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Patent System Q&A
Opening up a world of opportunity
OTHER QUESTIONS
- Submitting translation of foreign language patent applications filed in a foreign language (P, UM)
- Submitting translation of an international PCT application for entry into the national phase (P, UM)
- Claiming domestic priority based on another application, etc. (P, UM)*
- Claiming priority under the Paris Convention (P, UM, D)*
- Request for examination (Patent)
- Delayed payments of patent/registration fees and surcharge (P, UM, D, TM)
- Appointment of agent for application by an overseas resident (P, UM)
- Application for the renewal of the duration of a trademark right (TM)
- Application for the renewal of the duration of a right based on defensive mark registration (TM)
- Within two months from the date the reason for failing to file within the statutory period ceased to exist (i.e., was discovered and corrected), and
- Within one year (6 months for trademarks) after the missed deadline.
- Patent: JPY212,100
- Utility Model: JPY21,800
- Design: JPY24,500
- Trademark: JPY86,400
- A statement explaining why they could not proceed within the statutory period,
- The date when the applicant became able to proceed with the missed procedure.
- The necessary documents/fees for carrying out the procedure (if applicable).
- The relevant request fees.
- Submission of document indicating applicant is seeking exception to lack of novelty (i.e., seeking “grace period”) of invention (P, D)
- Submission of a priority certificate under the Paris Convention (P, UM, D, TM)
- Divisional application (P, UM)
- Conversion of a utility model or design registration into a patent application (P)
- Patent applications based on utility model registration (P)
- Request for registration of extension of the duration of patent right (P) *see below
- Submission of documents stating the basis of the calculation for the period of extension when applying to register a Patent Term Extension (P) ** see below
- Payment of patent/registration fees (P, UM, D, TM)
- Request for refund of patent/registration fees (P, UM, D, TM)
- Request for appeal against a decision of rejection (P, D, TM)
- Request for retrial (P, UM, D, TM)
- Request for refund of examination fees or fees paid in excess (P, UM, D, TM)
- Correction of Description etc., of an application for utility model registration (UM)
- Withdrawal of demand for invalidation trial of utility model registration (UM)
- Refund of fees concerning withdrawal of application for intervention (UM)
- Request for trial against examiner’s ruling dismissing amendment (D, TM)
- Request for refund of individual designation fees for international application (D)
- Submission of certificate to receive special provisions concerning the time of filing of trademark application (TM)
- Application for trademark registration after revocation of international registration (TM)
- Application for trademark registration after denunciation of Madrid Protocol (TM)
- Within two months from the date the reason for failing to file within the statutory period ceased to exist (i.e., was discovered and corrected), and
- Within six months after the missed deadline.
- A statement of the grounds for restoration.
- The date when the applicant became able to proceed with the missed procedure.
- Evidential documents which support the matters presented in the Statement of grounds.
- The necessary documents/fees for carrying out the procedure (if applicable).
Can you give a 'one-stop' estimate of all patent prosecution fees to grant?
Please contact us directly, and we can provide you with our latest schedule of fees. This includes our attorney fees and the JPO's official fees for each procedure relating to Patents, Trademarks, Designs and Utility Models, etc..
We can also provide more specific or tailored quotes upon request (typically within one working day - call us if more urgent). We are open to negotiation for bulk orders, long term partnerships, specification length or new customers, etc.
Note that most of our general fees are provided upfront and at a flat rate. We do not charge attorney hours for any of our standard procedures.
What is the scope, timing and cost for amendments?
You can file amendments supported in the disclosure— including new claims — at any time during the period from initial filing to a first office action. Subsequently, amendments are possible during the designated response periods specified in an office action, including at the appeal stage. Specifically:
Notice of Rejection (non-final and final office actions) — within 3 months from notification, extendable by up to 3 months (filed with an office action response).
Decision of Rejection — within 4 months of notification (filed with an appeal)
(Note that claim amendment restrictions apply depending on the type of office action —
(see 4.4 "Final" and "Non-final" Office Actions, 6.1 Decision of Rejection and Section 7 on Appeals)
We recommend filing planned voluntary amendments with the request for examination because examination fees depend on the number of claims numbers and cannot be recouped later by reducing claims. This also gives the applicant the opportunity to survey the art up until the point of the request and file appropriate amendments.
Amendments for Divisional applications
For divisional applications, amendments to rejected parent claims need to be made before an office is issued in order to avoid the possibility of a FINAL rejection based on the same rejection as the parent.
Amendments after grant?
General amendments cannot be made after grant. However, a patentee can limit the scope of granted claims by requesting a “Trial for Correction”. Correcting claims is limited to (i) further limiting claim scope; (ii) correcting errors or errors in the original translations; and/or (iii) clarifying ambiguous statements.
Accordingly, any corrections cannot substantially broaden/alter the scope of the claimed invention. The corrections should also be fully supported in the original disclosure. A patent holder can request a trial for correction at any time apart from during the period when a patent invalidation trial (bought by a third party against the patent) is pending at the JPO (though patent holders have opportunities to correct claims in responses during such trials).
