日本語
Patent System Q&A
Opening up a world of opportunity
2. FILING
Does the first-to-file principle apply in Japan?
Yes. (Art. 39) An earlier dated patent application will defeat a subsequent application. If two applications are filed on the same day, priority is mutually decided by discussions between the applicants. If the applicants fail to agree, no patent will be granted to either application.
What are the time limits / costs for entry into the PCT national phase in Japan?
Applicants must file their PCT applications in Japan within 30 months from the earliest priority date (i.e., the date that the related local application - from which the PCT derives - was filed)) or the International filing date of the PCT application, whichever is earlier. Thus, if there is a priority date, the 30-months will be calculated from that date. If there is no priority date, the 30 months will be calculated from the international filing date.
A Japanese translation of this must be submitted to the JPO within 2 months of national phase entry.
The official fee for PCT entry is currently a flat-rate JPY14,000. KIPB Japan's basic attorney fee is very competitive due to our long-standing expertise in efficient PCT filing. KIPB Japan is also set up to handle in-house translations of national phase documents. Our translators are all qualified in their fields and work closely with our attorneys. Please contact us for a quote (response typically within one working day - call us if more urgent.) We are open to negotiation for bulk orders, partnerships, long specification length or new customers, etc.
Note also that the JPO does not accept payment from overseas residents, including payment by bank account transfer, credit card or check. The payment has to be made by a Japanese representative.
For more on the PCT system itself, see our Intro to Filing in Japan page.
What are the time limits / costs for applications via the Paris Convention route?
Corresponding Japanese applications should be filed in Japan within 12 months of the filing date of their priority application (in order to enjoy the benefits of priority right.) Applicants will also need to declare this priority right within sixteen months from the filing date of their priority application (the "priority date") or four months from their application in Japan, whichever expires later.
The Japanese Patent Office allows a patent application to be filed in languages other than Japanese (most commonly English) (note that official fees are slightly higher for foreign language filing). If an application is filed in another language, a Japanese language translation must be submitted within 16 months from the earliest priority date.
The official fee for Paris Route applications is currently a flat-rate JPY14,000 for Japanese language filings (or Japanese translations) and JPY22,000 for the English/foreign language filings, regardless of the numbers of claims. Note also that the JPO does not accept payment from overseas residents, including payment by bank account transfer, credit card or check. The payment should be made by a Japanese representative.
KIPB’s basic attorney fee for English and Japanese language filings (including translations) is very competitive. We can also handle other languages quickly and efficiently. Please contact us for a quote.
For more on Paris Convention filings, see our Intro to Filing in Japan page.
Can I submit the Japanese translations of an application after filing in Japan?
Yes, in the case of PCT applications, you can file Japanese translations within two months of the date of national phase entry.
In the case of Paris convention-based filings, you can file an initial foreign language application (most commonly English) within 12 months of the earliest priority date and the translation thereof within 16 months from said earliest priority date.
There are no extra official fees for submitting Japanese translations after filing either PCT or Paris route derived applications. KIPB Japan will also not charge any extra fees. See 2.2 PCT National Phase Entry Costs & Timeframe and 2.3 Paris Convention Filing Costs and Timeframe.
Can a patent attorney represent to or more clients with overlapping areas of technical interest?
Generally, no. Japanese attorneys are obliged not to accept work from new clients, which might constitute a conflict of interest. However, this will be permitted if all parties consent to the simultaneous representation. The Japanese attorney may therefore seek your consent in such a scenario.
Can I recover a PCT or Paris route application that has missed the filing deadline into Japan?
Yes, late filings can be recovered by submitting a statement explaining that the failure to meet the filing deadline (or priority claim date, etc.) was due to ‘unintentional’ reasons, provided the request for recovery is made within certain time periods and an official surcharge fee is paid.
For more details on the Recovery system, see OTHER QUESTIONS: Q4: Recovery of Application After Missed Deadline.
Do I need to file a power of attorney with my application?
No. A power of Attorney is not required when filing PCT or Paris route applications.
