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

Q1Which language can be used in documents for filing to JPO ?

A1As a general rule, any document for filing to JPO has to be written in Japanese. However, when filing a patent application, the attached documents written in English are acceptable. That is, Description, Claims, Abstract and Drawings are allowed to be written in English. Even in that case, the patent application itself has to be written in Japanese. Moreover it is necessary to file Japanese translation within 14 months from the priority date. A patent application which non-Japanese documents are attached to is called "Foreign language document application". It should be noted that the term "foreign language" means only "English".

When you file a patent application to JPO shortly before the priority period of 12 months is over, Foreign language document application will be a useful option for you. Because translation time of 2 months is given to you.

Q2Is it necessary to submit a power of attorney to JPO?

A2A power of attorney isn't necessary upon filing of the patent application to JPO or entering into the national phase in Japan. Although the power of attorney is necessary upon demanding appeal or filing the notification of change of the applicant, the power of attorney isn't necessary in most applications.
Therefore it is recommended not to file the power of attorney upon filing of the patent application or entering into the national phase but to file it upon demanding appeal and so on.

Q3Please tell me the period during which a voluntary amendment is allowed.

A3The period during which a voluntary amendment is allowed is restricted as follows.

(1) It's always possible to amend before the First Office Action is received.

(2) It's possible to amend within 3 months of the date of mailing of the Office Action.

(3) If the decision of refusal was received, it's possible to amend upon filing the request of appeal. The request of appeal can be filed within 4 months after the date of mailing of the decision of refusal.

Q4How long is the examination period?

A4Usually the first office action will be sent within one year from filing the request for examination.

Average latency in 2013 : 14.1 months

Average latency in 2014 : 9.6 months

Average latency in 2015 : 9.5 months

(Japan Patent Office Annual Report 2016)

Q5Is there the way to shorten the examination period?

A5It's possible to shorten the examination period by utilizing the Patent Prosecution Highway (PPH). And it's also possible to shorten the examination period by utilizing the accelerated examination system unique to Japan.

If the exploitation of the invention was started, or if the corresponding foreign application was submitted to other than Japan, the accelerated examination system is available. In most cases, foreigner's patent application falls into the latter, so, the accelerated examination is available. If you hope to apply for the accelerated examination is submitted, you need to submit the brief search result about prior art and the comparative explanation with prior art found in the search.

If you utilize PPH system(see Japanese patent system), you need to limit claims to inventions judged to be patentable in the examination in other country than Japan. In contrast, if you utilize the accelerated examination system unique in Japan, you don't have to wait for the examination outcome in other country than Japan. Furthermore, you don't have to limit claims.

You can omit the brief search about prior art necessary for the accelerated examination unique to Japan by utilizing the international search report in the PCT international phase or the examination outcome in other country. Therefore if you hope to shorten the examination term, it's recommended to utilize the accelerated examination system unique to Japan.

Q6When the divisional application can be submitted by?

A6The period and the scope within which divisional application can be submitted are indicated as follows.

[A] It's possible to submit the divisional application within the range described in the description upon filing during following period regardless of the filing date of the patent application.

(1) Before the First Office Action is received. In addition, if the Office Action was received, within 3 months after the date of mailing of the Office Action.

(2) Where you submit a request for a trial against an examiner's decision of refusal and the divisional application is 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 within the range described in the description at that time during the period showed in following (3) and (4).

(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 annual fee for patent. Especially, note that it isn't possible to submit the divisional application if the allowance is received after the demand for appeal. You can extend said 30 days-period by 30 days by submitting the application for the elongation of the period to pay the patent fee. However, you need to file the application for the elongation by the original due date.

Q7Is it possible to extend the response period to the Office Action?

A7If the Office Action is received, it's necessary to submit the written response within 3 months. You can extend the response period by one month by submitting the application for the extension of the response period. You can extend the response period up to 3 times, so, you can extend the response period by up to 3 months. And, you can demand the appeal within 4 months after the receipt of the decision of refusal in the case of dissatisfaction with the decision of refusal. Said 4-months period can't be extended. And, note that you need to submit the amendment upon demand for appeal if you hope to amend claims.

Q8Is it possible to obtain a patent for the invention of the computer program?

A8JPO admits that invention of the computer program can be patented, and JPO treats it as the invention of a product. Therefore, it's possible to claim the invention of the computer program characterized by its plural functions achieved by the computer as the invention of the product.

Q9Does the patent applicant have a duty to disclosure prior art?

A9The patent applicant needn't submit IDS to JPO. However if the patent applicant know a prior art upon filing of the patent application, the patent applicant needs to list the information of the prior art in the description. If no prior art is listed in the description, the Examiner sometimes demands to list the information of the prior art upon the examination. In addition, patents are neither invalidated nor limited in enforcement of rights on the ground that the prior art isn't listed in the description. Furthermore, the applicant needn't submit all prior art that he or she knew upon filing of the patent application, and the applicant needn't submit the prior art that he or she noticed after filing of the patent application.

And, in case of the PCT application, it isn't necessary to list information of the prior art in the description, because the Examiner considers the relevant literature in the International Search Report.

Q10Can the invention publicly known be patented?

A10You can obtain the patent for the invention published before filing of the patent application by applying for the relief measure regarding the lack of the novelty. In this case, said invention is deemed to be novel. You need to meet following requirements to apply for this relief measure.

[A] Paris route

You need to meet following two requirements.

1. It's necessary to submit the patent application to Japan within 6 months of the date of publication, and to submit the application for said relief 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 doesn't meet the requirement to receive said relief 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 the written document within 30 days of the date of filing of patent application and the extension of the period isn't admitted.

[B] PCT route

You need to meet following two requirements.

1. It's necessary to submit the PCT application within 6 months of the date of publication.

2. You need to submit the application for said relief measure and the written document proving the fact that the claimed invention was written in the printed publication. If the request for examination is 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 period. The extention of the period isn't admitted.