PATENT LAW FIRM (JP) - JAPANESE PATENT & TRADEMARK ATTORNEYS - BENRISHI

1. Time limit for entry into national phase

In order to enter the national phase in Japan by the PCT route, it's necessary to submit the national document to Japan Patent Office within 30 months after the priority date. You need to list the international application number, names and addresses of all applicants, and, names and addresses of all inventors respectively on the national document.
Furthermore, if the national document was submitted to JPO within 30 months after the priority date, you need to submit Japanese translation of the description within 30 months after the priority date or within 2 months after the date of filing of the national document, whichever is later.

2. Priority period

If you hope to claim the priority right based on the patent application submitted in the first country, you need to submit patent application to JPO within 1 year after the filing date of the patent application in the first country. This period can't be extended.

3. Request for examination

You need to submit the request for examination with the request fee for examination in order to undergo the examination of the patent application.
In the PCT route, you need to request for examination within 3 years after the international filing date, and in the Paris route, you need to request for examination within 3 years after the filing date in Japan. Unless the request for examination was submitted within the period, the patent application will be deemed to be withdrawn. Then, there is no way to restore the application for which the request for examination was overdue. Furthermore, the period can't be extended. In the PCT route, it's necessary to request for examination within 6 months after the due date for the entry into national phase. So, we recommend requesting for examination at the same time as the entry into national phase in the PCT route. And unless we receive the contrary instruction, we request for examination immediately after the entry into the national phase.

4. Notification of Reasons for Refusal

When you receive the Notification of Reasons for Refusal, you need to submit the written response within 3 months. You can extend the response term by one month by applying for an extension of the response term within the original response term. You can extend the response term up to 3 times, so, you can extend the response term by up to 3 months.

5. Notice of Allowance

It's necessary to pay the annual fee for each year from the first to the third year as the patent fee within thirty-day period of the date of sending of the Notice of Allowance. You can extend the period by up to 30 days by submitting the application for the extension of the period to pay the patent fee. However, you need to submit the application for the extension by the original due date. Furthermore, you can pay the annual fee for the each year from the fourth year and subsequent years every year.

6. Decision of Rejection

If you hope to demand for trial, you need to submit the written demand for trial within 4 months after the date of sending of the Decision of Rejection. In that case, you need to submit the amendment at the time of submitting the written demand for trial. This period can't be extended.

7. Period during which an amendment can be voluntarily submitted

Amendments can be submitted within following periods.
(1) You can submit an amendment at any time before you receive the first Notification of Reasons for Refusal.
(2) You can submit amendment during the response period for the Notification of Reasons for Refusal. The response period is 3 months after the date of sending of the Notification of Reasons for Refusal.
(3) If you receive the Decision of Rejection, you can submit an amendment upon submitting the written appeal. You can submit the written appeal within 4 months after the date of sending the Decision of Rejection.

8. Period during which divisional application can be submitted

[A] You can submit divisional application during following period within the range described in the description upon filing patent application.
(1) Before you receive the first Notification of Reasons for Refusal. And, within 3 months of the date of sending the Notification of Reasons for Refusal.
(2) In case that request for a trial against an examiner's decision of refusal is submitted, the divisional application can be made upon the said request for the said trial.

[B] If the filing date of the patent application is on or after April 1, 2007, in addition to the period and the range showed in said [A], it's possible to submit divisional application during the period showed in following (3) and (4) within the range described in the description at that time.
(3) Within 3 months after the date of mailing of the first decision of refusal.
(4) Within 30 days after the receipt of the Allowance. However it isn't possible to submit the divisional application after the payment of the patent fee. Especially, note that it isn't possible to submit the divisional application if the allowance is issued after the demand for appeal. You can extend said 30 days-period by 30 days by submitting the application for the extension of the period to pay the patent fee. However, you need to file the application for the extension by the original due date.

9. Exceptional measure to lack of novelty of invention

If you apply for the exceptional measure to the lack of the novelty of the invention, the invention of the patent application will be deemed to be novel. You need to meet following requirements to apply for this exceptional measure.
[A] Paris route
You need to meet following two requirements.
1. It's necessary to submit the patent application in Japan within 6 months of the date of publication, and to submit the application for said exceptional measure at the time of filing of the patent application. Note that the patent application filed to Japan more than 6 months after the date of publication can't meet the requirement for said exceptional measure even if the priority under the Paris convention based on the foreign application filed within 6 months after the date of publication was claimed.
2. It's necessary to submit the written document proving the fact that the claimed invention was written in the printed publication. You need to submit said written document within 30 days after the date of filing of patent application and the extension of the period can't be admitted.

[B] PCT route
You need to meet following two requirements.
1. It's necessary to submit the PCT application within 6 months after the date of publication.
2. You need to submit the application for said exceptional measure and the written document proving the fact that the claimed invention was written in the printed publication. If the request for examination was submitted within 30 months after the priority date, you need to submit both documents within 30 days after the request of examination. If the request for examination isn't submitted within the 30-months period after the priority date, you need to submit both documents within 30 days after the 30-months period. The period for filing documents can't be extended.

10. Calendar about closing days of Japan Patent Office

If the due date for the procedure is the closing day of Japan Patent Office, the due date will be postponed until the first working day after the closing day. Closing days of Japan Patent Office are as follows. In addition, please check the calendar for our working day because we can't conduct the procedure on our closing day.