In an earlier article, we explained what can be patented in Japan. In this article, we would like to explain the process of obtaining a patent in Japan.

1. Submission of Patent Application

First, you need to file an application with the Japanese patent office. If you already filed a PCT application with the WIPO a formal request to enter the national phase in Japan is sufficient at first. A translation of the specification can be filed later. The deadline for PCT applications is 30 months from the priority date.

Similarly, for applications claiming the Paris convention priority you can file the patent in a foreign language first and submit the translation later. The deadline for Paris convention applications is one year from the priority date.

2. Filing a Japanese Translation of the Patent Application

For a PCT application, the Japanese translation must be submitted within two months of the filing of the request to enter the national phase.

For a Paris convention application, the Japanese translation must be filed within one year and four months of the priority date. If you would like to know more about patent translation and its special characteristics you can check this blog article.

3. Formal Examination and Publication

After submission, the patent application undergoes a formal examination and will be published in the Japanese Patent Gazette 18 months after filing.

4. Request for Substantive Examination of the Patent Application

A substantive examination of the patent application is not carried out automatically. In order to start with the examination, a request for examination needs to be filed. The request can be filed together with the patent application or later. The deadline for filing a request for examination is three years from the international filing date for PCT applications or three years from the Japanese filing date for Paris Convention applications. When no request is filed the application will be deemed withdrawn.

5. Result of the Substantive Examination

During the substantive examination, a patent examiner will check whether the application fulfils the requirements for being patented. If it does a notification of grant will be issued. If there are reasons for refusal these will be notified to the applicant in an office action. According to the JPO annual report for 2019 in the fiscal year 2017, the average time it took for the first office action to be issued was 9.3 months.

The applicant now has the chance to reply to the office action by amending the application and/or submitting a written statement. If the reasons for refusal have been eliminated the patent proceeds to grant. Otherwise, additional office actions or a final decision of refusal can be issued. All notifications of the Japanese patent office are issued in Japanese only and replies have to be filed in Japanese as well.

6. Appeal against the Decision of Refusal

If the applicant would like to continue with the application after a decision of refusal was issued an appeal against the decision of refusal can be filed. After that, the application will be examined again by a body of three or five appeal examiners.

7. Registration and Publication

When a decision of grant was issued the applicant must pay the patent fee to successfully register the patent. After payment, the patent right will come into effect and a patent number will be assigned. A paper certificate will be issued and send out to applicant as well. Later the patent will be published in the Japanese Patent Gazette.

We hope you found this article helpful. If you are currently in the process of filing a patent in Japan and require a translation of your patent application or notices from the Japanese patent office, we would be glad to help you. Our experienced patent translators can provide accurate translation according to the requirements of the Japanese patent office in a variety of specialized technical fields. Please contact us for a free quote.

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