FAQ

Q.: Patent
Q.: Entry of an application into a national phase in Japan
Q.: Utility Model
Q.: Design
Q.: Trademark

Patent

Q.What is the required document for filing a patent application in Japan?: A.; Cf. the Japanese Patent Act, Article 36
(1) A person requesting the grant of a patent shall submit an application stating the following:
　(i) the name and domicile or residence of the applicant(s) for the patent; and
　(ii) the name and domicile or residence of the inventor(s).
(2)The description, scope of claims, drawings (where required), and abstract

Q. Does the Power of Attorney and Deed of Assignment need to be filed　at the time of filing?: A.; No.

Q. What is the deadline for submitting a certified copy of the priority document?: A.; Cf. the Japanese Patent Act, Article 43(2)
Within one year and four months from the first filing date. (except for divisional/converted applications)

Q. Must a Japanese translation of the priority document be submitted to the Japanese Patent Office?: A.; No.

Q. How should priorities be claimed?: A.; Cf. the Japanese Patent Act, Article 43
(1) Submitting a certificate showing the first filing date.
(2) Submitting certified copies of those equivalent to the description, scope of claims for patent or utility model registration and drawings submitted at the time of the filing of the application, within one year and four months from the first filing date.

Q. Can the specification be filed with the Japanese Patent Office in the original filing language first in order to secure an early filing date?: A.; Yes. Cf. the Japanese Patent Act, Article 36-2(2)
Within one year and two months from
(1) the filing date of the patent application together with the required submission to the JPO;
(2) the priority date (if a priority is claimed)

Q. Is the substantive examination of a Japanese patent application for invention automatically initiated by the examiner?: A.; No, Cf. the Japanese Patent Act, Article 48-3
An examination will be carried out only for the application for which the applicant or a third party has filed a request for examination and paid the examination fees within three years from the filing date.

Q. Can the deadline for paying the registration fee (including the 1st-3rd annuity) be extended?: A.; Yes. Cf. the Japanese Patent Act, Article 108
(1) The patent fees for each year from the first to the third year shall be paid in a lump sum within 30 days from the mailing date of a certified copy of the examiner's decision. However, the time limit may be extended by a request of a person who is to pay the patent fees, by a period not exceeding 30 days.

Q. Is it possible to amend a patent specification after the registration fee has been paid?: A.; No. Cf. the Japanese Patent Act, Article 17-2
An applicant for a patent may amend the description, scope of claims, or drawings attached to the application, before the mailing date of a certified copy of the examiner's decision notifying that a patent is to be granted.

Q. How long is the term for protection of patent?: A.; 20 years.

Entry of an application into a national phase in Japan

Q. What is the deadline for furnishing a Japanese translation of the PCT application after entry of an application into a national phase in Japan?: A.; cf. Japanese Patent Act Article 184-4(1)
Within the period from the priority date to two years and six months ("time limit for the submission of national documents") therefrom; provided, however, that the applicant of a patent application in foreign language who has submitted the document during the period from two months before the expiration of the Time Limit for the Submission of National Documents to the expiry date thereof may submit the said translations within two months from the date of submission of the said document.

Q. How can the international application be processed or examined prior to the expiration of the applicable time limit under Article 22?: A.; Notwithstanding the provisions of Art. 23 par. (1), the Japanese Patent Office may process or examine the international application at any time on the express request of the applicant by filing a request for examination.

Q. What is the deadline for the request of substantive examination?: A.; Within three years from the international filing date.

Utility Model

Q. What is the difference of patent applications and utility model applications?

The main difference between them is as follows;
(1) On filing utility model applications, the attachment of drawings is compulsory.
(2) In addition to the application fee, registration fee for the first three years must be paid at the time of filing.
(3) There is no substantive examination. The examination will check simply the basic requirements.
(4) The durations of rights are different, 20 years for patent, 10 years for utility model patent.

The Japanese patent system has been established to extend protection to inventions involving highly advanced and sophisticated technologies. To protect simple devices, on the other hand, the utility model system has been established for devices.

The Patent Act defines that "invention in this Act means the highly advanced creation of technical ideas utilizing the laws of nature" while the Utility Model Act defines a device as "a creation of technical ideas by which a law of nature is utilized." The words "inventions" and "devices" are used for ideas involving different levels of creativity.

The Utility Model Act extends protection only to "devices relating to the shape or construction of articles or combination of articles." Any methods such as a manufacturing process are not covered by the Utility Model Act.

