Fukumoto International Patent Office

Japan Patent Prosecution Procedure

               1.  Outline of Patent Prosecution
               2.  Characteristics of Patent Prosecution
               3.  Outline of Utility Model

        for Foreign Applicants; as of February 2009; written by M. Fukumoto

(1) Filing of Application

An application should include a request, a description, claims, needed 
drawings and an abstract.  The application should be filed within one 
year after your first application being filed to a Patent Office usually 
in your own nation, if you wish to claim Paris priority onto the first one.  
The official fee for the filing is 15,000 yen irrespective of the number 
of Claims. 

(2) Submission of Priority Documents

If you claim a Paris priority onto the first one, you should submit 
Priority Documents within 1 year and 4 months from the priority date 
(i.e., filing date of the first Application).  No official fee is incurred.

(3) Publication of Application

Your Application is laid open in public one year and six months after the 
priority date.  The application is published in the Patent Official Gazette 
and uploaded on the website of the Japan Patent Office (JPO).

(4) Request for Examination

A Request for Examination should be submitted within 3 years from the 
(Japanese) filing date (not the priority date).  Without the request within 
the 3-year period, the application will be deemed to be withdrawn.  If the 
Japanese application is a national phase one of a PCT application, you 
should submit the Request for Examination within 3 years from the 
International Filing Date.  Anyone, not limited to Applicant, can submit 
the Request for Examination.  An official fee for the Request is not so 
cheep, i.e., 168,600 + (no. of claims) x 4,000 yen.  A period from the 
Request to the first Office Action is 26 months in average in accordance 
with the JPO statistics in 2005.  A period from the Request to the 
Examiner's final decision is 32 months in average in accordance with the 
statistics.

(5) Procedure for Patent Registration

Once you receive Examiner's (or Board Examiners') decision of allowance, 
you should pay annual fee for the first to third years within 30 days to 
obtain a patent right registered.  The 30-day period can be extended by 
submission of "Request for Extension" with the official fee of 2,100 yen, 
which brings 30-day extension.

The annual fee for the first to third years is 6,900 + (no. of claims) x 
600 yen for an application with the examination requested on or after 
April 1, 2004; and 34,200 + (no. of claims) x 3,000 yen for an application 
with the examination requested before April 1, 2004.

The applicant can maintain the patent right by paying annual fees for the 
fourth and later years until 20 years from the filing date.  The term of 
a patent right is extendable up to 25 years from the filing date by filing 
an Application for Extension in the fields of medicinal and agricultural 
chemicals.

(6) Office Action and Response Thereto (Arguments/Amendments) 

During the Examination, the Examiner, if having found out the reason of 
rejection on the application, will send you an Office Action (notice of 
reasons for rejection).  You can respond to the Office Action within 
3 months, providing Arguments and/or Amendments.  The 3-month term is 
extendable up to 6 months.  One "Request for Extension" submitted before 
the expiration brings one-month extension.  Up to three Requests are 
permitted, and a simultaneous submission is also acceptable.  The Request 
incurs an official fee of 2,100 yen for each. If the amendments increase 
the number of claims, they will incur an additional official fee of 
(increment in claims by amendments) x 4,000 yen. 

(7) Appeal to Appeal Board

If the reason of rejection shown in the Office Action is not dissolved even 
after the response to the O. A., the Examiner's decision of rejection will 
be sent to you.  You can appeal to the Appeal Board in the Japan Patent 
Office (JPO) against the decision by submitting a Notice of Appeal within 
90 days from the Examiner's decision.  You can submit Amendments within 
30 days from the appealing date.  Although an Appeal Brief can be submitted 
even after the submission of the Amendments, the Brief is highly recommended 
to be submitted simultaneously with the Amendments.  The submission of the 
Amendments brings the Application before the (not Appeal Board) Examiner 
prior to review in the Board.  The official appeal fee is 
49,500 + (no. of claims) x 5,500 yen for Applications filed on or after 
April 1, 2004.

Please note that the due periods were changed on April 1, 2009, as follows.  
The Notice of Appeal has to be submitted within 4 months from the Examiner's 
decision of rejection.  The Amendments should be submitted simultaneously 
with the Notice of Appeal.  Although an Appeal Brief can be submitted even 
after the submission of the Notice of Appeal, the Brief is highly recommended 
to be submitted simultaneously with the Notice.  These new due periods are 
applied to Applications that receive the Examiner's decision of rejection on 
or after April 1, 2009.

