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

The required documents differ according to the the filing manner.

The following documents are required for PCT route filing. PCT route filing is the manner to enter an international patent application into the domestic phase in Japan.

These documents prepared in English or Japanese need to be sent to us.

1. Information sheet

The information sheet is required to specify at least the following information.

(a) Reference number in your firm

(b) Application number and filing date of the international application

(c) Title of invention

(d) Names and addresses of all applicants

If the language of names and addresses is neither Japanese nor English, it is desirable to write not only the spellings but also the pronunciations thereof. Especially, the pronunciations are desirable to be written by Japanese Katakana, if possible.

(e) Names and addresses of all inventors

Same as the above (d).

(f) Priority information

If the international application has claimed the priority right, the priority information is required. The priority information needs to include at least the date, number and country of the earlier application which serves as the basis of the priority right. If claiming more than one priority right, information concerning all priority rights is required.

2. Front-page of international publication

It is required to send us at least a front-page of the international publication for the application. We can download whole of the application documents from WIPO website by referring to the information sheet. However, the front-page provided from you is useful to identify the international patent application more certainly.

3. Amendment under Article 19 or 34

After you have made non-Japanese amendment under Article 19 or Article 34 in the international phase, if you fail to file a translation thereof to the JPO within 30 months from the priority date, the amendment shall be deemed not to be filed. Furthermore, when you file the translation, it is required to file a brief explanation showing the basis for the amendment in the application documents at the international filing date.

Therefore, if you hope to reflect the amendment on the domestic phase, it is required to send us a copy of the amendment and the brief explanation concerning the basis for the amendment.

In contrast, even if you have made amendment under Article 19 or Article 34, if you don't hope to reflect it on the domestic phase, it is unnecessary to send it to us.

4. Others

(a) Confirmation letter

If we receive a filing request from the first-time customer, we will send a confirmation letter to the customer. If you receive our confirmation letter, your reply to the letter is required.

(b) Clear drawings

As mentioned above, the application documents are not required. However, if you have clear drawings more than the international publication, it is desirable to provide them to us. Especially, it is more desirable, if that is an electronic version.

(c) Power of attorney

A power of attorney isn't required at entry into the domestic phase. In Japan, a power of attorney is required only at the particular procedures. Therefore, a power of attorney isn't required in almost all cases, so that we don't recommend early filing.

(d) Instruction of request for examination

Your instruction to file the request for examination is not required. The request for examination is due to be filed within three years from the priority date. That is, in the case of the international application, usually it should be filed within six months from domestic phase entry. Therefore, not receiving a contrary instruction from you, we request the substantive examination shortly after domestic phase entry.

The following documents are required for Paris convention route filing. Paris convention route filing is the manner to file a patent application claiming one or more priorities under the Paris convention. These documents prepared in English or Japanese need to be sent to us.

1. Information sheet

The information sheet is required to specify at least the following information.

(a) Reference number in your firm

(b) Title of invention

(c) Names and addresses of all applicants

If the language of names and addresses is neither Japanese nor English, it is desirable to write not only the spellings but also the pronunciations thereof. Especially, the pronunciations are desirable to be written by Japanese Katakana, if possible.

(d) Names and addresses of all inventors

Same as the above (c).

(e) Priority information

when claiming the priority right, the priority information is required. The priority information needs to include at least the date, number and country of the earlier application which serves as the basis of the priority right. When claiming more than one priority right, the above information concerning all priority rights is required.

(f) Instruction of request for examination

If you hope to request the substantive examination immediately after filing the application, it is required to include the instruction in the information sheet. In absence of your instruction, we don't request the examination early. In such case, we will remind you to request the examination a few months before the due date.

2. Application documents

A copy of the application documents with specification, claims, abstract and any drawings is required. It is desirable to provide us an electronic version of the documents, if possible.

It is noted that if the language is neither Japanese nor English, translation to Japanese should be finished before filing the application. Therefore, if the language is neither Japanese nor English, you need to contact us at the latest by one month before the expiration of the priority period.

3. Priority document

It is required to file the certified priority document within 16 months from the priority date. That is, the priority document is not required at filing the application.

DAS

You may use the WIPO Digital Document Access Service (DAS) instead of transmitting the certificated priority document. If the office of first filing which provides the priority document participates in the DAS program, there is a possibility to use DAS. when you use DAS, it is required to inform us of the access code provided from the office of first filing.

