Frequently Asked Questions (FAQs)

If you intend to file a patent application, you are advised to search for prior art relevant to your invention through a patent information database or have prior art searched by a patent information search company in your country before filing an application.

If your invention has lost its novelty (and is already publicly known) at the time of the filing of the application, you cannot obtain a patent for the invention (Article 29(1) of the Patent Act). Almost all inventions for which patent applications are filed with a patent office in the world are published in patent gazettes. A patent examiner searches those gazettes and other patent information when he/she performs the substantive examination for your patent application. If he/she finds another invention already published in those gazettes identical to your invention, your invention is determined to be a publicly-known art, and it is often the case that your patent application is refused by the examiner.

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

http://www.japaneselawtranslation.go.jp/law/detail/?id=42&vm=04&re=01

The Industrial Property Digital Library (IPDL) on the website of the National Center for Industrial Property Information and Training (INPIT) is a database for patent information search free of charge.

http://www.ipdl.inpit.go.jp/homepg_e.ipdl

1-2. How do I apply for a patent right if I am outside Japan? (or for a utility model, industrial design, or trademark right)

(i) First prepare the application forms

See FAQ 1-3: "How can I prepare application forms?"

(ii) Appoint a representative in Japan

See FAQ 1-4: "Do I need a patent attorney to apply for a patent from outside Japan? (or for a utility model, industrial design, or trademark)"

1-3. How can I prepare application forms?

[for patents]

(i) Required documents

To apply for a patent, you have to submit an application for a patent, a description, claims, drawings (if necessary), and an abstract.

As long as the prescribed formal criteria have been met, you may submit the following documents in English: a description, claims, drawings (if necessary), and an abstract.

However, the following must be written in Japanese: the application form, title of each of the documents, and the headings of each of the sections in those documents.

Even your name or address should be transliterated into Japanese katakana characters.

In addition, the Japanese translations of those English documents must be submitted within one year and two months from the earlier of the following two dates: the filing date or the priority date (if applicable). If the translations have not been submitted to our Office within the prescribed period, the patent application is deemed to have been withdrawn.

(ii) Carefully prepare specifications

The scope of a patent right is based on the description submitted to the JPO. Particularly, the technical scope of a patented invention shall be determined based upon the statements in the claims (Article 70(1), Patent Act). In addition to this, the meaning of each term used in the claims shall be interpreted based on the statements in the description and the drawings (Article 70(2), Patent Act). Therefore, you are advised to very carefully prepare your description and claims.

When you prepare a patent application for your invention, it will be helpful if you refer to Part I and Part II of the Examination Guidelines for Patents and Utility Models in Japan.

Please refer to the following link to view the Guidelines.

Examination Guidelines for Patents and Utility Models:

http://www.jpo.go.jp/cgi/linke.cgi?url=/tetuzuki_e/t_tokkyo_e/1312-002_e.htm

(iii) Focus on filing an application containing valuable claim(s)

You are advised to file an application focusing on claim(s) that are worthwhile in terms of technical aspects and marketability.

(iv) Appoint a representative (Patent Administrator)

If you do not have either a permanent address or residence in Japan (or office, if the applicant is a legal entity) you are required to appoint a representative, a "Patent Administrator," such as a patent attorney in Japan. For more details, please see FAQ 1-4: "Do I need a patent attorney to apply for a patent from outside Japan?"

[for utility models]

(i) Required documents

To apply for a utility model registration, you have to submit an application for utility model registration, a description, scope of claims, abstract, and drawings (if necessary).

The application must be prepared in the prescribed manner as stipulated in the Utility Model Act and the relevant regulations. All required documents must be submitted in Japanese . Even your name and address should be transliterated in Japanese katakana characters.

(ii) Carefully prepare a specification

The scope of a utility model right is based on the description submitted to the JPO. Particularly, the technical scope of a registered utility model shall be determined based upon the statements in the claims. In addition to this, the meaning of each term used in the claims shall be interpreted based on the statements in the description and the drawings.

