PCT national phase entry into Japan without appointing Japanese representative

Typically, our foreign clients file original PCT applications in their jurisdictions, and before the 30 months deadline, they appoint us as a Japanese representative to file a PCT national phase entry into Japan.

However, we recently received a first case in 20 years in which a foreign applicant filed a Petition for Entry and a full Japanese translation of the application by himself, and then, he appointed us as his Japanese representative.

Since it was not completely certain whether the national phase was validly entered into Japan, we discussed this matter with the formalities officer at the Japan Patent Office and confirmed that they accepted the application.

Meanwhile, in usual, we pay the Government Fee of JPY 14,000 together with the filing of a Petition. However, if the Petition is filed directly by the foreign applicant, it is not possible for the applicant to pay the filing fee due to the JPO’s system. Hence, it is not required for the foreign applicant to pay the filing fee at the time of the filing of the Petition. The JPO will send a Notice to the foreign applicant to appoint a Japanese representative within a few months. Once a Japanese IP attorney files a Power of Attorney for the applicant, the JPO will send a Notice to pay the filing fee to the Japanese representative, and then, the proceedings will go on.

Recently, we file almost all documents with the JPO through our Internet application terminal. However, if the foreign applicant directly files the Petition, such a terminal is not available, and therefore, it is required to file the Petition for Entry and the Japanese translation by mail (through FedEx, UPS, etc.). If a Japanese applicant files a patent application by mail, additional surcharges will be incurred based on the number of papers (JPY 1,200 + JPY 700 × N(number of pages)). However, we confirm that the JPO will not charge such surcharges for foreign applicants as usual.

As explained above, if you file a national phase application of a PCT application by yourselves, it is possible to save some costs at the filing stage. However, please understand that the documents directly prepared by a foreign applicant usually do not satisfy the JPO’s formality requirements. Therefore, even if the initial translation costs appear to be relatively low, costly IP attorney’s fees will often be incurred later to review and revise the application.

Key Takeaways:

  1. You can file a Petition for Entry into Japan and a Japanese translation before the JPO by yourselves;
  2. You can defer the payment of the Government Fee of JPY 14,000;
  3. You can save Japanese IP attorney’s fee at the filing stage;
  4. Costly attorney’s fees might be incurred later.