PDX

Furthermore, you may use the Electronic Priority Document Exchange (PDX). If the office of first filing which provides the priority document participates in the PDX program, there is a possibility to use PDX. JP, US, KR and EP participates in the PDX program in 2013.

4. Others

(a) Confirmation letter

If we receive a filing request from the first-time customer, we will send a confirmation letter to the customer. If you receive our confirmation letter, your reply to the letter is required.

(b) Power of attorney

A power of attorney isn't required at filing application. In Japan, a power of attorney is required only at the particular procedures. Therefore, a power of attorney isn't required in almost all cases, so that we don't recommend early filing.

When you file a patent application not claiming the priority, the required documents are same as the above case of Paris convention route filing except for the priority document.

It is possible for us to respond to the Office Action through HAGUE route. In this case, please submit the following information.

(a) Reference number in your firm

(b) The international registration number

(c) Copy of Provisional Refusal

The following documents are required for Paris convention route filing. Paris convention route filing is the manner to file a design patent application claiming one or more priorities under the Paris convention. These documents prepared in English or Japanese need to be sent to us.

1. Information sheet

The information sheet is required to specify at least the following information.

(a) Reference number in your firm

(b) Product of design

(c) Names and addresses of all applicants

If the language of names and addresses is neither Japanese nor English, it is desirable to write not only the spellings but also the pronunciations thereof. Especially, the pronunciations are desirable to be written by Japanese Katakana, if possible.

(d) Names and addresses of all creators

Same as the above (c).

(e) Priority information

when claiming the priority right, the priority information is required. The priority information needs to include at least the date, number and country of the earlier application which serves as the basis of the priority right. When claiming more than one priority right, the above information concerning all priority rights is required.

2. Application documents

A copy of the application documents with description and any drawings is required. It is desirable to provide us an electronic version of the documents, if possible.

It is noted that if the language is neither Japanese nor English, translation to Japanese should be finished before filing the application. Therefore, if the language is neither Japanese nor English, you need to contact us at the latest by one month before the expiration of the priority period.

3. Priority document

It is required to file the certified priority document within 3 months from the priority date.

4. Others

(a) Confirmation letter

If we receive a filing request from the first-time customer, we will send a confirmation letter to the customer. If you receive our confirmation letter, your reply to the letter is required.

(b) Power of attorney

A power of attorney isn't required at filing application. In Japan, a power of attorney is required only at the particular procedures. Therefore, a power of attorney isn't required in almost all cases, so that we don't recommend early filing.

When you file a design patent application not claiming the priority, the required documents are same as the above case of Paris convention route filing except for the priority document.

It is possible for us to respond to the Office Action through MADRID route. In this case, please submit the following information.

(a) Reference number in your firm

(b) The international registration number

(c) Copy of Provisional Refusal

The following documents are required for Paris convention route filing. Paris convention route filing is the manner to file a trademark application claiming one or more priorities under the Paris convention. These documents prepared in English or Japanese need to be sent to us.

1. Information sheet

The information sheet is required to specify at least the following information.

(a) Reference number in your firm

(b) Names and addresses of all applicants

If the language of names and addresses is neither Japanese nor English, it is desirable to write not only the spellings but also the pronunciations thereof. Especially, the pronunciations are desirable to be written by Japanese Katakana, if possible.

(c) Priority information

when claiming the priority right, the priority information is required. The priority information needs to include at least the date, number and country of the earlier application which serves as the basis of the priority right. When claiming more than one priority right, the above information concerning all priority rights is required.

2. Application documents

A copy of the application documents with trademark and designation of goods/services is required. It is desirable to provide us an electronic version of the documents, if possible.

It is noted that if the language is neither Japanese nor English, translation to Japanese should be finished before filing the application. Therefore, if the language is neither Japanese nor English, you need to contact us at the latest by one month before the expiration of the priority period.

3. Priority document

It is required to file the certified priority document within 3 months from the priority date.

4. Others

(a) Confirmation letter

If we receive a filing request from the first-time customer, we will send a confirmation letter to the customer. If you receive our confirmation letter, your reply to the letter is required.

(b) Power of attorney

A power of attorney isn't required at filing application. In Japan, a power of attorney is required only at the particular procedures. Therefore, a power of attorney isn't required in almost all cases, so that we don't recommend early filing.

When you file a trademark application not claiming the priority, the required documents are same as the above case of Paris convention route filing except for the priority document.