Therefore, you are advised to very carefully prepare your description and claims.

Notes: Article 70 of the Patent Act applies to registered utility models according to Article 26 of the Utility Model.

UtilityModelAct: http://www.japaneselawtranslation.go.jp/law/detail/?id=43&vm=04&re=02

When you prepare a utility model application for your device, it is helpful if you refer to Part I, Part II, and Chapter 2 of Part X of the Examination Guidelines for Patents and Utility Models in Japan.

Please refer to the following link to view the Guidelines.

Examination Guidelines for Patent and Utility Model:

http://www.jpo.go.jp/cgi/linke.cgi?url=/tetuzuki_e/t_tokkyo_e/1312-002_e.htm

(iii) Appointment of a representative (Patent Administrator)

I If you do not have either a permanent address or residence in Japan (or office, if the applicant is a legal entity) you are required to appoint a representative, a "Patent Administrator," such as a patent attorney in Japan. For more details, please see FAQ 1-4: "Do I need a patent attorney to apply for a patent from outside Japan?"

[for industrial designs]

(i) Required documents

In order to register your industrial design in Japan, you are required to submit a prescribed application form together with drawings.

The application form must be prepared in the manner stipulated under the Design Act and the relevant regulations. In addition, all required documents must be submitted in the Japanese. Even your name and address should be transliterated in Japanese katakana characters.

(ii) To carefully prepare an application form and drawings

When applying to register a design, you are required to prepare a Request for Registration of a Design, along with drawings, in the prescribed manner. The key to appropriately preparing an application lies in how you prepare drawings.

(iii) Appointment of a representative (Patent Administrator)

[for trademarks]

(i) Required documents

In order to register your trademark in Japan, you are required to submit a prescribed application form.

The application form must be prepared in the manner stipulated under the Trademark Act and the relevant regulations. In addition, all required documents must be submitted in Japanese. Even your name and address should be transliterated in Japanese katakana characters.

(ii) Appointment of a representative (Patent Administrator)

1-4. Should I appoint a patent attorney as my representative to apply for a patent, a utility model, industrial design, trademark to the Japan Patent Office from overseas?

If you have a permanent address or residence (office, if the applicant is a legal entity) in Japan, you do not have to appoint your attorney as your representative. However, it is strongly recommended that you appoint a patent attorney as your representative because a good command of Japanese and deep knowledge of the relevant laws and the procedures are necessary to file an application and complete the process successfully.

On the other hand, if you do not have a permanent address or residence (office, if the applicant is a legal entity) in Japan, a legal representative (such as a patent attorney) with a permanent address or residence in Japan must be appointed as a "Patent Administrator" (Article 8, Patent Act). Any procedures must be conducted through the Patent Administrator.^*

(Notes)

* : This requirement is not applicable to procedures for national entry of PCT international applications in Japan.

However, please note that you have to appoint your Patent Administrator within the prescribed period. Otherwise, your PCT international application will be deemed to have been withdrawn (Article 184-11, Patent Act, see FAQ 10-1: "How can I have my PCT international application entered into the national phase in Japan?").

1-5. Should I submit a power of attorney?

When the information concerning your representative is included in the application form, you do not have to submit a power of attorney. This is also applicable to a Patent Administrator. However, if you appoint a representative acting on behalf of you to proceed with our Office afterwards, you need to submit a power of attorney.

In addition, there are cases in which you have to submit a power of attorney; e.g. when you intend to withdraw your application or limit the scope of the authorization of the power of attorney.

1-6. How can I get a list of patent attorneys in Japan?

All patent attorneys, who are acting in a professional capacity and on behalf of someone to conduct procedures with the JPO, have to belong to the Japan Patent Attorneys Association.

The JPAA can be helpful in finding a representative for you in Japan.

