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The information
presented here is neither legal advice nor a substitute for
obtaining legal advice from a
licensed attorney.
This very brief overview answers some basic questions,
including:
Who
may file?
Anyone who is a resident of a country that grants reciprocal
rights for Japanese citizens;,and almost all countries grant
these rights. People who are not domiciled or resident in
Japan, however, must be represented by a Japanese resident.
In practical terms, this means a Japanese patent attorney.
What
may be filed for?
For an invention to be patentable in Japan, it must meet the
following requirements.
Industrial applicability
The invention must have an industrial application. This rules
out surgical techniques and medical diagnostic techniques.
Utilization of a law of nature
The invention must utilize a law of nature. This requirement,
which is specific to Japan, rules out mathematical formulae,
teaching methods, methods of playing games, etc. Before January
10, 2001, this ruled out computer software per se. New examination
guidelines allow for patenting of some computer programs.
Novelty
Inventions that were publicly known or worked in Japan prior
to the filing date cannot be patented. If an invention is
described in a publication anywhere in the world, it is considered
publicly known in Japan. If the publication in question is
a patent application, the filing date is used as the date
on which the invention was made public. However, as Japan
is a party to the Paris Convention, residents of other member
countries may file patents in Japan up to one year after the
filing date in their own country, while retaining their claim
to novelty.
Certain exceptions are made for public exhibition and scientific
publications, where these have been approved by the JPO for
such purposes, and for unauthorized disclosure by third parties.
In such cases, the application must be filed within six months
of public disclosure.
NB: In all cases, rights are granted on a first-to-file
basis. This is different from the US system, under which rights
are granted on a first-to-invent basis.
Inventive step
The invention cannot be something that could easily be devised
by a person of ordinary skill in the matter. The inventiveness
of the step is usually determined by comparison of the invention
with "prior art", that is to say, existing technology.
Public disruption
Patents cannot be granted to inventions which contravene public
order, morality, or public health.
In
what languages can patents be filed?
The specification, abstract, and drawings
of a patent may be filed in either Japanese or English. In
all cases, however, the application itself must be made in
Japanese. A Japanese translation of the specification, abstract,
and drawings must be provided within two months of the filing
date. Regardless of the language the patent was filed in,
evaluation and judgment are based on the Japanese language
version of the patent.
Any mistakes in the Japanese translation of a patent filed
in English may be corrected at any time before the expiration
of the response period that follows the first official action
resulting from substantive examination. Translation mistakes
that do not substantially expand the scope of the claims may
be corrected at any time.
How
it works
If the applicant does not live in Japan,
they must be represented by a patent attorney who is resident
or domiciled in Japan. Many
Japanese law firms offer
this service.
Several claims may be made for one invention, as long as these
claims are closely related (such as a product and a method
of producing the same). The specification should include:
the field of industrial application, prior art, problems to
be solved by the invention, action of the invention, and examples.
Your patent attorney should advise you as to the specific
format to be used.
Eighteen months after filing, the patent application will
be published in the Patent Gazette. Published, unexamined
applications are referred to as "A publications"
or "kokai".
The application will not undergo substantive examination (that
is to say, the claims will neither be allowed or rejected)
unless a separate request for examination is made. This request
may be made by anyone, including third parties, at any time
within seven years from the filing date. If no request is
made within seven years, the application is considered to
be withdrawn.
A wait of three years or more between a request for examination
and granting of a patent is not uncommon. It is, however,
possible to apply for preferential or accelerated examination
in cases where there is a clear legal interest.
If the patent is rejected, it is possible to respond to the
reasons for rejection and request a reexamination. It is also
possible to appeal a final rejection. Appeal usually takes
four to five years.
If the patent is allowed, it will be published again as a
"B" or "toroku" publication. A patent
may be opposed by anyone in the first six months following
publication of the allowed patent by the JPO. A trial for
invalidity may be requested by interested third parties at
any time after publication.
Annual fees must be paid before the patent becomes enforceable.
These fees increase over time. The allowed patent is effective
for twenty years from the filing date if annual fees are paid
over this period.
How
much does it cost?
The JPO charges about $200 for filing an
application in Japanese and about $325 for an application
in English. Attorney fees start at around $2000. Translation
from English to Japanese usually costs between $0.22/word
and $0.60/word.
The JPO charges about $800, plus about $25 per claim for a
request for examination. Attorney fees for examinations vary
from a few hundred dollars to several thousand dollars, depending
on the amount of work the examination entails.
A 1993 survey cited by the US GAO put the average cost of
filing a 25-page patent application in Japan at $4,772, or
somewhat more than three times the average cost in the US.
Where
can I find more information?
For a somewhat more detailed explanation
of Japanese patent law see the web page provided by the
Sinjyu Office of Patent Attorneys.
For detailed information on the Japanese patent system, including
general
information, service
providers, and a list of
publications on the subject,
see our resources section.
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