Q. What is the required document for filing a utility model application in Japan?: A.; Cf. the Japanese Utility Model Act, Article 5
(1) A person requesting the grant of a utility model registration shall submit an application stating the following:
　(i) the name and domicile or residence of the applicant(s) for utility model
registration; and
　(ii) the name and domicile or residence of the creator(s) of the device.
(2) The description, scope of claims, drawing(s) and abstract shall be attached to the application.

Q. What is a Request for Utility Model Technology Assessment?: A.; Report of Utility Model Technical Opinion, prepared by an examiner on the basis of a search of prior art documents, enables an objective judgment to be made about the validity of registered utility model right. It can be requested by the applicant or a third party with the payment of the request fees at any time after the filing of the application. A holder of a utility model right may not exercise his/her utility model right against an Infringer unless he/she has given warning in the Report of Utility Model Technical Opinion regarding the registered utility model.

Q. Is it possible that a converted application based on utility model application / registration into patent application can be made?: A.; Yes, it is possible. Cf. the Japanese Patent Act, Article 46-2
Except for the following cases, a holder of utility model right may file a patent application based on his / her own utility model application / registration;
(1) where 3 years have lapsed from the date of filing of an application for the utility model registration;
(2) where a petition requesting the examiner's utility model technical opinion as to the registerability of the utility model claimed in the utility model registration application or of the utility model registration is filed.

Q. How long is the term for protection of utility model patent?: A.; 10 years.

Design

Q. What is the required document for filing a design application in Japan?: A.; Cf. the Japanese Design Act, Article 6
(1) A person requesting a design registration shall submit an application stating the following matters and drawing depicting the design for which registration is requested:
　(i) the name, and domicile or residence of the applicant for the design
　(ii) the name and domicile or residence of the creator of the design; and
　(iii) the article to the design.

Q. Is it necessary to file a request for the examination of design patent applications?: A.; No, the examination will be automatically carried out after the formality check.

Q. Is it possible that a converted application based on design application into patent application can be made?: A.; Yes, it is possible. Cf. the Japanese Patent Act, Article 46.
An applicant of a design registration may convert the application into a patent application; provided, however, that this shall not apply after the expiration of 30 days from the date the certified copy of the examiner's initial decision to the effect that the application for a design registration is to be refused has been served or after the expiration of 3 years from the date of filing of the design registration application.

Q. Is annual fee required ?: A.; Yes. Cf. the Japanese Design Act, Article 42.
(1) A person obtaining the registration establishing a design right shall pay registration fees for each year to the expiration of the duration.

Q. How long is the term of protection of design patent?: A.; 20 years.

Trademark

Q. Can trademarks be registered in Japan?: A.; Yes, as well as service marks including retail services and wholesale services, collective marks, defensive marks, three-dimensional marks and colored marks.

Q. Can an individual person register a mark in Japan?: A.; Yes.

Q. What is the required document for filing a trademark application in Japan?: A.; Cf. the Japanese Trademark Act, Article 5
(1) Any person who desires to register a trademark shall submit an application accompanied by the required documents.The application shall state the following matters:
　(i)the name and the domicile or residence of the applicant for trademark registration;
　(ii)the trademark for which registration is sought; and
　(iii)the designated goods or designated services and the class of goods or services.
(2)Where a person desires to register a trademark consisting of a three-dimensional shape, the application shall contain a statement indicating thereof.
(3)Where a person desires to register a trademark consisting solely of characters ("standard characters"), the application shall contain a statement indicating thereof.

Q. Is a home registration required?: A.; No.

Q. Can a registered mark be renewed?: A.; Yes, every 10 years.

Q. Is it compulsory to file a Declaration of Use?: A.; No. Cf. the Examination Guidelines for Trademarks in relation to Principal Paragraph of Article 3(1) and the Japanese Trademark Act, Article 50.
However,
(1) where there is a doubt as to the use or intention of use of a trademark in regard to the designated goods or designated services, since the designation of goods or services ranges widely in one classification, a reason for refusal will be notified. Furthermore,
(2) where a registered trademark has not been used in Japan for three consecutive years or longer by the holder of trademark right, any person may file a request for a trial for rescission of such trademark registration in connection with the relevant designated goods or designated services.

Q. Will publication of a mark for opposition take place before or after registration?: A.; Cf. the Japanese Trademark Act, Article 43-2
After registration.

Q. How long is a trademark published in the Trademark Gazette for opposition purposes?: A.; Within two months. Any person may file an opposition to registration from the date of publication of the bulletin containing the trademark.