The Japan Patent Attorneys Association (Benrishi-kai)

Address: 3-4-2 Kasumigaseki,

Chiyoda-Ku, Tokyo 100-0013 JAPAN

Tel: +81-3-3581-1211

Fax: +81-3-3581-9188

E-mail: master@jpaa.or.jp

Web site: http://www.jpaa.or.jp/english/index.html

1-7. If I live in Japan, do I need to appoint a representative in order to apply for a patent? (or utility model, industrial design or trademark registration)

If you have either a permanent address or a residence (or office, if you are a legal entity) in Japan, you can file a patent application directly with our office, without appointing a representative.

If you are not familiar with the procedures, however, we recommend you appoint a patent attorney as your representative in Japan, in order to successfully complete the whole process.

All patent attorneys who engage in IP work are required to be a member of the Japan Patent Attorneys Association (JPAA). The JPAA can thus be very helpful for applicants who are considering appointing a patent attorney as their representative in Japan.

The Japan Patent Attorneys Association (Benrishi-kai)

Address: 3-4-2 Kasumigaseki,

Chiyoda-Ku, Tokyo 100-0013 JAPAN

Tel: +81-3-3581-1211

Fax: +81-3-3581-9188

E-mail: master@jpaa.or.jp

Web site: http://www.jpaa.or.jp/english/index.html

1-8. May I file a patent application with the JPO that has been completed in English instead of Japanese?

As long as the prescribed formal criteria have been met, the following documents that must be attached to the application form for a patent for an invention may be submitted in English: a description, claims, drawings (if necessary), and an abstract.

However, the following must be written in Japanese: the application form, the title of each of the documents, and the headings of each of the sections in those documents.

In addition, the Japanese translations of those English documents must be submitted within one year and two months from the earlier of the following two dates: the filing date or the priority date (if applicable). If the translations have not been submitted to the JPO within the prescribed period, the patent application is deemed to have been withdrawn.

1-9. How can I submit an application or other documents?

You can submit an application or other documents to our Office by:

(i) bringing them directly to the counter at our Office

(ii) mailing them to the following address;

Japan Patent Office

3-4-3, Kasumigaseki, Chiyoda-ku, Tokyo 100-8915, Japan

(iii) online (Internet)

However, overseas residents cannot submit the documents directly to our Office by any means, including the above three ways without a representative in Japan.

Please note that the documents have to be submitted to our Office by a representative (e.g., patent attorney) in Japan (see FAQ 2-4: "Can I change the applicant in a pending application?").

1-10. 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

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

1-11. Who may be an applicant?

Eligibility is limited to:

(i) the inventor(s), deviser(s) or creator(s), or

(ii) person(s) who have succeeded the right to apply for a patent/utility model/design, or

(iii) person(s) who wish to register a trademark.

1-12. Do I have to submit a power of attorney when I file a patent application?

You do not need to submit a signed power of attorney when applying for a patent.

On the other hand, a power of attorney is required, for example, when you abandon or withdraw a patent application. In that case, the JPO requires that the signatures of all applicants be on the power of attorney.

Do inventors/applicants have to sign any documents when filing?

Inventors are not required to sign any documents. However, when a representative conducts the filing procedures on behalf of any applicants, the signature of the representative or the identification label of the representative is required on the patent application form. The signatures of the inventers and applicants are not needed.

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 any procedures directly with the JPO and must appoint a representative in Japan. (This same type of provision applies to utility models, designs, and trademarks under their respective acts.) We highly recommend that you appoint a patent attorney and consult with your representative about the procedures in detail.

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

1-13. What should I do to obtain a patent or register a utility model, an industrial design or a trademark/service mark?

1. File the relevant application with the Japan Patent Office (JPO) to obtain a patent right or register a utility model, industrial design or trademark. The application must be prepared in the prescribed manner provided by the Patent Act, regulations, etc. All required documents must be submitted in the Japanese language.

