1. Application in Japan
Flow from Application to Registration
Support for Resident Abroad
2. Application in foreign Countries
Application Based on Priority under the Paris Convention
3. Support Station
1. Application in Japan
Flow from application to registration
An applicant is required to file a patent application with the JPO in order to obtain a patent.
A flow from application to registration is as follows.
(1) Patent Application
An applicant is required to prepare in a prescribed manner and submit to the JPO an application including claim(s), specification, an abstract, and if necessary, drawing(s).
An applicant can also submit an application including documents written in English. In this case, the applicant must submit a Japanese translation of the document in English within a year and two months from the date of filing of the patent (priority date).
(2) Formality Examination
An application document submitted to the JPO will be examined to see whether it fulfills formal requirements.
(3) Publication of Unexamined Application
The JPO will publish the content of application after a year and six months from the date of filing of the application.
(4) Request for Examination
An examination is carried out when an applicant files a request for substantive examination within three years from the date of filing of the application.
(5) Substantive Examination
An examiner examines whether an application fulfills requirements such as novelty and inventive step, and whether or not there are any reasons for refusal.
(6) Notification of Reasons for Refusal
If the examiner finds reasons for refusal, a notification of reasons for refusal will be sent to the applicant.
(7) Submission of Written Argument/Amendment
An applicant who has received the notification of reasons for refusal will be given an opportunity to submit a written argument, or to submit an amendment to overcome the reasons for refusal if the applicant judges that the examiner’s judgment is appropriate.
(8) Decision to grant a Patent
If no reasons for refusal have been found by the examiner, or if the reasons for refusal have been eliminated, the examiner will grant a patent.
(9) Decision of Refusal
If the reasons for refusal cannot be eliminated by the written argument or amendment, a decision of refusal will be made.
(10) Appeal against Decision of Refusal
If the applicant is dissatisfied with the decision of refusal, the applicant can appeal against the decision of refusal. A collegial body of examiner will examine whether a patent should be granted to the application or not.
(11) Pretrial Examination
If the applicant makes an amendment to specification etc. at the same time as the appeal for a trial, the application is reexamined by the examiner before the trial. If the reasons for refusal cannot be eliminated, an examination will be carried out by a collegial body of examiners.
(12) Appeal Decision to Grant a Patent
If no reasons for refusal have been found as a result of the examination by the collegial body of the examiners, the collegial body makes a decision to grant a patent.
(13) Appeal Decision of Refusal
If it is judged that the appeal has no grounds as a result of the examination by the collegial body of the examiners, the collegial body makes a decision to reject the appeal and maintain the original decision (decision of refusal).
(14) Suit against Appeal Decision
An applicant who is dissatisfied with the appeal decision of refusal can appeal to the Intellectual Property High Court. If it is judged that the appeal is reasonable, the Intellectual Property High Court makes a decision to cancel the appeal decision of refusal, and the JPO starts an examination. If it is judged that the appeal has no grounds, the Intellectual Property High Court makes a decision to reject the appeal and maintain the appeal decision of refusal.
(15) Patent Fee Payment
The applicant is required to pay patent fee for the first three years after the decision to grant a patent or after the appeal decision to grant a patent.
(16) Registration and Issuance of Certificate
After the patent fee payment, a patent number is given to the invention, and a patent right will come into effect as it is entered in the Patent Register. In principle, the duration of a patent right is twenty years from the date of filing of the application.
In addition, a certificate will be sent to the applicant.
(17) Publication of Patent Gazette
A patent gazette which has the contents of the patent right will be published.
Even if an applicant has filed a request for examination, it takes time for a substantive examination to start. In addition, even if an applicant has made appeal against decision of refusal, it takes time for examination to start.
Average Period for Examination/Trial
The period from the date of request for examination (request for a trial) to the date when the first notice of an examination result is sent by the examiner (trial examiner). (JPO annual report)
|Trial against Decision of Refusal(months)
Accelerated Examination System
The use of the accelerated examination system makes it possible to shorten time required for examination as shown in the following table.
Average Period for Accelerated Examination/Trial
The period from the date of request for the accelerated examination to the date when the first notice of an examination result is sent by the examiner. In the case of trial, the period from the date of request for accelerated trial to the date when appeal decision is sent by the examiner. (JPO annual report)
|Trial against Decision of Refusal(months)
Super Accelerated Examination System
The JPO started a pilot program of the super accelerated examination system on October 2008.
Average time required for examination is approximately 20 days from the request for the super accelerated examination.
From October 1, 2009, the Super Accelerated Examination System will enlarge its target to Japanese National Phase Applications based on PCT international applications. (In this case, due to the internal procedures of the JPO, the average period for the issuance of the first examination result will be approximately two months.)
Since an applicant (attorney) can explain technical contents to an examiner, examination is carried out precisely, and therefore it can be expected that efficiency of examination be improved. In addition, the applicant can directly confirm an opinion of the examiner who has written the reasons for refusal.
Support for Resident Abroad
"HARAKENZO more" offer useful information to resident abroad who wish to obtain a patent in Japan (English).
Support for resident abroad
2. Application in Foreign Countries
A patent right is effective only in a country in which an applicant has obtained the patent right, but is not effective in foreign countries. If an applicant wishes to obtain a patent right also in foreign countries, the applicant is required to file applications with patent offices in the foreign countries.
(1) Direct Application
An applicant files an application directly with a patent office of a country in which the applicant wishes to obtain a patent right. For example, this is a case where an applicant has produced an invention in Japan, but the applicant wishes to obtain a patent right in USA and files an application in USA.
However, an applicant is required to prepare documents in a language prescribed in each country, and to follow a procedure prescribed in each country. This imposes a burden on the applicant in preparation of documents and translation cost.
(2) Application Based on Priority under the Paris Convention
An applicant can file an application to the second country based on priority claim which is effective for twelve months from the date of filing of application to the first country.
If the applicant claims priority under the Paris Convention, examination about novelty, inventive step etc. is made on the basis of the date of fling of the application to the first country. Even if the applicant makes the invention known to the public before the date of filing of the application to the second country before the date of filing of the application to the first country, the applicant does not suffer a loss.
(3) PCT Application
After filing of an international application, the application enters into the national phase in countries in which the applicant wishes to obtain a patent right, and the application is examined in accordance with an examination procedure of each country.
Since the PCT application enables filing to plural countries through one application, the PCT application is effective in a case there are many countries in which the applicant wishes to obtain a patent right. The applicant can also claim priority under the Paris Convention.
Patent Prosecution Highway
The Patent Prosecution Highway allows accelerated examination in the office of second filing, and allows a reduction in burden and improvement in quality of examination in the office of second filing since a result of prior art searching and an examination result in the office of first filing are utilized.
The use of an examination result in the office of first filing allows an earlier acquisition of a patent right in the office of second filing. In addition, less action between the applicant and the examiner leads to a reduction in cost.
3. Support Stations
"HARAKENZO more" have the following support stations in order to support acquisition and use of a patent right in Japan or in foreign countries.
USA support station
EPO / EUIPO Support Station
UK support station
Germany support station
France support station
China support station
Korea support station
Taiwan support station
Thailand Support Station
India Support Station
Indonesia Support Station