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PATENT

General

1: Are there any restrictions on Japanese patent attorneys regarding simultaneously representing competitors in overlapping areas of technology?

2: What are patentable inventions?

3: I disclosed the invention. Can I still obtain a patent for this invention?

4: What is the exception to loss of novelty?

5: Is a submission date of a paper by a professional journal deemed to be a distribution date?

6: If the journal distributes copies of the paper to a committee of professionals for evaluation before printing of the paper, would it be deemed to be publication?

7: If an oral presentation describing an invention has been made at a conference of specialists in Japan, would the event be considered to have made the invention publicly known?

8 :Does the term “publication” include a poster session or other visual display of information without restriction on its further use or disclosure?

9 :How long is the grace period in Japan?

10 :In the following situation, would the Japanese application be rejected?
The patent application was filed in a first country, but the specification did not describe the invention well enough to enable one skilled in the art to practice the invention; Furthermore, subsequent to filing the application in the first country, the inventors gave a presentation at an academic conference which included a disclosure of the invention that was within the scope of the first country application but not that was not specifically disclosed in that application; Within the one year following the application date in the first country but more than six months following the academic conference presentation and before the publication date of the application in the first country, the applicants filed a Japanese application claiming priority to the first county application but revised to include the material disclosed at the academic conference that enabled one skilled in the art to practice the invention.

11 :Could the application by others that was published after my application be cited in a Notice of Reasons for Rejection?

Application

1: Can I file a Japanese application in English to obtain a filing date?

2: When is the due date for filing a national phase application derived from a PCT application?

3: What should be filed at the time of filing a national phase application from a PCT application?

4: Must translations of amendments made under Article 19 and/or 34 of PCT be filed at the same time as the national filing?

5: Can the applicant file claims that are amended under PCT Article 19 and/or 34 instead of the original claims at the nationalization stage of PCT application?

6: Do we need to submit the drawings when nationalizing a PCT application?

7: Can a PCT application be nationalized after 30 months following the priority date?

8 :If a claim of priority was inadvertently omitted in a PCT application, is there any way to restore the priority in Japan?

9 :Is there any duty to disclose relevant prior art for a Japanese patent application?

10 :I would like to make claim amendments to a PCT application before examination. At which point is this possible?

11 :Are there any limits to the number of claims (total number or the number of independent and dependent claims) in Japan?

12 :Is there an additional examination fee for dependent claims?

13 :Are there any systems in Japan equivalent to a continuation application and a continuation-in-part application of the US?

14 :Is there a renewal fee for pending applications in Japan?

Examination 1

1: When will the applications be examined?

2: If the period for filing the Request for Examination has expired, is there any way to recover the application?

3: How does deferred payment of the official fee for the Request for Examination work?

4: Does the JPO have systems for expediting the examination of applications?

5: What is required to request Preferential Examination?

6: What is required to request Accelerated Examination?

7 :What is required to request Super Accelerated Examination?

8 :How are the applications examined under the Patent Prosecution Highway (PPH) program?

9 What are the requirements for using the PPH program between Japan and U.S.?

10 :What are the procedures required to benefit from the PPH system between Japan and U.S.?

Examination 2

1 : Is there a fee for using the PPH program?

2 : In Japan, is there an Auxiliary Request system as in the EPO (can you submit multiple draft claim amendments)?

3 : What are the restrictions for the claim amendments after receiving the Final Notice of Reasons for Rejection?

4 : What is the unity of invention according to the Japanese Patent Law?

5 : What is “Shift Amendment”?

6 : I filed a US application claiming compounds without any physical or chemical data. Then I filed a Japanese application, with physical and chemical data on the compounds, and claimed priority to the US application. Will the priority claim be accepted?

7 : I first filed a U.S. application, and then filed a Japanese application claiming priority to the U.S. application. I wish to have the Japanese claims identical with those issued in the U.S. patent. Is it advisable to amend the Japanese claims so as to conform to the issued U.S. claims when requesting examination?

8 : Continuing from the situation described in “Q7”, should I wait until the Examiner issues a Notice of Reasons for Rejection (First Office Action) to amend the claims?

9 : I hear that the Japanese Examiner is more likely to give favorable consideration, if the Japanese claims were amended so as to conform to the granted U.S. claims. Is this correct?

10 : Is an interview recommended to expedite examination procedures?

11 : Is it possible to request refund of the Examination Fee?

12 : When can I file a divisional application?

13 : Can I file a divisional application after having filed an appeal against the Examiner's decision to reject the application?

Others

1: Why must the annuities for three years be paid in one payment prior to registration of the patent?

2: Is there a Third Party Observation system in Japan?

3: In Japan, is there a system such as the IDS system in the United States?

4: The old Opposition System has been combined in a New Invalidation System. Please explain.

5: In Japan, are there any provisions similar to those benefiting a small entity in the United States?

6: Can you obtain a patent for an invention related to software and/or business method?

7 :Are English translations of the Japanese patent documents available?

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