2. Submit a Request Form together with the following documents according to the kind of right desired:

Patents: A description, claims, an abstract, and, if necessary, drawing(s)

Utility models: A description, claims, an abstract, and drawing(s)

Designs: Drawing(s)

Trademarks: A trademark for which registration is sought

After an application is received by the JPO, a formality examination is performed to determine whether the prescribed formal requirements have been fulfilled.

An invitation to correct will be made where it does not meet the requirements; e.g., when the necessary documents are missing or the required pieces of information have not been properly filled out.

Then, an examiner performs a substantive examination to determine whether the application satisfies the requirements for the grant of a patent or the registration of an industrial design or a trademark.

Please note that a substantive examination for a patent application is carried out only when a "Request for Examination" is submitted to our Office within three years from the date of filing of the application (or international filing date for PCT international applications which have entered the national phase in Japan as a designated state).

If a "Request for Examination" is not made within the prescribed period, the patent application is deemed to have been withdrawn.

When the examiner decides that the application meets all of the requirements, a patent may be granted or an industrial design or a trademark may be registered in the Registry at the JPO with payment of the prescribed patent fees or registration fee.

Meanwhile, please also note that a utility model is registered without a substantive examination where it satisfies the prescribed formal requirements including payment of registration fees and the basic requirements.

As to the "basic requirement," please refer to the Part X: UTILITY MODEL, Chapter 2 Basic Requirements for Utility Model Registration of the Examination Guidelines for Patent and Utility Model in Japan at the following URL:

http://www.jpo.go.jp/cgi/linke.cgi?url=/tetuzuki_e/t_tokkyo_e/1312-002_e.htm

A patent right, an industrial design right or a trademark right comes into force when such a right is registered in the Registry at JPO.

Any invention, device, or creation is vulnerable if it is disclosed to others or brought into the market without a patent right, a utility model right or a design right.

Without such a right, action cannot be taken against others who use or imitate the invention/device/creation. Therefore, the protection of the right for an invention, device, or creation under the law begins with the filing of an application with the JPO. The same situation applies to a trademark.

●Other procedures for a patent, a utility model, industrial design, trademark to the Japan Patent Office

2-1. 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.

2-2. Can I have information on registration of right?

(i) Patent

Decision to Grant a Patent

Where no reasons for refusal are found for a patent application, the examiner will make a decision to the effect that a patent is to be granted. Where the reasons for rejection were overcome by the written opinion or the amendment, the examiner will make a similar decision.

Registration (Patent Fee Payment)

With the payment of the patent fee for the first to third years, the patent right will come into effect as it is entered in the Patent Register. At the same time, a patent number is attached and a certificate of patent will be sent to the applicant.

(ii) Utility Model

Registration

For all applications which have passed the formality check as well as satisfying the basic requirements, the registration of the utility model right will be instituted without going through a substantive examination. However, the registration fee for the first to third years must be paid at the time of filing. At the same time, a registration number of the utility model is attached and a certificate of utility model registration will be sent to the applicant.

(iii) Industrial Design

Decision to Grant a Design Registration

Where no reasons for refusal are found for an application for design registration, the examiner will make a decision to the effect that a design registration is to be granted. Where the reasons for rejection were overcome by the written opinion or the amendment, the examiner will make a similar decision.

Registration (Registration Fee Payment)

With the payment of the registration fee for one year, the industrial design right will come into effect as it is entered in the Industrial Design Register. At the same time, a design registration number is attached and a certificate of design registration will be sent to the applicant.

(iv) Trademark

Decision to Grant a Trademark Registration

Where no reasons for refusal are found for an application for trademark registration, the examiner will make a decision to the effect that a trademark registration is to be granted. Where the reasons for rejection were overcome by the written opinion or the amendment, the examiner will make a similar decision.

Registration (Registration Fee Payment)

With the payment of the registration fee for ten years, the trademark right will come into effect as it is entered in the Trademark Register. At the same time, a trademark registration number is attached and a certificate of trademark registration will be sent to the applicant.

