As one of the few developed countries in Asia, Japan has been a hot destination for domestic enterprises to apply for and lay out overseas patents in recent years. Therefore, learning and understanding Japan's patent application system plays an important role in better laying out patents in Japan and obtaining Japanese patent protection.
Similar to the types of patent applications in China, the types of patent applications in Japan also include inventions, utility models, and designs. In addition, Japanese invention patents are subject to substantive examination, and utility model patents are only subject to formal examination. However, different from China, Japanese design patents need to undergo substantive examination. That is, a design patent is required to be not only dissimilar to the designs known to the public before the filing date but also difficult to create.
The effective period of a Japanese invention patent is 20 years from the filing date, but for patents related to pharmaceuticals and pesticides, it can be extended to 25 years. The effective period of a Japanese utility model patent is 10 years from the filing date, and the effective period of a design patent is 25 years from the filing date.
Taking invention and utility model patents as examples, the following briefly introduces the routes and requirements for patent applications in Japan.
If domestic applicants want to apply for invention and utility model patents in Japan, the routes also include the Paris Convention route and the PCT route. There are certain differences between the two routes in terms of patent application documents and the entry deadlines.
When entering Japan through the PCT route, the Japanese translation can be submitted within 2 months after entering the national phase in Japan, and during the subsequent examination process, amendments can be made based on the original PCT application documents.
If entering Japan through the Paris Convention route, applicants can choose to submit the application directly in Chinese and then submit the Japanese translation within 4 months. They can also choose to submit the application in Japanese. Although the official fee for submitting the application in Chinese is slightly more expensive than that in Japanese, the difference in the official fee amount is small. Moreover, the basis for future patent amendments can be the Chinese text, while for the Japanese submission, the basis for amendments is the Japanese text. If there is a translation error, it will be impossible to correct it.
Therefore, if applicants enter Japan through the Paris Convention route, it is recommended to submit the application directly in Chinese to effectively avoid the risk of being unable to make amendments due to translation errors when entering directly in Japanese.
If entering Japan through the Paris Convention route, the deadline for entering Japan is within 12 months from the priority date. If entering Japan through the PCT route, the deadline for entry is within 30 months from the priority date.
But if the applicant misses the above deadlines, can the restoration of the priority be handled? The Japan Patent Office stipulates that starting from April 1, 2023, for applications that "unintentionally" miss the above deadlines, a relief route is provided, that is, the restoration fee can be paid within the specified time and the restoration procedures can be handled.
Specifically, for patent applications entering Japan through the Paris Convention route, if the above 12-month priority deadline is missed, the restoration procedures can be handled within 14 months from the earliest priority date.
For patent applications entering Japan through the PCT route, if the above 30-month deadline is missed, the deadline for handling the restoration procedures is within 1 month after the expiration of the 30-month period. However, if the applicant also applies for the deferred submission of the Japanese translation of the specification, the deadline for submitting the statement of reasons for the restoration request is within 1 month after the expiration of the deadline for submitting the Japanese translation of the specification. If a request for substantive examination is made during the application period, this 1 month is calculated from the date of the examination request.
In addition, for the reasons for handling the restoration procedures of the priority deadline, the condition of "unintentional" needs to be met. That is, in the statement of reasons for the restoration of the priority deadline, it should be stated that the applicant did not intentionally fail to file the application within the priority period and has fulfilled the obligation of "due care".
Since Japanese examiners have relatively strict review standards for the reasons of "unintentional" and it will lead to an increase in patent application fees, applicants are reminded that if they have a plan to apply for Japanese patents, they should try to handle the entry procedures in a timely manner within the specified deadlines.
If entering Japan through the PCT route, a request for substantive examination should be submitted within 3 years from the international filing date. If entering Japan through the Paris Convention route, a request for substantive examination should be submitted within 3 years from the filing date of the Japanese patent application, not calculated based on the priority date. If the request for substantive examination is not submitted within the time limit, the patent application is deemed to be abandoned, and it is almost impossible to restore it after the expiration. Therefore, it is necessary to strictly monitor the deadline for filing a request for substantive examination of a Japanese invention patent, or it is recommended to directly request substantive examination when submitting the patent application.
It should be particularly noted that in Japan, anyone can file a request for substantive examination of an invention patent application, not limited to the applicant, and the fee for the request for substantive examination is borne by the requester.
The number of OAs for Japanese invention patents is relatively small, generally only 1-2 times. Therefore, when responding to OAs, unlike in China, if the applicant's amendment to the patent application documents does not completely overcome the defects pointed out by the examiner in the OA, even if the patent itself has a certain prospect of authorization, the examiner can directly reject the patent application.