(8) Appeal to Courts

You can appeal to the Intellectual Property High Court, which is part of the 
Tokyo High Court, against the decision of the Appeal Board.

  

(1) World-wide Novelty

Publicly known or publicly worked inventions, as well as those described in 
a publication, are determined on a world-wide basis.

(2) Invention Described in Prior-Filed Application

Substantially the same invention as that originally described in a 
prior-filed and post-laid-open patent or utility model application is 
unpatentable.  
This unpatentability is not applied if the applicants or inventors are 
identical between the examined application and the prior-filed one. 

Substantially the same invention as that claimed in a prior-filed patent or 
utility model application is unpatentable.  This unpatentability is applied 
even if the applicants or inventors are identical between the examined 
application and the prior-filed one.

(3) Amendments

(I)  You can amend the description, claims and drawings of your application: 
 	(i) anytime from the filing date to the very first Office Action;
 	(ii) during a term for response to an (Examiner's or Appeal Board 
             Examiners') Office Action; and
 	(iii) when you appeal to the Appeal Board.
	* "Office Action" here means Notification of Reasons for Rejection.

(II)  New Matter should not be added to the Amendments.  In other words, the 
matter that is not obvious from the description, claims and drawings 
originally disclosed at the time of filing cannot be included in the amended 
ones. 

(III)  The Amendments should not change the claimed invention from already 
examined one beyond unity of invention.

(IV)  Claim amendments during the term for response to the Final Office 
Action or when you appeals to the Appeal Board are restricted to: 
 (i) canceling Claims;
(ii) restricting the claim limitations without changing a technical field 
nor problem to be solved (subject to patentability requirements);
 	(iii) correcting description errors; or
 	(iv) clarifying unclear descriptions pointed out by the Examiner 
             in the Office Action.

The Amendments during the term for response to the Final Office Action or 
when you appeal to the Appeal Board, beyond the permitted range (II) to (IV), 
will be dismissed instead of bringing a further Office Action.  The dismissal 
of the Amendments usually results in the Decision of Rejection.

[Ref.1] What is Restrictively Narrowing Amendment (IV)(ii) 
          all about?
(from JPO's "Examination Standard of Patent and Utility Model")

(i) Restriction of the claim limitations means:
restricting one or more claim limitations to their species (lower concepts); 
or deleting part of alternatives.

(ii) Identity in a problem to be solved means being:
identical in the problem to be solved; or
technically closely related in the problem to be solved.
(ex. problem being changed to species one; problem remaining within the same 
type) 
ex. from "strength being improved" to "tensile strength being improved;" or 
from "downsized" to "lightened"

(iii) Identity in a technical field means being:
identical in the technical field; or
technically closely related in the technical field.

[Ref.2] Example of Restrictively Narrowing Amendment (IV)(ii) 
(from JPO's "Examination Standard of Patent and Utility Model") 

Claim 1 (before Amendment)
An electronic clinical thermometer comprising:
a sensor for converting a body temperature to an electric signal; and
an arithmetic circuit for predicting an asymptotic temperature value on 
a basis of variation in an output from the sensor. 

Claim 1 (after Amendment)
An electronic clinical thermometer comprising:
a sensor formed of a thermocouple for converting a body temperature to 
an electric signal; and
an arithmetic circuit for predicting an asymptotic temperature value on 
a basis of variation in an output from the sensor.

Why does this Amendment fulfill the requirement (IV) (ii) ?  Because:
the claim limitation "a sensor for converting..." is lowered in concept 
level;
the technical field is unchanged; and
the problem to be solved is unchanged.

[Ref.3] Two types of Office Actions and Decision of Rejection 

The First Office Action notifies reasons for rejection for the first time 
that have existed since the beginning of the Examination.
The Final Office Action only notifies reasons of rejection that have arisen 
from the amendments responding to the previous Office Action.
The Decision of Rejection is issued when the reasons for rejection notified 
in the Office Action have not been eliminated even by the response.

(4) Amendments after Issuance of Patent

You can amend your patent even after its issuance (by Correction Trial; or 
Petition for Correction (during Invalidation Trial)).
The Amendments of a patent are restricted to: 
 (i) narrowing the scope of the claims;
 (ii) correcting description errors or translation errors; and
 (iii) clarifying unclear descriptions.
Substantially broadening or changing Claims is not permitted.  
The Amendments (i) and (ii) must fulfill the patentability requirements.