Please note

The JPO does not accept payment by any means from overseas residents, including payment by bank account transfer, credit card, or check. The payment has to be made by a representative (e.g., patent attorney) in Japan.

See FAQ 4-1: "How much are the fees?"; and refer to section 3. "Annual fee/ Registration fee"

2-3. What happens when a deadline falls on a weekend or public holiday?

According to Article 3 of the Patent Act, whenever a deadline falls on a Saturday, Sunday, or national holiday of Japan, the deadline will become the next working day that the JPO is open.

Reference:

Patent Act:http://www.japaneselawtranslation.go.jp/law/detail/?id=42&vm=04&re=01

2-4. Can I change the applicant in a pending application?

In order to change the applicant in a pending patent application, the following must be submitted to the JPO: (1) the prescribed form together with the original assignment document, (2) power of attorney and (3) the prescribed fee, i.e. JPY 4,200. In stead of the original assignment document, you can submit a notarized copy of the document that has been certified by a notary public.

If the assignment document, the certification made by a notary public, and the power of attorney are not written in Japanese, a Japanese translation of the document(s) must be submitted. However, the translation need not necessarily be certified by a notary public.

Contrary to an assignment of a patent right, etc., an assignee can request change of applicant for a pending application by himself/herself (see FAQ 2-5: "In order to assign my patent right in Japan to another party, what am I required I do?").

Notes: If the assignee does not have a permanent address or residence (or office, if the assignee is a legal entity) in Japan, a legal representative (such as a patent attorney) with a permanent address or residence in Japan must be appointed as a “Patent Administrator” (Article 8, Patent Act).

All procedures, including request for change of applicant for a pending patent application, etc. with the JPO must be conducted through the Patent Administrator (see FAQ 1-4: "Should I appoint a patent attorney as my representative to apply for a patent, a utility model, industrial design, trademark to the Japan Patent Office from overseas?").

2-5. In order to assign my patent right in Japan to another party, what am I required I do?

In order to record an assignment of a patent right, etc. in the Registry at the JPO, the following must be submitted to the JPO: (1) the prescribed form for registration of assignment together with the original assignment document, (2) power of attorney and (3) the prescribed fee (see below). Instead of the original assignment document, you can submit a notarized copy of the document that has been certified by a notary public.

If the assignment document, the certification made by a notary public and a power of attorney is not written in Japanese, a Japanese translation of them must be submitted.

However, the translation need not necessarily be certified by a notary public.

In addition, one of the following is required: (1) both the assignor and assignee must together apply for registration of an assignment of a patent right, etc. or (2) the assignee can request registration of the assignment of a patent right with written consent from the assignor.

The required fee is as follows (as of April 1, 2012):

-Patent15,000 (JPY)

-Utility model9,000 (JPY)

-Design9,000 (JPY)

-Trademark30,000 (JPY)

Notes: If the assignor or assignee does not have a permanent address or residence (or office, if the assignor or assignee is a legal entity) in Japan, a legal representative (such as a patent attorney) with a permanent address or residence in Japan must be appointed as a “Patent Administrator” (Article 8, Patent Act). All procedures, including request for registration of assignment of a patent right, etc. with the JPO must be conducted through the Patent Administrator (see FAQ 1-4: "Should I appoint a patent attorney as my representative to apply for a patent, a utility model, industrial design, trademark to the Japan Patent Office from overseas?").

●Forms for an application and other procedures

3-1. Are there any sample application forms for patents, utility models, industrial designs, and trademarks?

The following are sample forms for each type of application.

[Patent]

Sample form (Japanese<Word 41KB>・English Translation<Word 38KB>)

[Utility Model]

Sample form (Japanese<Word 29KB>・English Translation<Word 27KB>)

[Industrial Design]

Sample form (Japanese<Word 36KB>・English Translation<Word 40KB>)

[Trademark]

Sample form (Japanese<Word 27KB>・English Translation<Word 28KB>)

* Please note that under Article 8 of the Patent Act, persons who don't reside or who are not domiciled in Japan cannot conduct any procedures directly with the JPO and must appoint a representative in Japan. (This same type of provision applies 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 your representative about the procedures in detail.

