PATENT:SOEI Patent & Law Firm

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

Yes, you can file a Japanese application in English to obtain a filing date.  The specification, drawings, and abstract can be filed in English, but the application request must be in Japanese.  The Japanese translation must be submitted within one year and two months following the first priority date.  If translation errors are found in the Japanese translation after filing, you can correct the errors based on the English language application.  However, the original English text cannot be amended or corrected.  If new matter is introduced in the Japanese translation beyond the disclosure of the English language application, it will result in a reason for rejection of the application or, if patented, become grounds for invalidation.
Note: In case of divisional or converted applications in English, the Japanese translation must be submitted within one year and two months following the first priority date or two months from the actual filing date, whichever is the later date.

 

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

The due date for the national entry in Japan is 30 months from the first priority date regardless of whatever a demand under Chapter II was filed within 19 months of the first priority date (as of September 1, 2002).
If the national entry request is filed between 28 and 30 months from the first priority date, the translation must be filed no more than two months after the date of entry.

 

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

Japanese translation of the specification, claims, abstract, and any text included in drawing as originally filed, must be filed at the time of filing a national phase application, or no more than two months after the entry into the national phase in Japan.

 

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

No. Although you may nationalize Article 19 and/or 34 amendments by filing the translation thereof at the time of the national filing, it is not recommended to file such translations because JPO conducts its own search, independent of the International Search Report and they often cites other references. Therefore, to obtain the broadest patent, it is generally better to start with the original claims. Also you may save the translation cost if such amendments have not been nationalized. You may have opportunity to effect the same amendments or file another amendment when you request examination.

 

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?

If the claims are amended based on PCT Article 19
The applicant can file translations of claims that are amended based on PCT Article 19 instead of translations of the original claims.  Even if translations of original claims were filed, the applicant can file translations of the claims that are amended based on PCT Article 19 within the 30-month period between the first priority date and the due date for national phase entry.

Note 1: If the national entry request is filed between 28 and 30 months following the first priority date, translations of the Article 19 amended claims can be filed within two months following the submission of the national entry request even if the 30-month period has passed.

Note 2: If the applicant files a Request for Examination during the 30-month period or during the 2-month period in the case of Note 1, translations of the Article 19 amended claims must be filed by the filing date of the Request for Examination.

If the claims were amended based on PCT Article 34
The applicant cannot replace the original claims with translations of the claims that were amended based on PCT Article 34.  The applicant must first submit translations of the original claims and/or claims that were amended based on PCT Article 19 and then amend the translation of the claims as originally filed with translations of claims as amended under PCT Article 34 when necessary.

 

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

If there is an explanation in language other than Japanese in the drawings, those drawings must be submitted with Japanese translations. If there is no explanation in language other than Japanese, the drawings do not need to be submitted. If there is an explanation in language other than Japanese in the drawings and the drawings are submitted without Japanese translations, the explanation in the drawing will be deemed not to be present. However, the explanation in the drawing can be recovered by filing a Request for Correction of an Incorrect Translation.

 

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

No. There is no way to recover the application after the 30 months deadline has passed.

 

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

There is no way to restore the priority in Japan. However, if priority has been properly claimed but a certified copy of the priority document was not submitted during the PCT international phase, you can file a certified copy between 30 and 32 months from the first priority date.

 

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

Yes. Applicants need to identify the relevant prior art in the specification for all patent applications filed on or after September 1, 2002. (For PCT applications, the international filing date is regarded as the Japanese filing date.) If there is no such identification of the prior art, the Examiner will request applicants to identify the relevant art. Consequently, the identification of the relevant art can be supplemented during the examination. Note that there is no need to submit actual copies of the art.

 

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

Applicants may make voluntary amendments after they have a) filed the national entry request, b) paid the fees, c) a Japanese translation of the specification, claims, drawings and abstract, and d) 30 months have passed from the earliest priority date.

Note 1: If the national entry request is filed between 28 and 30 months from the earliest priority date and conditions b) and c) have been fulfilled, voluntary amendments may be filed two months after the date of national entry and anytime thereafter.

Note 2: Notwithstanding the foregoing, applicants may make voluntary amendments after conditions a)-c) have been fulfilled and applicants have filed a Request for Examination.

 

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

No. But fees for request for examination increase according to the number of claims. In Japan, multiple dependent claims can depend on multiple dependent claims whereby it is possible to reduce the number of claims and save fees for request for examination. There is no surcharge for multiple dependent claims. In the following example, the total number of claims is “5.”

Claim 1……A device.
Claim 2……The device according to Claim 1.
Claim 3……The device according to Claim 1 or 2.
Claim 4……The device according to Claim 3.
Claim 5……The device according to any one of Claims 1-4.

 

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

The official examination fee is calculated based on the total number of claims. The fee for independent and dependent claims is the same. (See Q11.)

 

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

No, there are no systems which are exactly the same as a continuation application and a continuation-in-part application of the US.  However, divisional applications in Japan are similar to continuation applications, and an application claiming domestic priority is similar to a continuation-in-part application.

 

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

No, the renewal fee for pending applications is unique to the European patent system.