PROCEDURES



General Matters:


An applicant of any application filed with the Japanese Patent Office (JPO) must be an individual person or a legal entity.



Essential Information for the Filing of a New Patent Application



For entering a PCT application into the Japanese National Phase within 30 months from the priority date if claimed, or from the filing date if a priority right is not claimed:


Requisite documents for a PCT application:


For entering an application into the National Phase in Japan, we require the following documents:

(1) International Publication Document (i.e., WO xxxx/yyyyyy)
(2) Amendments under PCT Article 19 and/or 34
(3) International Preliminary Report on Patentability (IPER: Form PCT/IPEA/409)
(4) Notification of the Recording of a Change (Form PCT/IB/306), if applicable

Notes:


* A Japanese document describing the particulars for formal entry into the National Phase in Japan must be filed within 30 months from the priority date if claimed. Bibliographic data of the PCT application, such as the international application number, name(s) and address(es) of the inventor(s) and applicant(s), are required to prepare this document. If the particulars shown in the PCT International Gazette have not changed since the filing thereof, please forward a copy of the Gazette. If they have been changed, please inform us additionally of the new information.


* A requisite Japanese translation of the text of the PCT International Gazette, together with a Japanese translation of any Article 19 and/or 34 amendments which were filed in the International Phase, are to be filed together with the above document detailing the particulars. However, if the procedure of formal entry into the Japanese National Phase (i.e., the submission of the above document detailing the particulars) is taken within the two months before the final due date of 30 months, the requisite Japanese translations of the PCT International Gazette and any amendments under PCT Article 19 and/or 34 may be filed within a two-month grace period from the filing of the above document detailing the particulars.



For filing a Japanese Application under the Paris Convention within 12 months:


* A Japanese document describing the particulars for formally filing the patent application in Japan must be filed within 12 months from the priority date, together with the English specification, claims, abstract, and, if filed, drawings of the first application.


* After formally filing the Japanese patent application, the requisite Japanese translation of the specification claims, abstract and drawings of the basic priority application must be filed within a two-month grace period from the priority due date, i.e. one year and two months from the priority date .


*For filing of a patent application under the Paris Convention or a non-convention application, the following documents are required:


(1) specification

(2) claims

(3) abstract

(4) drawings (if filed)

(5) certified copy of the priority application under the Paris Convention (if a Paris Convention application) (Note that it is not necessary to file a certified copy of the priority application if a US, EPO or KR application priority right is claimed in Japan.)



Subsequent Procedures:

After filing a patent application through the PCT National Phase, or after filing a Paris Convention application or a non-convention application, substantial examination will be started upon the filing of a Request for Examination of the Japanese patent application. The official fee for requesting examination is computed on the basis of the number of claims maintained at the time of filing the Request for Examination.


We understand that all of the claims filed in the Japanese patent application are important. However, if the Japanese claims include redundant claims, we suggest deleting such redundant claims at the time of filing the Request for Examination in order to reduce the official fee.



Disclosure of Prior Art:


Recent changes in practice require that relevant prior art be disclosed when filing a patent application before the Japanese Patent Office. When preparing specifications to be filed in Japan, applicants should make sure to disclose related prior art.




Essential Information for the Filing of a New Trademark Application



The necessary information and documents for filing a trademark application under the Paris Convention are:

 (1) full name, address and nationality of applicant

 (2) specimen of the trademark

 (3) class(es)

 (4) goods or services to be designated

 (5) serial number of the priority application

 (6) filing date of the priority application

 (7) certified copy of the priority application


A trademark application under the Paris Convention must be filed within six months from the priority date.


A non-convention application for a trademark requires the information in above items (1) to (4).




Essential Information for the Filing of a New Design Application



The necessary information and documents for filing a design application under the Paris Convention are:

 (1) full name, address and nationality of applicant

 (2) name of the article (title of the invention)

 (3) description of the article (in cases in which it is difficult to determine the article of the application)

 (4) drawings or photographs of six views (at least), and, if possible, perspective view(s) and/or sectional view(s)    

 (5) serial number of the priority application

 (6) filing date of the priority application

 (7) certified copy of the priority application


The design application under the Paris Convention must be filed within six months from the priority date.


A non-convention application for a design requires the information in above items (1) to (4).


Partial designs allowable under Japanese Design Law:


Under the partial design system in Japan, one of portion of an article can be registered as a partial design. In the partial design system, the claimed design is depicted by solid lines in the drawings, and other portions of the article which form no part of the claimed design are illustrated by broken lines in the drawings.


Moreover, designs of operation screens on LCDs for operating DVD recorders, cellular phones, etc., and photo printer setup screens can be protected as partial designs in Japan.


Notes:


Section 5 of the JPO's Guide to Industrial Property stipulates that the drawings must describe one specific design using six views of the article including the front, rear, right side and left side views as well as the top and bottom plan views.


If possible, cross-sectional view(s) and/or perspective view(s) should be submitted in addition to the six views stated above, for sufficient and correct understanding of the design by the Examiner.


If there are discrepancies between the views, the design application will be rejected on the basis of the fact that the design is unclear due to such discrepancies.



Fees



Please contact us directly regarding fees.

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