FEES
There are no official fees for filing voluntary amendments before examination. However, there is a per claim fee for claims exceeding the number of original claims in an amendment in response to an office action.
KIPB fees are very competitive and depend on length and content. Please contact us for a quote.
It is also possible to request deadline extensions (totaling 3 months) for filing amendments and arguments for a small official fee and KIPB admin fee.
Please provide an overview of the translation requirements for patents in Japan.
Applications filed into Japan must be mirror translations of the original into Japanese (including drawings, descriptions and claims). Official correspondence with the JPO is done in Japanese; however, an applicant can file the initial application in a foreign language (usually English). In the case of PCT applications, you can file Japanese translations within 2-months of national phase entry. In the case of Paris convention-based filings, you can file an initial English language application within 12 months of the priority date and the translation thereof within 14 months from the 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.
The legal filing date will be that of the English application, but it is the translation that will be examined. Subsequent to this, slight corrections (e.g., transcription, translation errors) can be made to the Japanese description based on the original English.
Other translations
No such requirements exist for subsequent amendments and responses, and it is usually advisable that our attorneys at KIPB Japan work with the client to format and adapt the client's proposed amendments and responses to ensure best results. Regarding office action translations, KIPB Japan usually provides JPO machine translations to clients in the first instance, and can provide more accurate human translations upon request.
Divisional applications
Regarding translations for Divisional applications, KIPB Japan's general policy is to initially file Divisional as "Foreign Language Applications" based on the original application filed into Japan, and then file the Japanese translation. Whilst this is slightly more expensive than simply filing them in Japanese based on the content in the Japanese language parent, the benefits to clients outweigh this (see 5.6 Filing as a Foreign Language Application.)
PCT amendments at international phase
Note on translations of amendments to PCT applications: An applicant may substitute his/her original claims with PCT Art. 19 amended claims. A translation of these PCT Art. 19 amended claims may be submitted either at the time of Japanese national filing or within 30 months from the priority date of the PCT application - thus, even after any original claims have been filed. However, this is not possible for amendments under PCT Art. 34. For such amendments, we must first file a translation of the original claims (or substitute these for translations of claims amended under PCT Art. 19) and then separately file a translation for the PCT Art. 34 claim amendments.
Translation Fees
KIPB Japan fees for translation by our qualified in-house specialists are competitive compared to the industry average, and allow clients to avoid costly corrections later. We can provide fast and accurate translations of all aspects of IP work. We negotiate fees with regular and trusted clients. Please contact us for a quote.
What are the current rules for recovery of an application that has missed a deadline in Japan?
There are currently two remedies for recovering /restoring an application after failure to meet a statutory or designated deadline. That is, the inability to meet the expired deadline was due to either (i) “unintentional reasons” or (ii) “reasons beyond the applicant’s control”.
The applicable remedy will depend on the missed procedure involved. The two remedies require different conditions to be met to recover the application – with the former much easier to prove than the latter.
NOTE: Recovery “due to the impact of COVID-19” is no longer available. See notes at the end of this section.
(i) “Unintentional reasons”
Effective from April 1, 2023, applications are generally recoverable for the procedures mentioned below if the applicant (1) submits a request for recovery along with a statement explaining that the deadline was missed due to “unintentional reasons” and (2) pays a surcharge fee, within a specified period.
The “unintentional reasons” may be due to human and management errors. There is no specific requirement to submit supporting evidence, though this can be provided voluntarily. Applicants may subsequently be requested to submit any documents to support their reasons if the JPO finds it necessary. (This is a change from previous requirements when concrete written evidence was mandatory and human/management error was inadmissible.)
This remedy applies to deadlines that have expired on or after April 1, 2023. (The stricter condition still applies to expired deadlines before this date.)
Note that there are currently no figures on the recovery success rate due to “unintentional reasons” because this remedy was only introduced in April 2023. However, the success rate is expected to rise to at least 60-70% of all cases from the previous 10-20% rate.
Applicable procedures
The following procedures are eligible for recovery if their statutory deadlines have expired due to “unintentional” reasons.
Note that some requests may still be denied automatically – including if the purpose for missing the request for examination deadline was to delay the examination.
Time limits for requesting recovery due to “unintentional reasons” (for overseas applicants)
The general time limits for submitting the recovery request are:
Priority recovery
- 14 months from the priority date for Paris route applications (i.e. 12 months priority + 2 months)
- 1 month from the translation due date for the PCT route.
Late PCT entry in Japan
The JPO will accept the recovery request if the national entry is submitted (i) within two months (plus two months for translation of the PCT spec.) from the date the unintentional reason ceased to exist (i.e., was discovered and corrected) and (ii) within one year from the expiry of the national phase deadline.
