FAQ
Q. Must a Japanese patent application be filed in the Japanese language?
A. The Japan Patent Office also accepts applications filed in English, but requires that a Japanese translation be filed within 14 months from the priority date, or within 14 months from the filing date of the Japanese application if no priority is claimed. The official fee for filing an application in English is slightly higher, 26,000 yen, as compared to 15,000 yen for an application filed in Japanese. Please note that English is the only other language accepted, and only for patent applications.
Q. When is the deadline for entering a PCT application into the national phase in Japan?
A. A request for entering the national phase in Japan must be filed within 30 months from the priority date, or within 30 months from the international filing date if the international application does not claim priority to any other applications.
Q. When is the deadline for filing a Japanese translation of a PCT international application filed in a language other than Japanese?
A. The most common procedure is to file the Japanese translation along with the national phase entry request anytime within 30 months from the priority date. However, if the national phase entry request is filed with less than two months before the applicable 30 month deadline, the Japanese translation of the specification, claims, drawings, and abstract may be filed within two months from the date of submission of the national phase entry request.
Q. Is it possible to file a priority document after entry into the Japanese national phase?
A. If the priority document was accepted during the international phase, there is no need to file an additional document directly with the JPO. Any other priority documents may be filed up to two months past the deadline for submitting the national phase entry request, that is, within 32 months from the earliest claimed priority date.
Q. Are there options for filing an application claiming priority under the Paris Convention after the priority deadline has passed?
A. Under most circumstances, this is not possible. However, the JPO will accept a late application if there are special extenuating circumstances which prevented the applicant from filing the Japanese application within the allowed period, but only if the applicant acts within two months past the original deadline. Extenuating circumstances as understood by the JPO may include the likes of natural disasters, kidnapping, a coma-inducing illness, being stranded on a dessert island, or other circumstances which could not be foreseen and which absolutely prevent the applicant from communicating with their agent in Japan. Simple failure to track the deadline or errors by the applicant’s representative would not be considered sufficiently extenuating circumstances.
Q. When is the deadline for claiming Paris Convention priority for a patent application directly filed in Japan?
A. To claim Paris Convention priority, the applicant must file documentation claiming priority and identifying the earliest priority application within 16 months from the priority date or within four months from the filing date of the Japanese application, whichever occurs later.
Q. When will examination of a patent application begin?
A. Examination of a patent application will not begin until examination is requested by the applicant or a third party. A Request for Examination must be filed within 3 years from the effective filing date, which is the filing date of the Japanese application for a direct application and the international filing date for PCT national phase applications. This deadline is strictly enforced; if a Request for Examination is not filed on or before the required date, the application will be deemed withdrawn.
Q. Is it possible to revive an application deemed withdrawn due to failure to file a Request for Examination?
A. It is almost impossible to revive an application once deemed withdrawn. However, the JPO does provide means for reviving an application if there are special extenuating circumstances which prevented the applicant from requesting examination by the statutory deadline, but only if the applicant promptly acts within two months of resolution of the circumstances, and no more than one year past the original deadline. Please see the above for an explanation of extenuating circumstances.
Q. What happens after examination is requested?
A. This flowchart outlines examination procedures after commencement of examination. In most cases, a first Office Action can generally be expected within 9 to 14 months after examination is requested, although this will, of course, vary according to field of technology and current JPO backlog.
Q. Is there any way to accelerate examination?
A. There are several options for requesting accelerated application, including requesting examination under a Patent Prosecution Highway (PPH) program and requesting either accelerated or super-accelerated examination by the JPO. Criteria vary, but any application also filed in at least one country other than Japan will be eligible for at least one track. PPH and Super-Accelerated Examination requests must be filed prior to the issuance of a first substantial Office Action.
