To get a patent right in Japan, an interested party needs to file an application, submit it to the Japan Patent Office and go through examinations. Prior to a patent registration procedure, it’s important to make sure that there are no similar inventions. J-PlatPat is a platform where you can find all necessary information regarding published Japanese patents.
If after a thorough search you identified there are no similar patents, it’s time to file an application.
It’s recommended to file as soon as possible as Japan also follows the «first-to-file» rule: a party that filed an application first will be granted the patent. If you’ve already filed an application in a country that is a member of the Paris Convention, you can claim a priority right. A priority document has to be filed within one year and four months from the first filing date of a priority-based application. This is also applicable to PCT applications.
When priority is based on a European Patent Office (EPO) application, you don’t need to file the priority document because the EPO and the Japanese Patent Office established an electronic transfer system.
An application must be filed in Japanese. It should consist of specifications, drawings, and the following information:
- Name and address of inventor;
- Name and address of assignee;
- Priority right date and country;
- Priority application number.
The invention should be described in a clear and complete manner. The content of an unexamined application will be published in the Official Gazette within 18 months from the date of filing.
First, the formality examination is carried out. An application is checked to ensure it fulfills the necessary requirements. If required documents or sections are missing, the JPO sends an invitation to correct the application.
The substantive examination, in turn, isn’t conducted until the JPO gets the request for examination from an applicant. Additionally, you need to pay required fees that are based on the number of claims. An applicant has three years from the filing date in Japan to file such a request. If a request for examination is not filed until the deadline, the application will be considered withdrawn. In this case, you won’t be able to recover it.
An examination will be conducted by an examiner of the JPO after the request is received. He or she will decide whether your invention should be patented. The examiner will check if the application meets legal requirements. The requirements are based on the following conditions:
- If the invention is based on a technical idea that utilizes a law of nature;
- If it has any industrial applicability;
- If the technical idea existed before the filing of the current application;
- If it could have been easily invented by a person skilled in the art;
- If the application is the first to file;
- If it is liable to contravene public order and morality; and
- If the descriptions in the specification accord exactly with the requirements for patentability.
If any of the requirements aren’t met, a notification with reasons for refusal will be sent to the applicant. An applicant who has received the notification has the right to submit either a written argument claiming that the invention differs from the prior art or an amendment of the claims to nullify the reasons for refusal.
Patent Granting and Publication
The examiner may grant a patent if no reasons for refusal are found or they’re eliminated by an argument or amendment. However, if the examiner considers that the reasons for refusal have not been eliminated, a decision of refusal will be made.
The applicant then has an opportunity to appeal against the decision of refusal. After the decision to grant a patent has been made and it’s entered into the Patent Register, the patent right will come into effect. After a patent is registered, a certificate of the patent will be sent to the applicant.
The contents of the patent right entered in the Register will be published in the Patent Gazette. A third party may file an opposition within six months from the publication date. Besides, even if a patent is registered, an interested party may appeal for invalidation of the patent if it has a flaw.
The patent right is valid for 20 years from the date of filing. This period may be extended up to five years for pharmaceutical products and agricultural chemicals. The latest information on the patent application, examination, opposition, and other fees can be found here.