IP NEWS:SOEI Patent & Law Firm

There is an accelerated examination system in Japan that allows applicants to receive a first office action 2.2 months, on average, after accelerated examination has been requested. In addition, the Japanese Patent Office (JPO) launched an experimental Super Accelerated Examination (“SAE”) system on October 1, 2008 to satisfy applicants who wish to have results of examination more quickly. In this system, a Notice of Allowance was issued for one application on October 17, 2008 following a request for the SAE filed on October 1, 2008.

1. Who can request the SAE?
Applicants who satisfy all the requirements below can request the SAE:
(1) A foreign application was filed corresponding to a Japanese application for which the SAE is requested.
(2) The invention claimed in the Japanese application was commercialized in Japan or there is a plan to commercialize the claimed invention in Japan within two years.
(3) All the procedures are taken online after filing a request for the SAE.
(4) The application for which the SAE is requested must be a Japanese national application. That is, the application must not be a nationalization of a PCT application designating Japan.

2. What documents and/or information are necessary?
(1) Information about the corresponding foreign application, such as the identification of the foreign intellectual property office and the filing number, etc.
(2) An explanation how the invention is commercialized in Japan or is planned to be commercialized in Japan.
(3) A search of the prior art and an explanatory comparison between the invention and the related prior art.

3. What are the procedures after the request?
(1) The JPO will determine whether the application qualifies for the SAE.
(2) If qualified, the examiner will issue the first office action within one month.
(3) The foreign applicant needs to respond to the first action within two months.
(4) The examiner will issue the second office action within one month following the response.

4. How much does it cost for the request?
There is no official fee. However, preparation of the request and the other documents necessary will incur attorney’s fees.