Eligibility is limited to: the inventor(s) or person(s) who have obtained the right to apply for a patent.

A company or legal entity can file a patent application as the Applicant when the inventor is under obligation to assign rights to the company (No evidence of assignment is required).

– a Request (transmittal letter) in Japanese prepared by a Japanese patent attorney,
– a Description (Specification) in Japanese or English,
– Claims in Japanese or English,
– an Abstract in Japanese or English, and
– Drawings in Japanese or English.

Drawings, however, may be omitted when the invention is understandable without drawings, for example, when the invention is simple or is a chemical product.

Although the Description, Claims, Abstract, and Drawings may be in English, Japanese translations of such English documents must be submitted within one year and two months (14 months) from the earlier of these two dates: the filing date and the priority date (if applicable). If translations have not been submitted within the prescribed period, the patent application will be deemed to have been withdrawn.

For national phase entry of an International Application under the PCT, it is necessary to file:
– a National Document (transmittal letter) in Japanese prepared by a Japanese patent attorney,
– a Japanese translation of the Description (Specification),
– a Japanese translation of the Claims,
– a Japanese translation of the Abstract, and
– Japanese translations of the Drawings.

The National Phase Document must be submitted within 30 months from the earlier of these two dates: the international filing date and the priority date (if applicable). Japanese translations of the Description, Claims, Abstract, and Drawings must also be submitted within 30 months from the earlier of these two dates: the international filing date and the priority date (if applicable). However, when the National Phase Document is submitted, the deadline for the Japanese translations is two months after the submission date of the National Phase Document.

In order to enjoy the benefits of priority claim, the applicant is required to claim the priority at the same time as filing the patent application in Japan. Multiple priority rights can be claimed.

A priority document must be submitted within 16 months from the filing date of the foreign application or the earliest filing date when multiple priority rights are claimed, whichever is earlier.

However, if the basic foreign application was filed at the European Patent Office or the Korea Intellectual Property Office, it is unnecessary to submit the priority document if the application number of the basic foreign application is specified. In this case, the Japan Patent Office requires the foreign office to transmit the priority document in electronic form.

If the basic application was filed at the U.S. Patent and Trademark Office and if PTO/SB/39 (Authorization to Permit Access to Application by Participating Offices) was submitted to the U.S. Patent and Trademark Office, it is not necessary to submit the priority document if the application number of the basic foreign application is specified. In this case, the Japan Patent Office requires the foreign office to transmit the priority document in electronic form.

In addition, if the basic foreign application was filed in a country participating in the WIPO Digital Document Access Service (DAS) for priority documents, it is not necessary to submit the priority document if the “access code” is specified. In this case, the Japan Patent Office retrieves the priority document in electronic form from the DAS by using the access code.

In addition, if the basic application was filed in Taiwan, it is not necessary to submit the priority document if the “access code” issued in Taiwan is specified. In this case, the Japan Patent Office retrieves the priority document in electronic form from the Taiwanese Intellectual Property Office by using the access code.

For national phase entry of an International Application under the PCT, as long as the procedure stipulated under Rule 17.1(a), (b) or (b-bis) of the regulations under the PCT is complied with, it is not necessary to submit the priority document. In this case, the Japan Patent Office will obtain the priority document from the WIPO (International Bureau).

No Power of Attorney is required to file a Japanese patent application or enter an application into the National Phase in Japan.

However, Article 8 of the Japan Patent Law stipulates that an applicant residing outside Japan must select a Patent Administrator residing in Japan to act as the agent of the applicant. This means that a power of attorney must be submitted later. For national phase entry of an International Application under the PCT, the procedure for selecting a Patent Administrator must be taken within 33 months from the priority date, and if this is not done, the national phase application will be considered to be withdrawn. In addition, various procedures, such as filing a Notice of Appeal, require a power of attorney.

If the applicant is a legal entity, the senior representative, e.g., the CEO or president of the applicant, should execute the power of attorney.

Although the Japan Patent Office receives various kinds of documents electronically, the Japan Patent Office accepts only original executed (signed) papers.

Inventors’ Oaths or Declarations are not necessary for Japanese applications.

A company or legal entity can file a patent application as the Applicant in a case in which the inventor is under obligation to assign rights to the company. In this case, usually, no evidence of assignment is required.

If the Applicant of a previously filed application has changed, it is necessary to submit an Assignment document executed by the former Applicant. We will prepare the Assignment document to be executed.

The Japan Patent Office requires applicants to disclose prior art in the Description (Specification) of patent applications as the background of the invention. This is merely convenient for examination, and it is not related to the doctrine of “unclean hands” or “inequitable conduct”, in contrast to the duty of disclosure in the U.S. Accordingly, negligence of disclosure of prior art does not affect the validity of a patent, and it is not necessary to submit prior art information to the Japan Patent Office when the Applicant becomes aware of it.