(5) Translation Error Correction of PCT Application

You can correct translation errors in your PCT application as the Amendments 
before the issuance of a patent.  You can, therefore, correct the translation 
errors even after finding out the errors by receiving an Office Action.  
The translation error correction incurs an Official Fee of 19,000 yen.  You 
can correct translation errors by the Correction Trial or Petition for 
Correction even after the issuance of a patent.

(6) Procedure of PCT Application entering into (Japanese) 
    National Phase

A procedure for a PCT Application entering into the Japanese National Phase 
should be taken within 30 months from the priority date.  The Official Fee 
(for the submission of a National Form Paper) is 15,000yen. If you submitted 
the National Form Paper within 2 months before the 30-month period expires, 
you can submit the translation of your PCT Application within 2 months from 
the submission date of the National Form Paper.

(7)  Treatment of Software Invention

An applicant can recite a software invention in the Claims even as a program 
or program recording medium.  Business method, game method, and calculation 
method are patentable subject matter if they are implemented by concrete 
means formed of software and hardware collaborating with each other.  You 
should recite such concrete means in the claims.

(8)  Divisional Application

You can file a Divisional Application on the basis of your already filed 
Patent Application (i.e., Parent Patent Application).  
The Divisional Application should not include a new matter beyond the 
Parent Patent Application as originally filed.  You can file the Divisional 
Application during the term for submission of Amendments.  For a Parent 
Patent Application filed on or after April 1, 2007, further terms are 
given for filing its Divisional Application as follows.

   (i) Before April 1, 2009
The Divisional Application can also be filed within 30 days from the 
Decision of Allowance.  Thirty-day extension is given by your petition 
(with official fee of 2,100 yen paid).  
The Divisional Application can also be filed within 90 days from the first 
Decision of Rejection, (without appeal to the Appeal Board).

   (ii) On or after April 1, 2009
The Divisional Application can also be filed within 30 days from the 
Decision of Allowance.  Thirty-day extension is given by your petition 
(with official fee of 2,100 yen paid). 
The Divisional Application can also be filed within 4 months from the first 
Decision of Rejection, (without appeal to the Appeal Board).

The Divisional Application submitted in those periods written under the 
numbers (i) and (ii) should not include a new matter beyond the Parent Patent 
Application either as originally filed nor immediately before the division.

(9) Conversion of Application

(i) You can convert your Patent Application to a Utility Model Application.  
The Conversion from a Patent to a Utility Model Application is:
not allowed after 90 days past the first Decision of Rejection; nor
(On or after April 1, 2009, not allowed after 4 months past the first 
Decision of Rejection)
not allowed after 9 years and 6 months past the filing date.

(ii) You can convert your Utility Model Application to a Patent Application.  
The Conversion from a Utility Model to a Patent Application is:
not allowed after the registration of a Utility Model nor after 3 years past 
the filing date.

(iii) You can convert your Registered Utility Model to a Patent Application.  
The Conversion from a Registered Utility Model to a Patent Application is:
not allowed after 3 years past the filing date;
not allowed after he/she makes a request for "Technical Evaluation of 
Utility Model" to the Japan Patent Office; nor
not allowed after 90 days past the first notice of a request for "Technical 
Evaluation of Utility Model" made by another person to the Japan Patent 
Office.

(iv) A Conversion between a Design Application and a Patent or Utility Model 
Application is also allowed subject to certain requirements.

(10) National Priority

1)  You can file a Patent (or Utility Model) Application claiming National 
Priority onto your previously filed Japanese Patent or Utility Model 
Application (i.e. Basic Application) like Paris Priority within one year 
from the filing date of the Basic Application.  The Basic Application should 
remain pending when you file the Application claiming priority onto the Basic 
Application.  The Basic Application should not be a Divisional nor Converted 
one.  The Basic Application is deemed to be cancelled when one year and 3 
months past after the filing date of the Basic Application, if the Basic 
Application is still pending.

2)  The benefits of claiming National Priority are similar to that of Paris 
Priority.  Please note that adding a new embodiment not substantially 
identical with the invention described in the Basic Application to the 
Application claiming the National Priority loses benefits of the priority 
in the part corresponding to the added embodiment even for a generic claim 
that does not specify but covers the added embodiment.  This practice also 
applies to Paris Priority under the JPO's "Examination Standard of Patent 
and Utility Model."
(This practice looks specific to Japan.  No other nations, such as US, EP, 
are like JP.  The Case Law might hopefully be replaced in the future.) 

