the national phase entry is made between 28 months to 30 months from the priority date, the deadline of translation is two months from the date of the national phase entry. (If the national phase entry is made earlier than 28 months from the 30-month deadline, the deadline of translation is 30 months from the priority date.) That is, if we enter the national phase on February 17, 2018, the deadline will be April 17, 2018, whereas it would be May 17, if the national phase entry be made on the last day of the term, March 17, 2018. Two months is long enough for us to prepare the Japanese translation.
2) Notice of Japanese application number:
We usually receive a notice of the Japanese 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.
3) Correction of inventors at the national stage:
If you wish to file this application in the name of the corrected inventors in the National Stage in each country, not in the name of the inventors as shown in the PCT publication, you must either submit a Request for Change of Inventors with the International Bureau within the 30-month term or ask your local associates to change the inventors at the national stage. In the case that you wish for us to change the inventors at the national stage, please let us know, and we will prepare and forward to you the necessary Declaration forms to be executed by all the inventors.
4) Japanese Inventor’s name in Chinese characters:
With regard to the name and the address of a Japanese inventor, the Japanese Patent Office requires them in Chinese characters if he has Japanese nationality, which is the case.
5) Translation of non-English text based PCT application:
We sometimes receive only a non-English, such as German, text of the application. If you have or will soon have an English translation of the application, we recommend that the application be translated from English into Japanese, because the translation fee from German into Japanese is 20% higher than that from English into Japanese. The Japanese translation should be filed within the two-month period following entry into the national phase.
6) Two national phase entry filings from one PCT application:
Please be informed that it is not possible to submit two national phase entry filings from the same PCT application, unlike the filing of national applications under Paris Convention claiming priority based on a particular base application. The national phase entry in Japan is just a Japanese local procedure to effect nationalization of a PCT application already filed internationally, and is not a procedure for filing a new national application in Japan.
We understand that it may be troublesome for foreign clients to ask a Japanese representative for quotes and/or due dates a multitude of times. For such clients, we constructed a unique website that automatically calculates rough estimates of fees and due dates regarding Japanese applications from the filing through prosecution thereof.
Please understand that the fees and due dates are approximate calculations. Particularly, the due dates are calculated on the assumption that: 1year = 365days and 1month = 30days. If you need a precise estimate, please just let us know the International Application and/or Publication Number of the case of interest to you.
For more details, please contact us at email@example.com.
1) When divisional application can be filed in Japan?
- Anytime when amendments can be filed
- Within 4 months after receipt of Decision of Rejection
- Within 30 days after receipt of Decision of Grant
2) Requirements for divisional application:
- Claims of divisional applications must not be substantially the same as the claims rejected in parent applications
- Disclosures of the divisional applications shall be within the scope of the original disclosures of parent applications
- Disclosures of divisional applications further shall be within the scope of the disclosure of the parent applications immediately before the division
3) First Office Action against a divisional might be deemed to be a Final:
Please be informed that a first Office Action is deemed to be a final Office Action if the reasons of rejection raised in the Office Action(s) issued during the examination of the parent application are not overcome in the divisional application. That is, if the claims and/or the specification of the divisional application have the reason(s) of rejection that was(were) already raised during the prosecution of the parent application, a first Office Action in the divisional application will be made final. Hence, if possible, we propose to draft claims in the divisional application in such a manner so to ensure that all the reasons of rejection raised in the parent application are overcome.
4) Benefit of obtaining the earlier filing date:
If the claims of a divisional application are identical to the claims of its parent application, the divisional application is not entitled to retroactively claim the filing date of its parent application as an effective filing date, and accordingly, the divisional application will naturally be rejected over the publication of its parent application as lacking novelty.