If no prior art information is disclosed in the specification, an examiner may request the applicant to disclose prior art information. In our experience, it is rare for an examiner to require prior art information for patent applications for non-Japanese entities, but we recommend disclosing prior art in the Description (Specification) of patent applications as background of the invention.

In Japan, a patent application is not examined unless a Request for Examination is submitted to and received by the Japan Patent Office.

A Request for Examination must be filed with the Japan Patent Office within three years from the filing date of the patent application. In the case of a national phase entry of an International Application under the PCT, the Request for Examination must be filed within three years from the international filing date and not the date on which the application entered the national phase in Japan.

If the Request for Examination is not submitted within the prescribed period, the patent application is deemed to have been withdrawn in Japan.

An applicant may request “accelerated examination” if one of several conditions is satisfied. If a Japanese patent application has a foreign counterpart application, “accelerated examination” can be requested. A prior art search result conducted by an overseas patent office or the applicant should be submitted.

Compared to the regular examination procedure, examination results under accelerated procedure are issued more quickly. The average first office action issued under the accelerated procedure is about 1.9 months (in 2012), which is much earlier than usual.

An applicant may file a request for the patent prosecution highway (PPH) program on the basis of positive examination results in various countries and on the basis of the International Search Report if the Report is positive.

In Japan, a computer program per se, as well as an information storage medium storing such a computer program, may be regarded as an invention. If other requirements are satisfied, a claim directed to a computer program may be granted.

If a claim directed to a computer program is granted, the patentee can prevent others from making, using, distributing, or selling the computer program.

Typical examples of computer program claims are:

i) A computer program for causing a computer to execute step A, B, and C;
ii) A computer program for causing a computer to serve as A, B, and C; and
iii) A computer program for causing a computer to realize functions A, B, and C.

It is not recommended to begin with “A computer program product” or “A program product” in the claims. This may cause a rejection that the claim is unclear.

If a claim directed to a storage medium storing a computer program is granted, the patentee can prevent others from making, using, distributing, or selling the storage medium.

Typical examples of storage medium claims are:

i) A computer-readable storage medium storing a computer program for causing a computer to execute step A, B, and C;
ii) A computer-readable storage medium storing a computer program for causing a computer to serve as A, B, and C; and
iii) A computer-readable storage medium storing a computer program for causing a computer to realize functions A, B, and C.

It is not necessary to begin with “A non-transitory computer-readable medium storing” in claims, in contrast to U.S. practice. However, a claim directed to an information transmission medium for transmitting a computer program is not patentable in Japan.

In Japan, an invention is defined as “a highly advanced creation of technical ideas by which a law of nature is utilized.” Mental activities, mathematical laws per se, personal skills, and artistic creations are not inventions. A business method per se or a gaming method per se is not an invention, but a communication system, a communication method, a server device, or a computer program for providing services in a business method or a gaming method may be an invention if it uses technical ideas. In Japan, a computer program may be regarded as an invention.

A patent may be granted for an invention if:

– the claimed invention is industrially applicable (Article 29, paragraph 1),
– the claimed invention is novel (Article 29, paragraph 1),
– the claimed invention involves inventive step (is not obvious) (Article 29, paragraph 2),
– the applicant is the first to file an application for a patent for the invention (Articles 29bis and 39),
– the claimed invention does not harm public order, morality, or public health (Article 32),
– amendments to the specification, claims, or drawings do not introduce new matter that extends beyond the content of the application as filed (Article 17bis),
– the specification discloses the invention in a manner clearly and sufficiently for a person skilled in the art to carry it out (Article 36, paragraph 4),
– the claimed invention is supported in the specification (Article 36, paragraph 6),
– the claimed invention is definite (Article 36, paragraph 6),
– the claims are clear (Article 36, paragraph 6),
– the application satisfies the requirement for unity of invention (Article 37), and
– the applicant has the right to obtain a patent for the invention (Article 38, and Article 49, paragraph 7).

In evaluation of inventive step, an examiner should consider whether or not the examiner can reach a logical conclusion that a person skilled in the art could arrive at the claimed invention on the basis of cited techniques. The examiner should suitably understand the state of art in the technical field to which the claimed invention belongs, and should consider what a person skilled in the art could do.

The examiner should

– understand the claimed invention and one or more cited techniques,
– select one cited technique that is most suitable for developing the logical conclusion,
– determine the differences between the claimed invention and the selected cited technique,
– attempt to make a logical conclusion denying inventive step of the claimed invention in view of the selected cited technique, other cited techniques, and common technical knowledge, and
– deny inventive step if the logical conclusion can be established, but affirm inventive step if the logical conclusion cannot be established.

