• HOME
  • Announcements
  • Obtaining IP Rights
  • JPO Activities
  • Statistics ⁄ References
  • About JPO
  • FAQs

Home > FAQs > Patent

Main content starts here.

Patent

 6-1. What is a patent?

(i) Subject of protection of the Patent Act

Article 1 of the Patent Act provides that the "purpose of this Act is, through promoting the protection and the utilization of inventions, to encourage inventions, and thereby to contribute to the development of industry."

The subject of protection of the Patent Act (Article 2) is an invention. Specifically, the purpose of the Act is to encourage inventions, and thereby to contribute to the development of industry through promoting the protection and the utilization of inventions.

In addition, inventions must be characterized by a high level of technological creativity based on natural laws and rules to qualify for protection under the Patent Act. Consequently, methods of calculation or encryption that are determined by arbitrarily defined rules, such as financial and insurance systems or taxation methods, are not based on natural laws and rules and therefore do not qualify for protection under the Patent Act. Moreover, a discovery per se (for instance, Newton's discovery of gravity) does not qualify for protection under the Patent Act.

An invention is something that should probably be kept secret so that it is not stolen.

On the other hand, such secrecy makes it impossible for the inventor to put his own invention to effective use and causes other people to needlessly spend resources to invent the same thing.

The patent system has been designed to prevent such occurrences. The patent system has also been designed to promote technological progress, industrial development, and the utilization of technological resources to create inventions.

(ii) Duration of a patent right

The period of a patent right is 20 years from the date of filing of the patent application. The period may be extended up to five years for pharmaceutical products and agricultural chemicals.

(iii) Outline of procedures for obtaining a patent right

An outline of the procedures for obtaining a patent right is displayed at the following

URL:http://www.jpo.go.jp/tetuzuki_e/t_gaiyo_e/pa_right.htm

 6-2. How is a procedures for obtaining a patent right?

An outline of the procedures for obtaining a patent right is displayed at the following

URL:http://www.jpo.go.jp/tetuzuki_e/t_gaiyo_e/pa_right.htm

 6-3. Is there any database that I can use to search for patents, utility models, industrial designs, or trademarks?

Yes, there is. A retrieval service “IPDL” which is run by the National Center for Industrial Property Information and Training(INPIT) provides databases of publications of patent, utility model, industrial design and trademark. And you can also see legal status of each application through this service.

If you had any questions on the usage of IPDL, please have a look at the “HELP” menu which is located at the top of screen for each database, or e-mail to the helpdesk.

Please access the IPDL with the following URL:

http://www.ipdl.inpit.go.jp/homepg_e.ipdl (External link)

IPDL’s helpdesk e-mail address: helpdesk@ipdl.inpit.go.jp

 6-4. What should I know before I file a patent application?

(i) First of all, you should know about the "First to File" principle.

According to Article 39 of the Patent Act, when two or more patent applications are filed for an identical invention on different dates, only the applicant who filed the patent application first will be entitled to obtain a patent for that invention. This is called the "First to File" principle. This means that if any other applicants file applications for the same invention after the first applicant has applied, those later applications will be refused.

(ii) Second, make sure that you do not publish or disclose your invention before you file an application.

In Japan, any invention that has been disclosed before a patent application has been filed for that invention basically will not be granted a patent. However, Article 30 of the Patent Act makes an exception to this rule. When any invention was disclosed due to certain circumstances and a patent application is filed within six months from the date on which the invention was disclosed, Article 30 stipulates that under such conditions the invention will not have lost its novelty or inventive step due to its having been disclosed.

See FAQ 1-1: "Should I search for prior art before applying for a patent?"

 6-5. Is it necessary for me to file a request for examination with the JPO after I have submitted my patent application?

In Japan, a substantive examination of a patent application is required to determine whether a patent can be granted for the invention in the patent application. A patent application is not examined unless a “Request for Examination” has been submitted to and received by the JPO. A “Request for Examination” must be filed with the JPO within three years of the filing date of the patent application, in the case of a PCT international application within three years of the international filing date and not the date on which the application entered the national phase in Japan. If a “Request for Examination” is not submitted within the prescribed period, the patent application is deemed to have been withdrawn* in Japan.

*Your patent application (including any PCT international application) that has been deemed to have been withdrawn in Japan can be restored when you have a justifiable reason for not submitting the Request for Examination within the prescribed period mentioned above, i.e. where the Patent Office finds that your failure to comply with the time limit occurred in spite of due care required by the circumstances having been taken. In other words, you can submit the Request for Examination within two months after the date on which the justifiable reason ceased to exist, as long as this is done within one year from the original deadline. In doing so, you are required to submit also a document called a Statement of Reasons for Restoration indicating the justifiable reason.