A power of attorney is only required for the filing of an appeal or recordal of change of ownership right or name/address and such like.
(Note that POAs for these procedures do not need to be original POAs or be signed. The only requirement is that the POA includes the name of a representative officer, his/her job title and the date typed/printed thereon.
Therefore, if you can provide us with such name/job title of an officer at the applicant, we can use this information whenever we need to submit a POA on your behalf (until you instruct us to change it).)
Can I file amended claims to replace the original claims at entry to the PCT national phase?
It is generally not possible to amend claims at entry to the Japanese national phase, since Japanese Patent Law requires that national entry filings (and translations) are identical to the published PCT application at entry.
PCT Article 19 and Article 34 amendments
It is possible to file PCT Articles 19 or 34 amendments that have been filed and published during the international phase (appearing in the IPER) at entry in Japan, but it is not mandatory to do so.
Amendments based on PCT Article 19 can be submitted in Japan in addition to / or instead of the original claims, if they have been published. However, amendments based on PCT Article 34, cannot be filed instead of the original claims: we must file the original application and claims and, separately, each amendment under PCT Article 34. As is Japanese practice, translations of PCT Article 19 or 34 amendments shall also be submitted to the JPO within 2 months of entry.
(Note also Japan’s strict prohibition of new matter when considering filing Art. 19 or 34 amendments.)
Amendments after entry
As mentioned elsewhere in this Patent System Q&A, the JPO provides further opportunities to amend claims more broadly (provided they have support in the specification) at various stages of the prosecution. Therefore, any desired amendments (including Art. 19/34 amendments) can simply be filed as a Voluntary amendment after entry. Applicants typically file such amendments at the time of filing an examination request (see 3.3 Voluntary amendments at examination). This gives an applicant more time and leeway in deciding their application strategy.
The scope of claims/disclosure in my PCT application were narrowed at the international stage compared to that in the priority application. Is it possible to amend to broaden the scope of claims during the national phase in Japan to that disclosed in the priority application?
You cannot amend claims during the national phase if not supported in the original PCT disclosure. This applies even if such content/support is disclosed in the priority application (i.e. you cannot amend based solely on the disclosure in the priority application).
Is an oath/declaration and/or a deed of assignment required when filing in Japan?
No, there is no obligation to submit an oath/declaration.
A Deed of Assignment is also not required, as the inventor(s) and company are considered the same. The company name itself can also be used as the actual applicant.
Are applicants required to disclose the best mode of their inventions?
No. Whereas inventors in the U.S. are required to disclose what they consider the best embodiment (best mode) of their invention, no best mode disclosure is required in Japan.
What are the information disclosure requirements when making an application?
The applicant is obliged to disclose known references at the time of the original application. However, unlike the Information Disclosure Statement (IDS) rule in the US, neglecting the disclosure of prior art does not affect the validity of the patent. That said, we always recommend full and honest disclosure up front due to possible unforeseen circumstances later on.
Japanese Information Disclosure System
Accordingly, prior art publications should be listed in the "Background" (Background Art) section of the patent specification. Only the publication details (number, title etc.) need to be included, no summary or explanation is necessary.
Prior art publications can include patents, electrically formatted documents such as a thesis or academic study, etc. At least one publication should be included; however, only the most relevant publications need to be included if there are many. If there are no prior art publications to disclose, the reason for this must also be clearly stated.
Failure to disclose any information on prior art documents or provide a clear reason why such information is omitted will usually result in an office action ("Notification of Failure to Disclose Information on Prior Art Documents"). This does not invalidate the patent, but invites the applicant to amend the specification to list the prior art, etc.
There is also no ongoing obligation in Japan to disclose known/additional prior art cited in other jurisdictions after filing. The Japanese examiner will have referred to the prior art in the PCT Search Report and the corresponding applications in other jurisdictions at the time of examination.
Thus, whilst non-disclosure is not fatal to an application, neglecting to do so may have possible negative consequences. For instance, it may not be looked on favourably by an arbiter in any dispute or licensing negotiations later on.