Japanese examiners deny inventive step if a person skilled in the art could have conceived of the claimed invention. This is different from the “could-would approach” established in Europe, and the bar of inventive step in Japan is higher than that in Europe.

In Japan, asserting technical advantages of the claimed invention is usually very effective in order to overcome a rejection asserting lack of inventive step. Alternatively, it is effective to make an argument that the combination of cited techniques destroys an advantageous property, or that the prior art teaches away from the claimed invention.

Generally, Japanese examiners are careful and there is more consistency than might be experienced with a US application and they are more collaborative than examiners at the EPO. If a claimed invention has inventive step and the application documents including claims is sufficient, it is not difficult to convince a JPO examiner.

The Japan Patent Office has excluded diagnostic, therapeutic, and surgical methods for the treatment of humans from patentability, as being inapplicable industrially. This is because physicians or surgeons should perform medical activities without concern for patent rights. Such diagnostic, therapeutic, and surgical methods include medical treatment for contraception, childbirth, anesthesia before surgery, sterilization before injection, prevention of illness, and arrangement of electrodes for electrical therapy.

A medical method for animals other than human beings may be patentable. In this case, the claim must explicitly state that the subject is not a human.

A pharmaceutical substance may be patentable, but a method for treating the human body with a pharmaceutical substance is not patentable.

An instrument or apparatus for use in medical methods may be patentable, but an operating procedure for the human body by means of such an instrument or apparatus is not patentable if the procedure is a medical activity conducted by physicians.

Methods for treatment of samples that have been removed from a human body (e.g., blood, urine, skin, hair, cells, or tissues), or methods of gathering data for analyzing samples may be patentable. However, methods for treatment of an extract from a human and for returning the treated extract to the same human for curing the human (e.g., dialysis) are not patentable.

Exceptionally, methods for producing medicines (e.g., blood derivatives, vaccines, or genetic modifications) or medical devices (e.g., prostheses including artificial bones or cultured skin sheets) from materials removed from humans may be patentable. For example, a method for producing a medicine by culturing human somatic cells may be patentable. In addition, a method for producing a prosthesis by culturing human bone cells may be patentable.

It is noted that methods for measuring structures or functions of a human body which are not diagnostic, therapeutic, or surgical may be patentable.

In Japan, there is no concept of claim differentiation in claim interpretation, in contrast to the U.S. Accordingly, in Japan, similarly to other countries, dependent claims are effective only when independent claims would not be allowed, but dependent claims would be allowed.

In Japan, the examination fee and annuities are calculated on the basis of the total number of claims. Preparing many claims lacking particular technical advantages is therefore not cost-effective.

After a request for examination, when no reasons for rejection are found for a patent application, the examiner issues a Decision of Grant. When the examiner asserts a reason for rejection, the examiner issues a Notice of Reasons for Rejection. Usually, in the Notice of Reasons for Rejection, the examiner indicates which claims should be rejected, why the claims should be rejected, and which claims may be allowed, if any.

The deadline for responding to a Notice of Reasons for Rejection is 3 months from the issue date of the Notice for applicants residing outside Japan, and it is 60 days from the issue date for applicants residing in Japan.

If necessary, the applicant may request an extension on or before the due date. For applicants residing outside Japan, up to three one-month extensions may be obtained, and therefore, the deadline may be extended by up to three months in total. Extensions may be requested for one month, two months, or for three months.

In response to a Notice of Reasons for Rejection, the applicant can submit a written Argument and a written Amendment, if any. The applicant can also file a Divisional Application at this time.

The Notice of Reasons for Rejection (Office Action) may be a First Office Action (Non-final Office Action) or a Final Office Action. The types of amendments that are allowable differ depending on the type of Office Action.

When responding to Non-final Office Actions, amendments to the specification, claims, and/or drawings should not introduce new matter that exceeds the content of the application as filed. In addition, amendments to claims should not introduce a new claimed invention differing from the original claimed invention. Only when amended claims are related to former claims so as to form a single general inventive concept with unity of invention will the amendments be accepted. Once a Notice of Reasons for Rejection is issued, drastic amendments to claims are restricted.

When responding to Final Office Actions, the same restrictions as above apply to amendments. Furthermore, acceptable amendments are limited to

i) cancelation of one or more existing claims,
ii) further limitation of one or more elements already stated in one or more existing claims (problems to be solved by the invention should be unchanged by the limitation),
iii) correction of errors, and
iv) clarification of unclear expressions indicated in the Office Action.

A first Office Action, and subsequent Office Actions citing new reasons for rejection not caused by amendments in response to a previous Office Action, are non-Final Office Actions.

A Final Office Action cites new grounds for rejection caused by amendments in response to the previous Office Action.

If the examiner is not persuaded by the applicant’s response and considers that the same grounds for rejection should be maintained, the examiner will issue a Decision of Rejection.