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

●Fees

4-1. How much are the fees?

1. Application

2. Request for Examination

3. Annual fee / Registration fee

4. Request for Trial / Retrial

5. Others

6. After Registration

Please refer to the following URL for other fees.

Schedule of Fees (as of April 1, 2012):

http://www.jpo.go.jp/cgi/linke.cgi?url=/tetuzuki_e/ryoukin_e/ryokine.htm

Please note

The Japan Patent Office does not accept direct payments by any means from applicants/persons residing outside Japan, such as payments by bank transfers, credit cards, or checks. The payment has to be made by an appointed representative either residing or domiciled in Japan such as a patent attorney.

See FAQ 4-1: "How much are the fees?" and refer to section 3. "Annual fee/ Registration fee"

4-2. Can I make a payment of official fees directly to the JPO from overseas?

Overseas residents cannot make a payment of any fees directly to our Office by any means, including the payment by bank account transfer, credit card, or check etc. The payment has to be made by your representative (e.g., patent attorney) in Japan.

4-3. What do I do about annual fees?

1) How can I pay annual fees to maintain my patent (or utility model or industrial design)?

2) How can I renew my trademark registration?

3) May I pay the fee after the time limit to pay has expired?

(i) for patents

A patent right can be maintained by paying patent fees on an annual basis, starting with the fees for the fourth year. However, if the patent fee for a certain year is not paid within the deadline, a late payment equivalent to double the patent fees can be made if the late payment is paid within six months after the original deadline to pay has expired. If the late payment fee equivalent to double the patent fees is not paid within the within six-month period mentioned here, the patent right will be deemed to have expired as of the original expiration date.

Furthermore, when the patent-right holder has a legitimate reason for not paying within the six-month grace period, the patent-right hold can pay the patent fee and a patent surcharge to restore the patent right. According to Article 112-2 of the Patent Act, this can be done if the patent fees and patent surcharge are paid within two (2) months after the date on which the legitimate reason ceased to exist, limited to within one (1) year from the original expiration date. Under such circumstances, the patent-right holder is required to submit a document indicating the legitimate reason, called a Statement of Reasons for Recovery.

(ii) for utility models

The answer given for patents applies to utility models also.

(iii) for designs

An industrial design right can be maintained by paying registration fees on an annual basis, starting with the second year. However, if the registration fee for a certain year is not paid within the deadline, a late payment equivalent to double the registration fee may be made within six months of the expiration of the time limit. If the late payment equivalent to double the registration fee is not paid within the extended deadline, the patent right will be deemed to have expired as of the original expiration date.

(iv) for trademarks

A trademark right can be renewed every ten years if the trademark-right owner requests to renew and pays the prescribed renewal fee. However, if the owner does not complete the procedure to renew the trademark right within the deadline to do so, the trademark-right owner may make a late payment equivalent to double the renewal fee within six months from the time the registration expired. If the late payment is not made within the extended deadline, the trademark right shall be deemed to have expired as of the original expiration date.

Furthermore, when the trademark-right holder has a legitimate reason for not requesting to renew the registration within the six-month grace period and the right has expired, the trademark-right owner can make a late payment to restore the right. According to Articles 21 and 43 of the Trademark Act, this can be done if the renewal fee and a renewal surcharge equivalent to double the renewal fee is made within two (2) months after the date on which the legitimate reason ceased to exist, limited to within six (6) months after the expiration of the time limit. Under such circumstances, the trademark-right-holder is required to submit a document indicating the legitimate reason, called a Statement of Reasons for Recovery.

Please note

See FAQ4-1: "How much are the fees?" and refer to section 3. "Annual fee/ Registration fee"

4-4. 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) Industrial 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, including payment by bank account transfer, credit card, or check. The payment has to be made by a representative (e.g., patent attorney) in Japan.

