2. Request for Examination | PPH

If you file a PCT Japanese national phase application, it is required to file a Request for Examination within 3 years from the international filing date.

The estimated costs would be:

• Government Fee: JPY106,000 (basic fee) + JPY3,600 x N (the number of claims)
• Attorney’s Fee: JPY30,000 – 50,000 (including basic service fee for filing a request for examination and service fee for reviewing claims, preparing amendments and written statement, etc.) 

A Japanese patent application will not be examined unless a Request for Examination is filed. If examination is not requested in time, the application will be regarded as having been withdrawn.

For more details, please see https://allegropat.com/request-for-examination-in-japan/

For the foreign applicants, there are some approaches to expedite examination in Japan:

• Patent Prosecution Highway (PPH);
• Accelerated Examination; and
• Super Accelerated Examination.

Patent Prosecution Highway (PPH):

PPH is a procedure to expedite examination by reference to allowance granted by a foreign patent office.

In normal PPH, if you wish to file a request for the PPH based on a corresponding US case, please be informed that each claim of the Japanese patent application should adequately correspond to one of the US allowed claims at the timing of filing the PPH. This does not necessarily mean that the Japanese claims should be completely identical to the US claims. However, it must ensure that the differences between the US claims and the Japanese claims are within the range of linguistic difference between English and Japanese, or that the scope of the Japanese claims should be narrower than that of the US claims.

Please understand that the PPH ensures that examination of the Japanese application will be initiated very soon, specifically in a few months, but does not guarantee that a patent be granted on the Japanese patent application. It only expedites the examination. Japanese Examiner will conduct a further search in Japan, and will issue a rejecting office action if he/she finds at least one reason of rejection, such as finding a pertinent prior art reference.

Accelerated Examination:

• Conditions (foreign applicant)
• • Foreign counterpart
• Necessary Documents
  
  • Prior art search result
  • Statement comparing the claimed invention and prior art
• Government Fee
  • None
• Speed
  • First Office Action in about 2.3 months (9.3 months in normal examination)
  • Final Decision in about 5.3 months (14.1 months in normal examination)

Super Accelerated Examination:

• Conditions (foreign applicant)
  
  • Claimed invention is being worked;
  • Foreign counterpart; AND
  • Online procedure
• Necessary Documents/Government Fee
  
  • Same as the accelerated examination
• Speed
  • First Office Action in about 20 days
  • Final Decision in about 2.5 months

For foreign applicants, in normal prosecution, the term for filing a response to an office action is 3 months, which is extendable up to 6 months. However, in case of the super accelerated examination, the term is a non-extendable 2 months. Once the term is extended, the procedure changes to normal accelerated examination.

PPH is a procedure to expedite examination by reference to allowance granted by a foreign patent office. Further, it is possible file a request for the PCT-PPH based on the positive WO/ISA, WO/IPEA or IPER. 

• Conditions
  
  • Request for Examination is filed (we usually file the requests at the same time)
  •  Examination at the JPO has not yet commenced
• Government Fee
  
  • None

In normal PPH, for example, if you wish to file a request for the PPH based on a corresponding US case, please be informed that each claim of the Japanese patent application should adequately correspond to one of the US allowed claims at the timing of filing the PPH. This does not necessarily mean that the Japanese claims should be completely identical to the US claims. However, it must ensure that the differences between the US claims and the Japanese claims are within the range of linguistic difference between English and Japanese, or that the scope of the Japanese claims should be narrower than that of the US claims.

Please understand that the PPH ensures that examination of the Japanese application will be initiated very soon, specifically in a few months, but does not guarantee that a patent be granted on the Japanese patent application. It only expedites the examination. Japanese Examiner will conduct a further search in Japan, and will issue a rejecting office action if he/she finds at least one reason of rejection, such as finding a pertinent prior art reference.

In the case of PCT-PPH, please note that, if Box No. VIII “Certain observations on the international application” is checked in the WO/ISA, it is required to submit comments on the observations in the WO/ISA.