Are there advantages to filing claims that conform to allowed claims in the US or EPO, for example, or to amending claims, so they conform to the allowed claims?
Chances for allowance may be improved to a limited extent, but this is no guarantee of success. Applicants should remember that whilst JPO examiners may study rulings in other jurisdictions, they will always base their final judgments on the independent requirements of Japanese patent law, some of which differs from elsewhere. Examiners do not like to be told that: since as an application has been allowed elsewhere, it should also be allowed in Japan.
Examiners also often cite Japanese language publications as prior art that are not well-known outside of Japan, or forgo inclusion of international publications commonly cited by examiners in other countries. Results also show that the bar for inventive step and novelty, etc. is higher than in the U.S.
Nevertheless, one undeniable benefit for an application that has at least one allowable claim in another jurisdiction, is that an applicant may be able to accelerate examination under the Patent Prosecution Highway system. (See 3.9 The Patent Prosecution Highway (PPH).)
Are there any types of claims or claim formats that are not allowed in Japan?
Generally, all types of claims or claiming formats are permitted in Japan. Since all technical features in a claim are treated equally (including preamble and subject matter) in terms of protection, there is no specific claim format that is reviewed favourably over any other.
Note that omnibus and use claims may not be accepted according to the examiner assigned to the case.
Product-by-process claims (i.e., a product claim that includes a method/process of its manufacture in the claimed subject matter) are not permissible due to a lack of clarity. Also, inventions of a method for operating on, treating or diagnosing humans are also not permissible since they are deemed not to be industrially applicable (see 1.7 Medical Inventions).
See also 2:14 Claim Dependency on impermissible formats (including "multi-multi claims")
Wording
Wording that makes the numerical ranges ambiguous are usually not allowed (e.g., "about 1 to 10%") as is ill-defined terminology (e.g., "high temperature", "much harder than", etc.) Wording that render claim items optional are also prohibited (e.g., "preferably", "more preferable", "most preferable", etc.)
What claim dependency formats are allowed in Japan?
Independent claims
There is no restriction on the number of independent claims per claim category (see 2.16) in Japan, but all claims must fulfil unity of invention requirements (See 4.5).
Dependent claims
(1)
In Japanese practice, it is not possible for earlier (lower) numbered claims to depend on later (higher) numbered claims in a claim set even during the prosecution (e.g. "claim 2 depending on claim 1 and claim 3"). Claim sets with dependencies on later claims will need to be renumbered/reordered (or reference to the later claims deleted) to avoid a rejection.
(2) Multiple dependent claims
Allowed and there are no restrictions on the number of such claims.
(3) Mulit-multi claims (multiple dependent claims depending on other multiple dependent claims)
As in the US, etc, these are not permitted. This rule applies to patent or utility model applications with filing dates (or international filing dates in the case of PCT applications entering Japan) on or after April 1, 2022.
(3-1) What are multiple dependent claims depending on other multiple dependent claims?
According to the examination guidelines, the JPO defines such a claim as ‘“any dependent claim that refers to more than one other claim in the alternative (“multiple dependent claim”) which depends from any other multiple dependent claims.’
The JPO provides this example claim set to illustrate:
[Claim 1] A ball bearing with a specific structure.
[Claim 2] A ball bearing according to claim 1, wherein the inner ring is stainless steel.
[Claim 3] A ball bearing according to claim 1 or 2, wherein the outer ring is stainless steel.
[Claim 4] A ball bearing as claimed in any one of claims 1 to 3, wherein an annular buffer is provided on the outside of the outer ring.
[Claim 5] A ball bearing according to claim 4, wherein the annular buffer is rubber.
Thus, in this case, claim 4 is a multi-multi claim since it is a multiple-dependent claim depending from another multiple-dependent claim (i.e. claim 3). Claim 5 is also classed as a multi-multi claim since it is a dependent claim depending from a multi-multi claim (i.e. claim 4).
(3-2) Examination procedure (and disadvantages to allowed claim set.)