See FAQ 4-1: "How much are the fees?" and refer to section 3. "Annual fee/ Registration fee"

4-5. May I request a refund of the examination request fee if I withdraw or renounce my patent application?

One half of the amount of the examination request fee which you have already paid can be refunded to you upon your request if you withdraw or renounce your patent application before the first office action (e.g., “Decision to Grant a Patent” or “Notification of Reasons for Refusal” etc.) has been sent to you or to your representative in Japan (if you have such a representative).

The request for refund of the examination request fee should be made within six months from the date on which you withdraw or renounce your patent application. If you do not have a permanent address or residence (office, if the applicant is a legal entity) in Japan, the request has to be submitted by your representative in Japan (Article 8 of the Patent Act), and the JPO refunds the fee to your representative.

4-6. Can I pay my registration or renewal fees in installments?

Yes, the registration fee can be paid in two installments, one for the first five years and the next for the last five years. When paid over installments, however, the amount of the registration fee for 10 years ends up being higher than if it were paid all at once.

The registration fee for the first five years must be paid within 30 days from the date on which a certified copy of an examiner's decision (or a trial decision) stating that the trademark can be registered has been sent. The registration fee for the last five years must be paid within five years from the day on which the trademark was registered.

The renewal fee can be paid in two installments as well, one for the first five years and the next for the last five years, in the same way that you can pay registration fees.

When paid over installments, however, the amount of the renewal fee ends up being higher than if it were paid all at once.

Please note

The Japan Patent Office does not accept direct payments by any means from applicants/persons residing outside Japan, including payments by bank transfers, credit cards, or checks. The payment has to be made by an appointed representative either residing or domiciled in Japan such as a patent attorney.

See FAQ 4-1: "How much are the fees?" and refer to section 3. "Annual fee/ Registration fee"

4-7. How much are the fees for bringing my PCT international application into the national Phase in Japan and the relevant fees?

(i) National fee

National fee is required for entry into the national phase in Japan.

See FAQ 4-1: "How much are the fees?" and refer to section 1. Application –-Entry into the national phase in Japan (under the PCT)"

(ii) Fee for requesting examination

A request for examination (Form No.44) for your PCT international application which has entered into the national phase in Japan has to be submitted through your representative within three years of the international filing date of your PCT international application.

See FAQ4-1: "How much are the fees?" and refer to section 2. Request for Examination

Please refer to the following " How to advance PCT applications into the national phase in Japan"---(v) Time limit for requesting examination

http://www.jpo.go.jp/cgi/linke.cgi?url=/torikumi_e/pct_applications.htm

(iii) Patent fee

Patent fees are the same as those for national patent applications.

See FAQ 4-1: "How much are the fees?" and refer to section 3. "Annual fee/ Registration fee"

Please note

4-8. How can I pay the second part of the individual fee under the Madrid Protocol?

The second part of an individual fee has to be paid to the International Bureau (IB) of the WIPO within three months from the mailing date when the JPO sent out the “STATEMENT OF GRANT OF PROTECTION” (in which the date is shown). As to the amount of fee to be paid and how to pay it, please follow the instruction described in the “NOTIFICATION OF SECOND PART OF INDIVIDUAL FEE” which is separately sent from the IB.

Please note that the international trademark registration in the International Register shall be cancelled with respect to Japan where the second part of the individual fee is not paid to the IB within the prescribed period mentioned above.

If a copy of the “NOTIFICATION OF SECOND PART OF INDIVIDUAL FEE” is not delivered, please make a direct contact with the IB of the WIPO.

Please refer to the following URL:

- For the information regarding the detail of “the second part individual fee in Japan”.

http://www.jpo.go.jp/torikumi_e/t_torikumi_e/japan_under_the_madrid_protocol.htm#6

- For the information regarding how to pay the fee with the International Bureau (IB) of the WIPO:

http://www.wipo.int/madrid/en/fees/about_fees.html

- For the information regarding “Individual Fees under the Madrid Protocol”

http://www.wipo.int/madrid/en/madridgazette/remarks/ind_taxes.html

5-1. Should I search for prior art before applying for a Patent?

