FAQ regarding filing of patent/trademark to Japan

What are the documents/information required for filing a patent to Japan?

For application claiming a priority under the Paris Convention

1. Bibliographical data (the name and address of the applicant, the name and address of inventor(s), the priority country where the basic application has been filed, application number, date of filing, and access code of the basic application)
2. Application documents (specification, claims, and drawings).

For PCT applications

1. An international application number and an amendment (if amended in the international phase)

NOTE:Power of attorney not required at the filing.

Is there any fee reduction/exemption?

Up to 50% fee reduction/exemption is available for the fees for examination request and the Annual fee/Registration fee, for SMEs, startups, universities, etc., in Japan and abroad.

Exception of lack of novelty/Grace Period applicable?

Yes.
For a patent filed to Japan within a year after the publication, the invention is regarded as not lacking novelty (i.e., one-year Grace Period is applied). In this case, the applicant must state in the written application that the patent application is seeking the exception of lack of novelty and submit a proving document within 30 days from the date of filing

Is a foreign language application while making a priority claim under the Paris Convention allowed to be filed in Japan?

Yes.
A translation of an application filed in a foreign language must be submitted within one year and four months from the priority date.

Time limit for submitting translations to enter PCT applications into the national phase in Japan

Japanese translations of the PCT application must be submitted within 30 months from the priority date or within two months from the date of submitting a National Documents (Form No. 53), whichever is later.

When can specification, claims, and drawings be amended?

1. After filing and before service of a certified copy of a patent decision (except for after reception of first notice of reasons for refusal)
2. Within a period of response for notice of reasons for refusal
3. When requesting appeal against examiner's decision of refusal

No amendment is allowed unless the national processing standard time has passed (within two months from the date of submitting National Documents (Form No. 53) or when an examination is requested) for entry of a PCT application into the national phase in Japan.
No amendment is allowed after requesting an appeal against the examiner's decision of refusal unless a new notice of reasons for refusal is issued.

Maintenance fee required during a period between filing and decision?

No.

How long is a period of response for notice of reasons for refusal? Can it be extended? If it can be extended, how long?

The period of response for notice of reasons for refusal is three months for overseas applicants.
The period can be extended by three months utmost before expiration. With a single request for the extension, the period can be extended by a month or two months.
It is still possible to respond to a notice of reasons for refusal within two months after the expiration of a period of response, even if the notice of reasons for refusal is not responded to or the extension is not requested within the period of response.

When can a divisional application be filed?

1. During a period when the parent application can be amended.
2. Within 30 days from the date on which a certified copy of a patent decision is served.
3. Within three months from the date on which a certified copy of a first notice of reasons for refusal is served.

What are the documents/information required for entering a PCT application to the national phase in Japan, when the applicants have been changed in the international phase?

IB306 issued by the International Bureau will be requested, if the procedure for the change has been completed in the international phase.
The name and address of the new applicant will be requested, if the procedure for the change has not been completed in the international phase.

What are the documents/information required for entering a PCT application to the national phase in Japan, when the name or address of the applicant and/or the inventor has been changed or incorrectly written?

IB306 issued by the International Bureau will be requested, if the procedure for the change has been completed in the international phase.
The name or address of the applicant and/or the inventor will be requested, if the procedure for the change has not been completed in the international phase.

Would entrance of a PCT application to the national phase in Japan as an application for a utility model registration lead to immediate registration?

An examination will start only after the national processing standard time has passed (within two months from the date of submitting National Documents (Form No. 53)). If quick registration is required, the national procedure has to be requested.

Can an examination be conducted more quickly?

The accelerated examination system is available for applications filed by an applicant who plans to commercialize the invention within two years or internationally filled applications, for example.
The Patent Prosecution Highway (PPH) is also available.

What are the documents required for changing the applicants?

It depends on whether the application is pending or after registration:
For a pending application: An assignment deed and power of attorney by assignee.
After registration: An assignment deed, power of attorney by the assignee, and power of attorney by the assignor. (power of attorney by the assignor not required if the assignor agrees to the application solely by the assignee)
We will send you a required format upon request.

Is there a relief measure for a failure to pay annual fees until the deadline?

The annual fees can be paid within six months after the deadline.
Even if six months elapses after the deadline, as long as there is "a justifiable reason", the annual fees can be paid within two months from the day when the reason disappears and within one year from the expiration of the period.
In any of these cases, a surcharge that is the same amount as the annual fee is required.
The surcharge is not required when there is a reason beyond the power of the patent owner such as “a case where the procedure cannot be conducted due to an objectively reasonable reason such as a natural disaster”.

Is there a relief measure for the failure to complete the procedure before the deadline for the entrance to the national phase in Japan or the deadline for the request for examination?

If the procedure fails to be completed before the deadline, as long as there is "a justifiable reason", a relief measure may be applicable within two months from the day when the reason disappears and within one year from the expiration of the period.

Can inventors be changed (corrected, added, or deleted)?

Yes.
The following are required for the change.

1. Document describing a reason why an inventor is added
2. Written oath from inventors (from all the inventors involved including the original inventor before the change and the inventor added)