If an application contains such claims, an office action will be issued in the first instance and the rejected claims will not be examined for other substantive requirements such as inventive step and novelty. If the amendment to these claims in response results in another reason for rejection, a FINAL office action will be issued (with related restrictions.) (See Section 4 on Office Actions.)
If mutli-multi claims are found at examination, an office action will be issued and the rejected claims will not be examined for other substantive requirements such as inventive step and novelty
If, in response, the applicant amends these claims so they are in proper format (i.e. they are no longer in multi-multi-claim format), but as a result of a subsequent examination for other patent requirements such as novelty/inventive step, it becomes necessary to notify other reasons for rejection, a FINAL Notice of Rejection will be issued (with related restrictions.) (See Section 4 on Office Actions.)
(3-3) Advice
Thus, if you discover that your application contains any multi-multi claims after filing, we advise submitting a voluntary amendment before or with the request for examination. This will avoid the possibility of receiving an unnecessary Notice of Rejection with potential constraints on amendments thereafter.
One possible way of correcting a multi-multi claim is to amend the multi-dependency in the claim to that of the lowest-numbered claim only. So in the JPO illustration above, "as claimed in any one of claims 1-3" would become "according to claim 1.''
(* Note that utility model applications containing multi-multi claims will be rejected for not satisfying the Basic Requirements in Article 6bis of the Utility Model Act.)
(3-4) Applicable subject/not subject to the multi-multi claims restriction
The ban on multi-multi claims does not apply to divisional applications whose filing dates are retroactive to before April 1, 2022, or to PCT applications whose international filing dates are before April 1, 2022, but which entered the Japan national phase in Japan on or after April 1, 2022.
However, Paris Convention applications with a priority date before April 1, 2022, but whose filing date in Japan is on or after April 1, 2022, are subject to the restriction.
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Note that descriptions such as "any one of proceeding claims" are also not permissible in Japan: specific numbers of the claims should be described (thus: "according to any one of claims 1, 2 and 3”").
(See also 3.4 Reducing Claims.)
Are there fees for excess claims and/or limits to the number of claims allowed in Japan?
There are no excess claim fees in Japan and no limit to the number of independent and dependent/multi-dependent claims that can be filed.
The JPO's PCT entry/initial filing fee is a fixed fee, so an applicant can file as many claims as they like with no extra charge.
However, there is a per claim component to JPO fees at the examination and patent maintenance stages. These fees apply to each of the total number of claims (independent + (multi)dependent claims), and break down as follows (as of April 1, 2022):
JPO fees at request for examination
PCT National Phase applications (international filing date after March 31, 2019)
---> Fixed fee (124,000yen) + per claim fee (3,600yen)
Other applications (Paris route, Divisional etc.)
---> Fixed fee (138,000yen) + per claim fee (4,000yen)
JPO maintenance fees after grant
1-3rd year annuity: ¥12,900 + ¥900 per claim (total)
4-6th year annuity: ¥10,300 + ¥800 per claim (annually)
7-9th year annuity: ¥24,800 + ¥1,900 per claim (annually)
10-25th year annuity: ¥59,400 + ¥4,600 per claim (annually)
Thus, a large number of total claims can be quite expensive. This cost can be lowered by reducing the number of claims by voluntary amendment at the time of examination request.
(see Section 3. EXAMINATION for more details)
Note also that whilst there are no restrictions to the number of independent claims, they must all fulfil unity of invention requirements
(see 4.5 Unity of Invention Rejections & Special Technical Features).
What are the categories of claims in Japan?
Japan has two categories of claims - product and process claims. Process claims can also be divided into a simple process and a manufacturing process.
Processes include methods or uses (e.g., a method of manufacturing XYZ)
Products by definition include devices, instruments, systems, programs.
In current Japanese practice, claims pertaining to the invention of a product which include a manufacturing process (termed "product-by-process" claim. i.e., "a product manufactured by the method/process of...") are not deemed patentable subject matter.
Such claims will need to be: (i) cancelled, (ii) have the category of invention changed to a product claim by deleting the manufacturing process, or (iii) amended as a "method of manufacturing the product" claim (i.e., the invention of a process).
