Introduction

Despite widespread concern among economists about Japan's fictitious recession and slow growth, household spending in the third-largest economy in the world is a sign that the nation is still a promising location for business growth. Japanese consumers have been dubbed "more powerful than U.S. consumers"; their purchasing power accounts for roughly 60% of the nation's GDP, and the last quarter's report of stable unemployment (3.2%) and year-over-year wage growth supports this claim (0.7 percent).

Despite a minor reduction in patent applications in recent years, Japanese companies continue to contribute substantially to domestic and worldwide innovation. According to the most current Global Intellectual Property Indicators report, companies with headquarters in Japan account for 55 of the top 100 global patent applicants, with Panasonic at the top of the list. These global inventors filed over 450,000 patent applications around the world.

Bringing an invention to market in Japan is no easy task for non-residents. There are many obstacles to overcome when filing patents. Beyond linguistic and cultural differences, the peculiar filing requirements of Japan and the harsh post-grant environment could destroy even the most promising market opportunities. This blog will discuss the Japanese patent filing process.

Who can apply for a Patent in Japan?

Any applicant, legal entity, or organization with a residence or business address in Japan can file a patent application. Otherwise, the applicant, legal body, or organization must choose a registered professional representative to represent them in patent prosecution processes. An application for the patent award can be filed with the Japan Patent Office, together with the necessary fees (JPO).

Japan Patent Act: Patentability Test

The criteria for patentability are:

● Novelty

● Inventive step; and

● Industrial Applicability

According to Article 2(1) of the Japan Patent Act, an "invention" is "the highly advanced creation of technological concepts through which a natural law is utilized."

Japan Patent Act: Non-Patentable Inventions

According to Japan Patent Act, The following are non-patentable inventions in Japan

● Any invention which harms public order, morality, or public health;

● Laws of nature;

● Scientific discoveries;

● Inventions not using or contrary to a law of nature (e.g. economic laws, mathematical methods, etc.);

● Arbitrary arrangements (e.g. rules for playing a game);

● Mental activities;

● personal skills;

● presentation of information;

● Aesthetic effects (e.g. paintings, carvings);

● Methods of medical treatment of the human body.

Different types of patent applications in japan

● Ordinary Patent Application: An ordinary patent application is filed with the Japan Patent Office (JPO) without claiming priority from any other application currently pending with the Patent Office of another nation. It is important to note that filing a provisional patent application in Japan is not yet available. As a result, to get a filing date, an applicant must file a complete patent application with the Japan Patent Office.

● Convention Patent Application: Japan has been a signatory to the Paris Convention since July 15, 1899. As a result, an application can be filed in convention nations within twelve months of the date of priority of a patent application filed in Japan, or a convention application can be filed in Japan within twelve months of the date of priority of a convention country's patent application.

● PCT Application: On October 1, 1978, Japan ratified the Patent Cooperation Treaty (PCT). Since then, it has been feasible to include Japan in an International Patent Application filed through the PCT method.

Details required for filing PCT application in the Japanese national Phase:

The following information is required for filing a PCT application into the Japanese national phase within the deadline of 30 months from the earliest priority date:

➢ application/request form;

➢ copy of the PCT specification, claims, and drawings;

➢ front page of WIPO Publication;

● Divisional Application: If an application contains numerous inventions, the applicant may break it into two or more applications under the Japan Patent Act. However, the divisional applications' descriptions and drawings may only go within the scope of the original application.

Requirement for filing a patent application in Japan

The following details are required while filing a Japanese patent application based on a convention application via the Paris route.

● copy of the specification, claims, drawings, and abstract;

● full name and address of inventor(s);

● full name and address of the applicant(s);

● the filing date of the priority application(s);

● application number of the priority application(s); and

● priority documents (must be filed within 16 months from the priority date).

Language

All details and other official documents must be filed in Japanese.

● PCT Application: The Japanese translation of the application must be filed within two months of the application's entry into the Japanese national phase.

● Convention Application: Within 14 months of the priority date, the Japanese translation of the application must be submitted.

Patent Examination in Japan

The JPO will not examine a patent application unless a request for examination is made with official fees based on the number of claims. If any required papers or sections are missing or incomplete, an invitation to rectify the application is issued. Applicants now have three years from the date of Japanese filing to lodge such a request.

If a request for inspection is not received by the required date, the application will be considered withdrawn. It is not possible to recover an application that has been deemed withdrawn. A third party may request that a laid open patent be examined, in which case the JPO will notify the applicant.

Accelerated Examination is available for every Japanese patent application that has a comparable international application. To expedite the test, the applicant must provide a copy of at least one search or examination report. A first Office Action is normally issued four months after a request for an accelerated examination, as opposed to one year or more for regular petitions.