3)  Under this practice, you are advised to keep secret the invention 
described in your Basic Application until you file an Application claiming 
Priority, if you would like to add a new embodiment beyond substantial 
identity.  
Otherwise, even a generic claim not specifying but covering the added 
embodiment may be rejected or invalidated, if the added embodiment lacks 
inventive step over the invention disclosed in the Basic Application.

[Case Law]

      Embodiment in Basic Application

              (Ring like) 

      Embodiment added to 
      Priority-Claiming-Application

               (Helical) 

      Filed during priority period 
      by another applicant

               (Helical) 

A claim, reciting thick and thin portions formed alternately, was rejected 
due to the prior filed application disclosing a similar helical form. 
("Baby Bottle Cap" Tokyo High Court, Hei-14, Gyo-Ke 539, Sep. 24, 2003)

(11) Employee Invention

A right to obtain a patent for an employee invention originally belongs to 
an inventor (employee).  An employer obtains a non-exclusive license on a 
patent right for the job invention automatically.  The employer can be 
assigned the right to obtain a patent or the patent right for the job 
invention from the inventor (employee) pursuant to a contract or service 
regulation.  The inventor (employee) who has assigned the right to obtain 
a patent or the patent right for the job invention can receive reasonable 
remuneration.

(12) Foreign Language Application

You can file a Patent Application with a description, claims, drawings and 
abstract written in English language.  The official fee for filing this 
Foreign Language Application is 24,000 yen.  You should submit Japanese 
translation of the Application documents within 1 year and 2 months from 
your priority date (i.e., the filing date of your first application onto 
which Paris Priority is clamed).  For a Divisional or Conversion Application 
written in English, Japanese translation can be submitted within 2 months 
from the filing date even after the "1 year and 2 months" period has past.  
Translation errors can be corrected like those in the PCT translation.  

(1) Restricted Subject Matter

A subject matter is restricted to "shape, construction or combination of 
articles" for a Utility Model registration.  Method or material is not a 
subject matter, for example.

(2) No Substantial Examination

A Utility Model is registered without Substantial Examination but with Basic 
Examination. 
In Basic Examination, the Application to which one of following conditions 
applies is subjected to the order of Amendments.

 (i)  The claimed invention is not a subject matter;
 (ii)  The claimed invention is liable to go against public order, morality 
       and health;
 (iii)  The claimed invention does not fulfill formality requirements to 
       Claims or unity of invention; or
 (iv)  The Description, Claims or Drawings lacks a necessary matter, or is 
       very unclear.

(3) Lower Inventive Step

Inventive step standard is lower than that for a Patent under the statutory 
law.  The standard is such a level that a skilled person in the art would 
have created a device "very" easily.  The Patent Law has no "very" word in 
the standard.


(4) Shorter Duration of Right

A Utility Model right expires when 10 years past the filing date.  
(Note: 6 years, if filed before April 1, 2005) 

(5) Requirements for Enforcement

You cannot enforce your Utility Model Right without giving a warning showing 
the JPO's "Technical Evaluation Report of Utility Model" to your alleged 
infringer.

(6) Burden of Damages

Once a Utility Model registration has been invalidated after you enforced the 
Utility Model Right, you should shoulder a burden to prove your no negligence 
against a demand for damages.

How no negligence can be proved?  No Case Law is present on this matter.

The Japan Patent Office states its opinion in a printed publication 
"Commentary on the Code of Industrial Property Rights Law," 17th edition 
(2008), Japan Institute of Invention and Innovation.
Even if you enforced your Utility Model right based on the Technical 
Evaluation Report not denying its validity:
(i) if the Utility Model registration has been invalidated based on the prior 
art found beyond a search range in the Technical Evaluation Report, you 
should have taken due care, e.g., performed your own search within a 
necessary range; and
(ii) if you had known the prior art that gives a ground for the invalidation 
when enforcement, you have no immunity against the demand.

(7)   Advantage of Utility Model Registration

You can obtain an exclusive right quickly by filing a Utility Model 
Application.  Therefore, if you would like to protect your technically 
creative goods to be placed in the market soon with a short life-cycle, 
the Utility Model Application may be a choice.


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