Does Japan have a grace period for inventions disclosed before filing a patent application?
Yes. However, the rules are strictly applied and KIPB Japan does not recommend relying on its efficacy.
Overview
In principle, an invention is only patentable if it has not been disclosed to the public as "prior art" before the filing date. If the invention has been disclosed, the examiner will issue lack of novelty or inventive step rejections. However, like the US, Japan has a patent "grace period" (or "Exceptions to Lack of Novelty of Invention") according to which the already disclosed invention is not considered prior art.
In Japan, this grace period is one year before the filing date (i.e., applications should be filed within one year from the initial disclosure.) The one-year rule applies to applications filed on or after 9 June 2018 with disclosures made on or after 9 December 2017 (the grace period was 6 months prior to these dates).
Note that the grace period can only be sought by the persons having the right to the patent, and must be actively sought if the earlier disclosure was made by themselves. (This is not obligatory if the disclosure was made against the will of the right holder, in which case a grace period can be asserted in an argument against an office action, for example.)
Disclosures (made by the patent holder or against his/her will) that are applicable to the grace period are limited to non-patent disclosures such as in peer-reviewed journals, other media, at meetings/seminars, or through sales, etc. Patent applications are excluded (as are utility models, designs and trademarks).
Process & Eligibility
(i) PCT applications entering the Japan national phase.
The filing date in Japan is defined as the international PCT filing date. Thus, to be eligible for the grace period, the PCT application should (i) be filed at the international stage within one year of the first disclosure, (ii) designate Japan (iii) include a grace period request. The grace period can then be asserted at filing in Japan and a statement/certificate of proof can then be submitted to the JPO within 30 days of national phase entry, or 2-month period for translation thereafter (whether (iii) was done or not).
(ii) Paris Route applications
For Paris route applications filed directly into Japan, the first disclosure should be within one year prior to the filing date of the Japanese application. The grace period request should be submitted at the same time as filing, and the statement/certificate of proof within 30 days of filing (with possible extensions).
Due to ongoing difficulties due to the global pandemic, the JPO no longer requires signatures (original or electronic) on these supporting documents for the request.
Note:
Unlike the US, the grace period in Japan does not provide protection against third-party disclosures made after the disclosure (by or against the will of the right holder) for which the grace period is activated.
Please contact KIPB Japan, if you have a particular question concerning your application and/or the possibility of requesting a grace period.
What’s the difference between my application’s application number and publication number?
Application numbers are given to all new filings. These are issued as soon as the application is filed (Paris convention / domestic filings) or within a few weeks (PCT filings that have entered the Japan National phase).
Publication numbers are given when applications are published (or “laid open for public viewing”) in the patent gazette and on the JPO’s online database (J-PlatPat). Domestic and Paris Convention filings are published 18 months from the earliest priority (filing) date. PCT applications entering the Japan national phase are published 30-months after the earliest priority (filing) date (which equates to about 7-8 months after their Japanese translations have been submitted-which is within two-months of national entry.)
Note that applications are not searchable on the JPO database by third parties until they have been published.
Note also that publication does not mean the application is being or has been formerly examined (See Section 3 on Examination.)
The initial patent Application number (特願 in Japanese) reads JP2022-XXXXXX or “Japanese Patent Application No. 2021-XXXXXX” — with the first 4 digits being the current year. The subsequent Publication number could read either “Japanese Laid Open Patent Publication No. 2021-XXXXXX” (特開2022-XXXXXX) for Paris and domestic Japanese applications, or “Japanese Patent Gazette Laid-open Publication No. 2021-XXXXXX” (特表2022-XXXXXX) for applications based on PCT applications entered at the national phase. Both types of publication numbers are shortened to JP2022-XXXXXXA (the ‘A’ distinguishing the publication number from the application number.)
For a more detailed explanation of the Japanese Patent Numbering System, please see our article ’https://www.kipb-jp.com/making-sense-of-the-japanese-patent-numbering-system