Therefore, when responding to OAs for Japanese patents, on the one hand, if not necessary, the response strategy of gradually narrowing the scope of protection of the claims to pursue an overly broad scope of patent protection should be avoided. On the other hand, all the defects pointed out by the examiner should be overcome at one time as much as possible. Otherwise, the examiner may directly reject the patent application. Even if the patent authorization can be re-obtained through review and other channels later, this will not only lead to an extension of the examination period but also bring additional response or review fees to the applicant.
At the same time, Japanese patent examiners are relatively strict in examining the clarity of the technical solutions in the patent claims and whether they can be fully supported by the specification. If the examiner points out this defect in the examination opinion, it is recommended to make corresponding amendments to the claims according to the examination opinion.
If the applicant is not sure whether the amendment to the patent application documents meets the examiner's requirements when responding to the OA, they can consider asking a Japanese patent attorney to have a meeting (in person, by phone, or by fax) with the examiner, especially if the patent has a prospect of authorization according to the current OA opinion. Then, the patent application documents can be amended based on the results of the communication with the examiner to avoid the examiner issuing another examination opinion or directly rejecting the patent application as much as possible. Although having a meeting with the examiner will incur certain fees, this fee is much lower than the fees generated by responding to an OA again or filing a patent review.
In addition, in Japan, proactive amendments can be submitted before receiving the first OA. Therefore, in order to reduce the number of issued notices, the applicant can also consider proactively amending the claims based on the international search report or the examination results of other countries.
It should also be noted that Japanese patent examiners have relatively looser criteria and scales for evaluating inventiveness compared to Chinese examiners, and the success rate of appeal against the rejection of Japanese invention patents has been relatively high in recent years. Therefore, after a Japanese patent application is rejected, it is very worthwhile for the applicant to try to further strive for patent authorization through review.
Similar to China, Japanese utility model patents are only subject to formal examination. Therefore, they have advantages such as a short authorization period, simple procedures, and low application costs, and can achieve the early realization of rights. However, the stability of utility model patent rights is relatively poor, and the protection period is much shorter than that of invention patents. At the same time, when exercising rights for Japanese utility model patents subsequently, it is required to provide a patent right evaluation report, and there are risks for the patentee to exercise rights. If the patent is invalidated, the patentee may bear the liability for compensation. Therefore, the number of applications for Japanese utility model patents is decreasing year by year.
However, different from China, there can be mutual conversion between Japanese invention patents and utility model patent types. Specifically, a Japanese utility model patent can obtain a utility model patent right upon registration, and it can be converted into an invention patent application within 3 years from the patent filing date, and a request for substantive examination of the patent can be made. Similarly, as long as there is no authorization or termination of the examination, a Japanese invention patent application can also be changed into a utility model patent within 9 years and 6 months.
Therefore, applicants can flexibly use Japan's patent type conversion system according to actual needs to fully coordinate the requirements for the exercise date of patent rights, the stability of patent rights, the protection period, etc.
After the authorization of Japanese invention and utility model patents, a request for revision trial can be filed to make a reductive amendment to the claims to improve the stability of the patent rights. The request for revision trial is limited to the following situations: narrowing the scope of protection of the claims; correcting errors or clerical mistakes; changing ambiguous expressions; changing the original citation of a certain claim to non-citation.
Among them, there is no limit to the number of requests for revision trial of Japanese invention patents, while a utility model patent can only undergo one reductive revision. In addition, a request for patent revision trial cannot be made during the patent invalidation declaration procedure.
Similar to Chinese patents, Japanese patents also have a grace period for non-loss of novelty during the novelty examination. That is, within 6 months before the actual filing date, if the patent solution is publicly disclosed for several specified specific reasons, the applicant still has the opportunity to submit a patent application within the grace period and retain the novelty.
However, different from China, in addition to the above grace period for non-loss of novelty, Japanese design patents also have an exception system for non-loss of novelty. That is, within 1 year before the patent filing date, the public disclosure acts made by the applicant/designer themselves at exhibitions, in newspapers, on websites, etc. will not lead to the loss of novelty of the design patent, but the applicant needs to submit a list of all public disclosure acts.
Fully understanding the differences between Japan's patent application and examination system and that of China helps applicants choose appropriate application routes, application timings, the language type of the entry text, etc., flexibly use various patent systems in Japan, such as the conversion system between invention and utility model types, the request system for revision trial, the exception system for non-loss of novelty of designs, etc., and formulate appropriate OA response strategies. This can help better obtain Japanese patent authorization and protection, shorten the patent examination period, and save patent application fees.
Nanjing
Suzhou
Changzhou