PATENT:SOEI Patent & Law Firm

1: When will the applications be examined?

Applications will be examined when the JPO receives a Request for Examination.  You must file a request for examination within three years of the filing date.  If a timely request is not filed, the application will be deemed to have been withdrawn.

 

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

No.

 

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

Normally, the fee for filing the Request for Examination must be paid at the time of filing the Request for Examination.  However, since April 1, 2009, the payment can be postponed for a year from the date on which the Request for Examination was filed.  In light of the current worldwide economic situation, the Japan Patent Office started this deferred payment system as a temporary measure to reduce the financial burden on applicants.  The system began on April 1, 2009 and will last two years.  Please note that will be more expensive because it is necessary to file an amendment for the payment of the fee and our fee for filing the amendment is 12,000 JPY.

 

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

Yes, the JPO has three procedures for expediting examination.  One is Preferential Examination system, which may be requested by either the applicant or a third party.  The others are Accelerated Examination system and Super Accelerated Examination system, which may be requested only by the applicant.

 

5: What is required to request Preferential Examination?

The requirements are:

1. A Request for Examination has been filed (may be submitted together with the request for Preferential Examination);
2. The application has been laid open to public (Kokai Publication);
3. A third party is working the claimed invention;
4. The Commissioner of the Patent Office determined that the application needs a Preferential Examination.

If these conditions are met and the Commissioner of the Patent Office determines that Preferential Examination is necessary, the application will be examined and the first office action will be issued in 2.2 months, on average.
As the requirements for requesting the accelerated examination are more relaxed (see Q6), there is no substantial merit for the applicant to use the Preferential Examination. When the third person files a Request for Examination for an application by another company and attempts to cause the application to be rejected at an early stage, it would be beneficial to use Preferential Examination.

 

6: What is required to request Accelerated Examination?

The requirements are;

1. a Request for Examination has been filed (may be submitted together with the request for Accelerated Examination);
2. And anyone of the following;
   - the applicant or his licensee is working or is planning to work the claimed invention within two years;
   - the applicant has filed a corresponding patent application in a country other than Japan;
   - the applicant is a small entity or individual.

If these conditions are met and the Examiner determines that Accelerated Examination is necessary, the application will be examined and the first office action will be issued in 2.2 months, on average.

 

7 : What is required to request Super Accelerated Examination?

In order to qualify for Super Accelerated Examination, the application must meet all of the following conditions:

1. The Request for Examination has been filed but the examination not started, in other words, before the applicant receives any of the following notices by the Examiner of the Patent Office.
   - Notice of reasons for rejection
   - Notice of Allowance
   - Notice of statement of information concerning invention known to the public through publication
   - Notice of double patenting
2. The invention in the application is “being worked” and the application has an “overseas counterpart application.” An application is “being worked” if the applicant is working the invention or a person who has been granted a license is working the invention. “Overseas counterpart application” refers to a corresponding patent application (including international application) that has been filed to a patent office or intergovernmental authority other than the Japan Patent Office by the applicant.
   
   If these conditions are met and the Examiner determines that Super Accelerated Examination is necessary, the application will be examined and the first office action will usually be issued within a month. Following a timely response to the Notice of Reasons for Rejection (see note below), the JPO will usually issue its next official action within a month from the filing date of the response to the Notice of Reasons for Rejection was filed.

Note 1: Although the applicant has 60 days (3 months for those residing abroad) to respond to the Notice of Reasons for Rejection, if the applicant fails to respond within 30 days (2 months for those residing abroad) from the dispatch date of the Notice, the application will no longer be qualified for Super Accelerated Examination. Instead, it will be handled according to simple accelerated examination protocols.

Note 2: The period for filing a response to the Notice of Reasons for Rejection cannot be extended.

 

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

The Patent Prosecution Highway (PPH) system is part of the Accelerated Examination System. The PPH system allows applicants to file a request for accelerated examination that is simpler than an ordinary one.
Please note that the PPH is merely a system to accelerate examination and it does not secure grant of applications even if their counterpart applications have already been granted in another country that participates in the PPH. Japanese examiners will examine the application based on the Japanese standards for patent examination, independently of the result of the foreign examination for the counterpart application. They often issue office actions citing Japanese prior art documents that were not cited in the foreign examination.
As of September 1, 2009, the PPH program is in effect between Japan and the U.S. (see Q9andQ10), and Japan and Korea. Japan has also implemented PPH pilot programs with the U.K., Germany, Denmark, Finland, Russia, Austria, Singapore, and Hungary.

 

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

To use the PPH system for a Japanese application, it is necessary to satisfy the following requirements:

1. The JP application is one of the following:
   - (a) An application that claims priority to a US application; or (b) PCT application in Japanese national phase that claims priority to a US application;
   - PCT application in Japanese national phase that also entered the US national phase;
   - (a) PCT application in Japanese national phase that claims priority to another PCT application that entered the US national phase; or (b) An application that claims priority to a PCT application that entered the US national phase.
2. The counterpart US application includes claim(s) determined to be allowable in the US prosecution.
   Note: “Allowable claims” means
   - claims listed in “The allowed claim(s) is/are” of the “Notice of Allowability,”
   - claims listed in “Claim(s) is/are allowed” in the “Disposition of Claims” of the “Office Action Summary,” or
   - claims listed in “Claim(s) is/are objected to” in the “Disposition of Claims” of the “Office Action Summary” with a statement that the claim(s) are objected to as being dependent upon a rejected base claim, but would appear to be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
3. The claims in the JP application correspond to the allowable claims in the counterpart US application.
   Note: If the US allowable claims do not correspond to JP claims, you need to amend the JP claims to make them correspond. The Japanese Patent Office (JPO) explains that there is correspondence between a JP claim and a US claim when the JP claim includes all the feature(s) that are determined to be allowable in the US claim.
4. A request for examination has been filed for the JP application.
   Note: We can file a request for examination together with a request for the PPH system.
5. The examination of the JP application has not yet started.

 

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

To benefit from the PPH system, we need to file a request for accelerated examination including information on the US prosecution and an explanation about how JP claims correspond to allowable US claims. If the JP claims do not correspond to those in the US, it is necessary to file amendments to make them correspond or to file a regular request for accelerated examination without using the PPH system.
A regular request needs to include information about the prior art and an explanation on how the claims in the JP application differ from the prior art. On the other hand, when using the PPH system, applicants do not need to explain the difference between the claims and the prior art. Instead, applicants provide i) copies of all the office actions issued in the US prosecution, ii) a copy of the US claims including allowable claim(s) that correspond to the JP claim(s), iii) a copy of document(s) cited in the US prosecution, and iv) explanations of the correspondence between the JP claims and the US allowable claims.
You can omit i) and ii) above if that information is disclosed in Patent Application Information Retrieval (PAIR,http://portal.uspto.gov/external/portal/pair).
You can omit iii), submission of cited document(s), if they are a patent documents. Non-patent documents must be submitted. Japanese translation does not need to be submitted for either patent documents or non-patent documents.