The Japan Patent Office may sometimes issue a Decision of Rejection after a response to the First Office Action without issuance of a Final Office Action. It is not certain that a patent application will receive at least two Office Actions. This is because if the grounds of rejection are not new (already asserted in a previous Office Action) or if the grounds of rejection are not due to amendments in response to the previous Office Action, the examiner can issue a Decision of Rejection.

When the examiner is not persuaded by the applicant’s response and considers that the same grounds for rejection can be maintained, the examiner will issue a Decision of Rejection. In the Decision of Rejection, the examiner explains why the rejection for the independent claim is maintained, and usually, the examiner does not designate allowable claims.

The deadline for responding to a Decision of Rejection is 4 months from the issue date of the Decision for applicants residing outside Japan, and it is 3 months from the issue date for applicants residing in Japan. These deadlines are not extendable.

In response to a Decision of Rejection, the applicant can submit a Notice of Appeal. A unique point in Japanese patent law is that the applicant can amend the specification, claims, and/or drawings simultaneously with submission of the Notice of Appeal. The applicant may submit an Appeal Brief after submission of the Notice of Appeal, but an Amendment must be submitted simultaneously with submission of the Notice of Appeal.

The applicant can also file a Divisional Application at this time.

For filing the Notice of Appeal, a Power of Attorney is necessary.

When responding to the Decision of Rejection, amendments should not introduce new matter that exceeds the disclosure of the application as filed. In addition, amendments to claims should not introduce a new claimed invention differing from the original claimed invention. Furthermore, acceptable amendments are limited to

i) canceling one or more existing claims,
ii) further limitation of one or more elements already stated in one or more existing claims (problems to be solved by the invention should be unchanged by the limitation),
iii) correction of errors, and
iv) clarification of unclear expression indicated in the Office Action.

If the applicant amends the specification, claims, and/or drawings simultaneously with submission of the Notice of Appeal, in general, the same examiner will review whether or not the grounds of rejection are overcome. If the examiner considers that the grounds of rejection are overcome, the examiner will issue a Decision of Grant. If the examiner still thinks that the application should be rejected, a board of three or five appeal examiners will decide whether or not the application should be rejected.

If the applicant does not submit an Amendment simultaneously with submission of the Notice of Appeal, a board of three or five appeal examiners will decide whether or not the application should be rejected.

If the applicant will not accept the decision by the appeal examiners, the applicant can file suit at the Intellectual Property High Court (a special branch of the Tokyo High Court) to overturn the appeal decision.

No. Maintenance fees (annuities) are paid only for granted patents.

A patent right becomes effective from the date of registration of the patent at the Japan Patent Office.

After issuance of the Decision of Grant, the applicant must pay patent fees for the first three years in one lump sum within 30 days from the date of issuance of the Decision of Grant. A patent right is registered after these patent fees for the first to the third year are paid.

The annual fees (maintenance fees) are to be paid annually starting with the fourth year from grant until expiration of the term of the patent. The patent fees for each year must be paid by the anniversary of the grant.

Article 187 of the Japan Patent Law stipulates that a patentee shall make an effort to place a patent mark on the patented product, products produced by the patented process, or packages thereof, indicating that the product or the process is patented. However, this is construed as only encouragement to do so, rather than an obligation. Even if a patentee does not place a patent mark on the patented products, etc., there is no penalty or disadvantage in the amount of compensation for damage.

The duration of a patent right expires after a period of 20 years from the filing date of the patent application (20 years from the international filing date for national phase entry of an International Application under the PCT).

An extension of the patent term by up to five years may be available for patents for pharmaceuticals and agricultural chemicals on request if requirements are fulfilled (e.g., marketing is delayed as a result of governmental approval requirements).

Japan does not have a procedure corresponding to the terminal disclaimer in the United States, or a system similar to the Patent Term Adjustment (PTA) resulting from delayed responses by the Office in prosecution in the United States.

No. There is no penalty even if a patented invention is not worked. However, Article 83 of the Japan Patent Law stipulates granting of a compulsory license when a patented invention is not sufficiently and continuously worked for 3 years or more in Japan.

In general, a patent application is published after 18 months from the filing date in Japan. The applicant may file a request for early publication, and in this case, the application is published earlier.

For national phase entry of an International Application written in a language other than Japanese, the Japanese translation is published after 30 months from the earlier of these two dates: the international filing date and the priority date (if applicable). In a case in which the International Publication (WO Publication) has already been published and a request for examination has already been filed, the Japanese translation is published after the request for examination.

In any case, publication may be delayed due to backlogs at the Japan Patent Office.

When the granted patent is registered at the Japan Patent Office, the patent is published in the patent gazette.

The Japan Patent Office does not inform the applicant or the agent of the fact of publication.