 6-6. Can I obtain both a patent right and a utility model right for the same invention?

It is legally impossible to obtain both a patent right and a utility model right for the same invention.

If a patent application and a utility model application for the same invention are filed on different dates, then the following possibilities exist: (1) if the patent application was filed on an earlier date than the utility model application, a patent may be granted for the invention or (2) if the utility model application was filed on an earlier date than the patent application, a utility model registration may be granted for the invention (Article 39(3) of Patent Act and Article 7(3) of Utility Model).

If a patent application and a utility model application for the same invention are filed on the same date, then you can obtain only either of a patent right or a utility model registration but not both (Article 39(4) of Patent Act and Article 7(7) of Utility Model).

 6-7. Can I convert a patent application into a utility model application?

A patent application may be converted into a utility model application within three months (four months for overseas residents) of the date on which a certified copy of an examiner’s decision of refusal has been transmitted to the applicant or his/her representative or within nine years and six months of the filing date of the patent application, whichever expires earlier.

If a certified copy of an initial decision of refusal has not been transmitted to the applicant or his/her representative, a patent application may be converted into a utility model application anytime within nine years and six months of the filing date of the patent application.

A utility model application resulting from the conversion of a patent application is deemed to have been filed on the filing date of the original patent application.

In addition, the original patent application is deemed to have been withdrawn.

 6-8. Can I obtain a patent for my invention for which I have already applied for a patent in my home country?

Yes, it is possible as long as the patent application filed in Japan meets the prescribed requirements for granting a patent under the Patent Act, but you should recognize the following things:

  • 1) In principle, if your invention has been already made public by the competent authority (e.g., Patent Office) of a country, it cannot be patentable in Japan due to lack of novelty (Article 29(1) of Patent Act).
  • 2) On the other hand, you can claim a priority right, at the same time of filing a patent application in Japan, based on the first patent or utility model application that you filed in a country which is a contracting party of the Paris Convention for the Protection of Industrial Property or a member of the World Trade Organization within one year from the filing date of the first application (for more details, please see FAQ. 6-9 below).

In that case, the filing date of the first application is considered to be the effective filing date with respect to novelty and inventive step in the substantive examination for the subsequent application in Japan.

Therefore, if you can still claim a priority right for your patent application in Japan, it is not regarded as lack of novelty due to the publication of your invention in your country or a country other than Japan.

However, please note that although you claim a priority right, your subsequent patent application in Japan may be refused if there are other reasons for refusal provided by the Patent Act.

Notes: The explanation above applies to a utility model and to an industrial design as well. In addition, the explanation above (with the exception of 1)) applies to a trademark.

However, please note that with respect to an industrial design application and a trademark application, the period within which a priority right can be claimed is six months from the filing date of the first application.

 6-9. Can I claim a priority right based on the first application filed in a country other than Japan when I file a patent application in Japan?

Citizens or residents including legal entities of a contracting party of the Paris Convention for the Protection of Industrial Property (see the WIPO website (External link)) or a member of the World Trade Organization (see WTO website (External link)) or legal entities which have a business office within the area shall enjoy benefits of a priority right based on the first application filed in any of those countries or members for the subsequent application in Japan.

In order to enjoy the benefits of a priority right, you should file a patent application within one year from the filing date of the above-stated first application (hereinafter, this one-year period is called as “priority period” and the filing date of the above-stated first application is called as “priority date”) and also needs to declare the priority claims within sixteen months from the priority date or four months from your patent application in Japan, whichever expires later. The declaration of priority claims should be made in the prescribed manner under Article 43(1) of the Patent Act. Multiple priority rights can be claimed.

When you claim a priority, you have to do the following:

  • i) To specify the name of the country where the first above-stated application was filed, the filing date and the application number on the Request form, and
  • ii) To submit the priority document (Article 43(2)) within 16 months from the priority date or the earliest filing date when multiple priority rights are claimed, whichever is earlier.

Notes: The above applies also to utility models, industrial designs, and trademarks.

However, please note that with respect to an industrial design application or a trademark application, the priority right based on the above-stated first application can be valid for six months from the filing date of the first application.

With respect to a utility model application, you can declare the priority claims within one month from the date on which you filed your utility model application in Japan. With respect to an industrial-design application or a trademark application, you can declare the priority claims only at the same time as when you file your application in Japan.

Moreover, you can declare a priority claim for your patent application (including PCT international application) which filed within two months after the priority period expired, as long as you have a justifiable reason for not filing your patent application within the priority period in Japan, i.e. where the Patent Office finds that your failure to comply with the time limit occurred in spite of due care required by the circumstances having been taken. In doing so, you are required to submit a document called a Statement of Reasons for Restoration indicating the justifiable reason. This also applies to utility model applications.