For this procedure, KIPB Japan will generally file the national phase document + recovery request (Statement) + Japanese translations together.
Official fees for submitting the recovery request:
Previously, no official fees were applied when requesting recovery, partly because of the limited number of requests due to the unlikelihood of success. The following surcharge fees have been introduced due to an expected increase in requests after the relaxation of the rules.
Procedure for submitting recovery request:
The applicant should provide:
(ii) “Reasons beyond the applicant’s control”.
“Reasons beyond the applicant’s control” (aka “reasons not attributable to the applicant, etc.”) is the original standard for recovery at the JPO and is still applicable for the procedures below.
Applicants/right holders must submit concrete supporting evidence proving beyond reasonable doubt that the failure to meet a deadline was due to “reasons beyond their control”.
The evidence should show that the missed deadline occurred despite the reasonable diligence expected to avoid such failure. Thus, human/management error or system shutdown, etc will likely not be regarded as sufficient proof.
Unfortunately, the recovery success rate due to “reasons beyond the applicant’s control” is very low. We hope the JPO reconsiders these procedures at some point soon.
Applicable procedures
Procedures that are eligible for recovery due to “reasons beyond the applicant’s control” include the following:
Time limits for filing a request for recovery (For overseas residents)
* Within (i) two months and (ii) 9 months
** Within (i) one month and (ii) 2 months
Procedure for submitting recovery request:
The applicant should submit/provide:
There are no official fees for submitting this type of recovery request.
COVID-19
Why is the recovery “due to the impact of COVID-19” option no longer available?
During the COVID-19 global pandemic, the JPO temporarily relaxed the requirements for recovery such that many cases were restored based on a simple statement that the inability to meet a deadline was due to the impact of Covid -19 (e.g., lockdown, illness etc.).
The JPO ended this temporary COVID-19 relief measure in line with the Japanese government’s downgrading of the severity of the coronavirus infection from Class 2 to Class 5 (i.e., “common infectious diseases, e.g., influenza”) on May 8, 2023. Accordingly, COVID-19 relief measures cannot be applied to cases where the expired statutory or designated time was/is on or after May 9, 2023.
When can I abandon or withdraw my application?
An application can be withdrawn or abandoned at any time. If this is before the application is published (laid open to the public) the withdrawn/abandoned application cannot be considered as a prior application with respect to any later application.
Generally, applicants choose to simply let an application automatically lapse (i.e., do bot respond to office actions until the application proceeds into an abandoned state) due to the fees/bureaucracy involved.
If examination has been requested, it is possible to claim a 50% refund of the examination fee if the application is formally withdrawn before the examination procedure has commenced (i.e., before an office action has been issued.) A power of attorney form must be submitted with a formal Withdrawal request. The Official fee for the procedure is JPY25,000.
Note also that abandonment of a patent right does not require the consent of licensees of the patent, except for the consent of an exclusive licensee registered at the JPO.
Is it possible to file an express withdrawal/declaration of abandonment with the Japan Patent Office?
Yes, it is possible to expedite an official withdrawal/declaration of abandonment of a patent application.
A Power of Attorney should be submitted to the JPO for the purpose. The cost for filing the express declaration is JPY25,000.
Are specific Power of Attorney documents necessary?
POAs are only required for procedures such as appeals and assignments (they are not necessary for filing, including entering the PCT national phase).
The JPO does not require original POAs or signatures. 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 e-signatures such as a DocuSign signature be used for POA documents?
As stated above, no signatures are required for POAs (including e-signatures)
With respect to other documents requiring signatures (such as an assignment of rights)—unfortunately, the JPO does not allow e-signatures (including DocuSign). Signatures should be an original or notarized true copy of the original.
What rights do joint owners of a patent have to work independently of the other owners?
With regard to the scenario of two or more joint applicants/owners of a patent:
Consent to work the patent?
Under Japanese patent law, each joint owner may practice (“work”) the invention without the consent of the other owner(s) unless otherwise agreed by a contract. “Work” includes manufacture, sale, use, import, etc.
Consent to grant licences?
No joint owner may grant an exclusive licence or non-exclusive licence of the invention without the consent of all other joint-owners.
Consent to transfer to 3rd party?
A joint owner also cannot transfer their right to a third party without consent of the other owners. However, they can file injunctions or for damages against infringement by third parties without the other(s) consent (any damages awarded will generally be based on their share of the patent).
Does the JPO send physical documents to overseas applicants by mail?
The JPO generally corresponds with the Japanese attorney appointed by the overseas applicant and provides physical documents to them where necessary. However, if an overseas rights holder has not appointed a local agent (or does not have a business office in Japan), official documents may be served by international mail.
Note that in the event of the suspension of international mail service for 6 months or more due to an event like the COVID-19 pandemic, etc., official documents will be served to rights holders residing overseas (those with no local agent) by publication in the JPO’s Patent Gazette or other official JPO publications. Service by publication is deemed effective 20 days after publication in the gazette.