Rejection of Patent

Japan has a first-to-file system, which means that the first person to file a patent application to protect intellectual property (IP) receives the patent. After evaluating the application, a JPO examiner would write a Notice of Allowance or an Office Action describing the reasons why it was refused. The grounds for rejecting an application are listed below.

● New information was added by amending the application

● The applicant resides in a nation that denies Japanese citizens reciprocal privileges.

● The claimed invention was not the first to be the subject of a patent application submitted by the applicant.

● Lack of novelty

● Lack of inventive step

● Non-statutory subject matter

● The invention is liable to contravene public order, morality, or public health

● A prior patent application submitted by another applicant and later published contains information about the alleged invention.

● The application was not filed by all the joint owners

● The patent was granted contrary to the provisions of a treaty

● The invention is not sufficiently described in the specification clearly and comprehensively for a person with ordinary skill in the relevant field to implement the invention.

● The allowed claims are not (i) supported by the specification; and (ii) clear, concise, and written according to patent rules

● The applicant lacks the right to a patent because they are not the inventor.

● The unity of the invention is not satisfied

● A Japanese translation of an English language patent application was made, and it contains information that was not disclosed in the English version.

A patent cannot be granted for an innovation that is widely known or used in countries other than Japan. Section 29(1) of the Japanese Patent Law, amended in 2000, deals with the novelty of an invention. As a result, a patent may not be granted for an invention that is publicly displayed or sold in the United States before the filing of a US priority application. Concurrently, the modified law broadens the concept of publishing to encompass content publicly transmitted over widely accessible electronic communications networks, such as the internet, as well as papers printed on paper. Similar changes are made to the patent law section 29 obviousness standards (2).

Appeal

A patent application may be denied, but the applicant may appeal the decision. Any application revisions must be made within 30 days of the final denial, which must be appealed within 90 days.

The principal examiner will prioritize the new changes and the patent application. If the applicant still does not believe the application is admissible, an appeal board of three examiners will review it.

The Time to File Office Action Response in Japan

A response to the office action must be filed within three months after the date of the notice.

In the case of a PCT application, a request for examination must be made within three years of the International filing date, and in the case of a Paris Convention case, within three years of the filing date in Japan.

Patent Grant in Japan

If no reasons for rejection are discovered, the patent is issued to the application. After the patent is granted, the applicant must pay the first three years annuities as a registration fee within 30 days of the Notice of Allowance's forwarding date. The Patent is published in the Official Gazette when it has been registered.

● Relevant Office: Japan Patent Office (JPO)

● The law in Force: Japan Patent Act (No. 121 of 1959)

● PCT Contracting State

● Paris Convention

● Prosecution Process: Filing Publication Examination Grant Invalidation trial request or Patent opposition Renewal

● Term of Registration: 20 years from the date of filing

Patent Renewal

During the application process, no annuities are due. The first annuity is given to the Japan Patent Office three months following the award date (JPO). Your payment must cover all annuities that were due during the application procedure.

Following the payment of the first annuity, all following annuities must be paid annually on the anniversary of the award date. The due date should be the same month and date as the grant date.

Patent Restoration in Japan

According to the Japan Patent Act, if an applicant fails to pay the annual fee as well as the six-month grace period, the patent will lapse. However, if non-payment was due to circumstances beyond the applicant's control, the applicant has six months from the lapse date to have the patent restored, subject to payment of a penalty charge.

When is the Patent application published in Japan?

In Japan, a patent application is published after 18 months from the date of submission. Nonetheless, a request for early publication concerning the application with JPO can be submitted.

Patent Opposition

Japan offers two options for contesting the validity of a patent

● Invalidation Trial- Any interested party may request an invalidation trial at any time after a patent has been issued or even after it has expired to contest one or more of the patent's claims. Trial participants may submit written materials and give oral testimony. A panel of three JPO trial examiners will then render a decision. The decision is appealable to the IP High Court by either party.

● Opposition System- Starting in April 2015, a patent opposition can be filed within six months of the issue of the patent. This permits the JPO to quickly assess and, if required, revoke a recently granted patent. If the JPO revokes the patent, you can file an appeal with the IP High Court under the new method. The JPO, however, will be your opponent in the appeal; the original challenger will not be present.

Author : Mudit Gupta and Syed Naqui Abbas Jah, in case of any query, contact us at Global Patent Filing or write back us via email at support@globalpatentfiling.com.

Reference

1. https://ipwatchdog.com/2016/07/26/7-things-filing-patents-japan/id=71227/

2. https://www.epo.org/searching-for-patents/helpful-resources/asian/japan/faq.html

3. https://www.ryuka.com/en/patentservices/jpatentprocess/

4. https://www.patentrenewal.com/patent-renewal-fees/japan

5. https://www.jpo.go.jp/e/