 6-10. How can I obtain a priority certificate?

In order to obtain a certified copy of any patent application that has been filed with the Japan Patent Office, you are required to submit a request for one.

Please note that you need to complete the required forms according to the regulations under the Patent Act and relevant rules. The form needs to be in the Japanese language.

The fee for this is 1,400 JPY (as of April 1, 2012).

In addition, priority certificates can obtained under the Electronic Priority Document Exchange (PDX) program. The PDX program provides electronic priority documents free of charge among patent offices that participate in this program.

For more information regarding PDX and participating offices under the PDX program, please refer to the following URL address of the WIPO website.

http://www.wipo.int/das/en/participating_offices.html (External link)

 6-11. What can I do if I didn't submit a priority certificate before the deadline?

Unfortunately, if you didn’t meet the deadline to submit a priority certificate, there are no provisions enabling you to re-establish your priority rights.

Please refer to the Article 43(1), (2) and (4) of the Patent Act.

The Patent Act in English is available at the following URL.

http://www.japaneselawtranslation.go.jp/law/detail/?id=42&vm=04&re=01&new=1 (External link)

 6-12. What can I do to acquire rights in Japan sooner by using the PPH program?

For detailed information about the PPH program, please refer to the following URL.

http://www.jpo.go.jp/torikumi_e/t_torikumi_e/patent_highway_e.htm

For your reference, please also see FAQ 10-2: "How can I acquire rights in Japan earlier by utilizing the PPH system for PCT applications?"

 6-13. What can I do if I receive a notification of reasons for refusal?

When the JPO sends you a notification of reasons for refusal, you are given an opportunity to respond to it. The deadline to respond is 60 days for applicants residing in Japan and 3 months for applicants residing outside Japan. You should respond by submitting a written argument or a written amendment, depending on the situation.

If you don’t respond, the JPO will them make the refusal final.

 6-14. What can I do when I receive a final action (decision of refusal) from the JPO?

An appeal against the examiner’s decision of refusal can be filed with the JPO within three months (four months for overseas residents) of the date on which a certified copy of the examiner’s decision of refusal has been transmitted.

If the examiner’s decision of refusal is cancelled as a result of examination by the appeal board, a decision to grant a patent will be transmitted. A patent right may then be obtained after payment of the prescribed patent fees has been made within the prescribed period (see FAQ 4-4: "Can I have information on duration of right and time limit for payment of patent/registration fee?").

 6-15. Can I have information on duration of right and time limit for payment of patent/registration fee?

Information about (a) the duration of a patent, utility model, industrial design, and trademark right and (b) the due date for the payment of patent or registration fee are as follows.

(i) Patent

(a) The duration of a patent right shall expire after a period of 20 years from the filing date of the patent application. Meanwhile, an extension of the patent term by up to five years may be available for patents for pharmaceuticals and agricultural chemicals on request if the prescribed requirements are fulfilled. A patent right shall become effective from the date of registration of the patent.

(b) For registration of a patent, patent fees for each year from the first to the third year have to be paid in a lump sum within 30 days from the date on which a certified copy of the examiner's decision or the trial decision to the effect that the patent is to be granted has been transmitted. A patent right is registered after patent fees from the first to the third year are paid.

The patent fees for each year thereafter, starting with the fourth year, have to be paid by the end of the previous year.

The annual fees for some years may also be paid in a lump sum in advance.

(ii) Utility Model

(a) The duration of a utility model right shall expire after a period of ten years from the filing date of the utility model application.

A utility model application shall be registered without a substantive examination, but a utility model right shall become effective from the date of registration of the utility model.

(b) For the registration of a utility model, the registration fees for three years have to be paid at the time of filing a utility model application.

The annual fees for each year thereafter, starting with the fourth year, have to be paid by the end of the previous year. The registration fees for some years may also be paid in a lump sum in advance.

(iii) Design

(a) The duration of an industrial design right shall expire after a period of 20 years which starts from the date of the registration of the right. Meanwhile, the duration of a design right, whose application was filed before March 31, 2007, shall expire after a period of 15 years from the date of registration.

(b) For registration of an industrial design, the registration fee for the first year has to be paid within 30 days from the date on which a certified copy of the examiner's decision or the trial decision to the effect that the design is to be registered has been transmitted.

The annual fees for each year thereafter, starting with the second year, shall be paid by the end of the previous year. The registration fees for some years may also be paid in a lump sum in advance.

(iv) Trademark

(a) The duration of a trademark right shall expire after a period of ten years from the date of registration of the trademark.

(b) For registration of a trademark, the registration fee for ten years has to be paid within 30 days from the date on which a certified copy of the examiner's decision or the trial decision to the effect that the trademark is to be registered has been transmitted.

