Filing patents in Japan: What are PCT Applications?
Steve Denney • May 26, 2022
Patents are national monopoly rights, and applicants seeking multinational protection must apply in each country of interest. Applying separately in each country is obviously an onerous task – which is where PCT applications come in. They allow applicants to file a single international patent application covering over 150 countries, including Japan.
The Patent Cooperation Treaty (PCT) and WIPO
International PCT applications are possible due to the Patent Cooperation Treaty (PCT), a treaty signed by said 150+ member countries that is administered by the World Intellectual Property Organisation (WIPO) - a specialized agency of the United Nations based in Geneva.
A PCT application is usually based on a domestic application that has been previously filed by an applicant in their own country. The PCT application must be filed within one year of filing the domestic application, either directly at WIPO or with the applicant’s domestic patent office (if it is in a PCT member state). The PCT application is considered to have the same filing date as the domestic application (called the priority date). The priority date is important when enforcing any patent against others infringing on the patent holder's rights.
The PCT International phase
After the PCT application has been filed, itenters the PCT international phase. During this phase, an International Searching Authority ("ISA" - one of the world’s leading patent offices, such as the JPO) will produce a search report (International Search Report - "ISR") and an opinion (Written Opinion of the International Searching Authority - "WO/ISA") relating to the potential patentability of the claimed invention.
The PCT application will also be published by WIPO 18 months from the priority date, so third parties can see it. The applicant may also request supplemental searches and preliminary examinations by second ISAs if their application has been amended or requires more evidence of patentability.
The international phase lasts a total of 30 months (or31 months, depending on the country*) from the “priority date” of the original application. By the end of this time, the applicant should decide to select the individual countries in which they wish to seek protection. This decision could be based on factors such as the potential commercial value of the applicant's product or the strength of the patent rights they can obtain.
Entering the PCT National phase
At the end of the international phase, the international PCT application enters the PCT national phase, and converts into separate “national” (domestic) applications according to the countries selected by the applicant. Thereafter, these national stage applications are prosecuted individually according to the IP laws in each country.
* The deadline for entering the PCT national phase in Japan is 30 months from the priority date. The Japanese application can be filed in English, but must be translated into Japanese within 2 months.
Benefits of the PCT application system
A PCT application is generally preferred when an applicant wishes for more time and options in deciding which countries to file in. The centralized search and examination by the international search authorities also simplifies prosecution matters at least till the national phase.
Benefits of filing PCT applications in Japan
Apart from being a stable and sophisticated market, patent examination in Japan is the fastest in the IP5 (the world’s 5 major IP jurisdictions - US, China, Japan, Korea and Europe). The Japanese Patent Office (JPO) also has a well-earned reputation for granting strong and reliable patent rights that are trusted worldwide. PCT applications that are granted after entry into the Japan national phase are often cited by applicants in other jurisdictions as proof of the patentability of their inventions.
Japan is also an original member and major player in the Patent Prosecution Highway(PPH) program - an international accelerated patent examination system that allows fast track examination in a second member country when a corresponding application has been found patentable in another member county. This includes PCT international and national phase applications. International applicants can thus leverage the JPO’s global PPH-PCT networks and efficient, high-quality examination to acquire dependable rights around the world.
KIPB Japan is here to help
If you would like to find out more about filing PCT patent applications in Japan and how this could benefit your organization, please feel free to contact us atKIPB Japan.
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