However, the registration fee may also be paid in two installments, but amount of installment payment of registration fee is comparatively higher than the lump sum price of the usual registration fee for ten years. The registration fee for the subsequent five years must be paid within five years from the day after the date of registration of the trademark.

[Renewal of duration of a trademark right]

The holder of a trademark right may renew the trademark right by filing a request for renewal of a trademark registration within the period of six months prior to the expiration of the ten year period of the trademark right.

Please note

The Japan Patent Office does not accept direct payment by any means from overseas residents. This includes, for example, payments by bank transfers, credit cards, or checks. The payment has to be made by a representative (Patent Administrator) in Japan. However, the JPO will accept payment by patent revenue stamps of the annual patent fee for each year, starting with the fourth year, which must be paid by the end of the previous year.

See FAQ 4-1: "How much are the fees?" and refer to section 3. "Annual fee/ Registration fee"and also FAQ 4-3: "What do I do about annual fees?" with respect to patent rights, etc.

See also FAQ 1-6: "How can I get a list of patent attorneys in Japan?"

 6-16. Is it possible to extend the duration of a patent right?

If you pay the annual fees, you can keep your patent right for twenty years, starting from the date on which you filed your application. Also, the JPO will authorize an extension of up to five years in case there was a certain period of time during which your patent right could not be utilized after it was registered and your patent right is in the field of pharmaceuticals and agricultural chemicals and you were required to take some specific action or obtain permission such as permission required under the regulation on public safety.

You need to submit an application to the Japan Patent Office in order to extend your patent right. However, the decision as to whether your patent can be extended will ultimately be left up to the discretion of the patent examiners.

For further information, please read the Examination Guideline on the following webpage and refer to Part VI.

http://www.jpo.go.jp/tetuzuki_e/t_tokkyo_e/1312-002_e.htm

 6-17. How can I search for patents that are available for licensing?

The INPIT, National Center for Industrial Property Information and Training, runs the Patent Licensing Information Database on the Internet free of charge. (The Center is an independent arm of the Japan Patent Office.)

The database is a public service enabling anyone such as individuals, universities, research centers, etc. to retrieve information about patents that have been registered in the database and are available for licensing.

To access the database, you don’t need to create an account, ID, or password; and you don’t need to register a licensable patent either. This database is useful for finding licensable patents or any other patents in which you might be interested.

Persons who are thinking of using licensable patents that they found in the database can be provided the licenses as a licensee from the patent holder.

You can access the Patent Licensing Information Database at the following URL.

http://plidb.inpit.go.jp/PDDB/Service/PDDBService (External link)

The above link goes to the Japanese-language homepage, but there is a button you can click to access the English pages, which is in the middle of the page.

 6-18. How can I prevent a third party's patent application from being granted?

You can use the system called “Submission of Information by Third Parties.” For detailed information about the system, please refer to the following URL:

http://www.jpo.go.jp/tetuzuki_e/t_tokkyo_e/submission.htm

 6-19. Can the period that the examiner specifies for me to respond to the notification of reason for refusal be extended while my patent application is undergoing substantive examination?

Yes, the period of time that an examiner specifies for you to respond to the notification of reason for refusal can be extended while your patent application is undergoing substantive examination. In order to extend it, you need to file a request to that effect with the JPO before the specified period to respond expires.

If you reside or are domiciled in Japan, the period can be extended by two months when you file such a request. If you don’t reside in Japan or are not domiciled in Japan, the period can be extended by two months if you file such a request to that effect. In addition, however, you can extend the period by one more month if you file another such request to that effect. The fee to request for an extension is \2,100.

If you don’t file a request to extend the specified period before the period expires, you can still file a request to that effect with the JPO within two months after the period has expired.

Applicants who reside or who are domiciled in Japan and applicants who don’t reside or who are not domiciled in Japan, can extend the period by two months if they file a request to that effect, after the specified period has expired. However, if they file it after the specified period has expired, the fee will be \51,000.

For more details, please see “Change of Operating Procedures regarding the Extension of the Specified Time Limit for Responding to a Notification of Reasons for Refusal concerning Patent Applications and Applications for Trademark Registration (starting from April 1, 2016)”

Attention

Please note that under Article 8 of the Patent Act, persons who don’t reside or who are not domiciled in Japan cannot conduct most procedures directly with the JPO and must appoint a representative in Japan. There are some exceptions to this, such as filing an initial patent application and paying the annual patent fee for each year starting with the fourth year, which must be paid by the end of the previous year. However, these exceptions for patent do not apply to utility models, designs and trademarks under their respective acts. We highly recommend that you appoint a patent attorney as your representative and consult with him or her about the procedures in detail.