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

http://www.japaneselawtranslation.go.jp/law/detail/?id=42&vm=04&re=01

http://www.ipdl.inpit.go.jp/homepg_e.ipdl

5-2. 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

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

5-3. Is it possible to know if my invention can be patented, before I file?

Examiners are the only ones who can determine whether your patent can be patented. So unless your invention undergoes substantive examination, it will not be possible for you to know beforehand whether your patent can be patented. (The same applies to registering industrial designs and trademarks.) In addition, the Japan Patent Office does not offer any advice or comments beforehand in regard to the possibility of inventions being patented or designs or trademarks being registered.

If you intend to file a patent application, we highly recommend you familiarize yourself with the filing procedures and with the IPDL(Industrial Property Digital Library) database to find out how to search for prior art relevant to your invention. It is also recommended that you consult search agencies in your country to gather information on prior art, before filing an application.

Please note that since it is not possible to obtain a patent for any invention that either hasf already been filed or has already become known to the public, it is important that you conduct a prior art search.

You can refer to the IPDL at the following URL:

http://www.ipdl.inpit.go.jp/homepg_e.ipdl

5-4. Does the Japan Patent Office provide English translations of Japanese patents or utility models?

Yes,　it does.

Machine translated publications are available in the IPDL (Industrial Property Digital Library) database free of charge. Please access the IPDL at the following URL.

http://www.ipdl.inpit.go.jp/homepg_e.ipdl

In addition to machine translated publications, there are English abstracts of published unexamined patent applications and the Patent Abstracts of Japan (PAJ), which are also available in the IPDL. The PAJ is a collection of abstracts of unexamined patent applications published in or after 1976 and includes bibliographic information of applications. Although PAJ abstracts are prepared for publications of unexamined patent applications, there are no publications of unexamined PCT applications that have entered into the national phase of Japan.

To access machine translated publications, please follow the instructions below.

1. Access the IPDL top page by clicking on the following URL.

http://www.ipdl.inpit.go.jp/homepg_e.ipdl

IPDL Top Page

2. Next, click on the “Patent & Utility Model Gazette DB(databases)” link under the Patent Utility Model menu to display the Patent & Utility Model Gazette DB (databases).

3. The year-by-year range of publications differs depending on the type of publication. Also, machine translated publications of unexamined patent applications are available starting from 1993 and after. In addition, the yearly publications of granted patents and granted utility models are included in this database.

Patent & Utility Model Gazette DB

4. To conduct a search, please input either an ‘A’ or a ‘B’ as the “Kind code” and then enter document number you would like to retrieve. If you have any questions about using this database, you can refer to HELP to find out how to use the database and see an outline of the database.

Please follow the instructions below to access the PAJ.

1. Access the IPDL top page by clicking on the following URL.

http://www.ipdl.inpit.go.jp/homepg_e.ipdl

2. Next, under the Patent & Utility Model menu, click on PAJ to display the PAJ database.

PAJ database

3. You can search the PAJ by inputting either keywords or publication numbers of unexamined patent numbers. You can search a combination of keywords by inputting AND/OR. In addition, you can narrow down the range of publication dates and also search by IPC symbols.

However, when you use a document number to search, please click on the “number search” button in order to change the screen to search patent documents with a document number.

Searching PAJ

For further details about this database and how to use it, please click “HELP”. If you are still having difficulties using this database or have questions, you can e-mail questions to the IPDL Helpdesk at the following e-mail address: helpdesk@ipdl.inpit.go.jp

5-5. How can I find information on the legal status of patents?

Information on the legal status of patents is available in the IPDL Industrial Property Digital Library.You can make use of patent documents and PAJ abstracts to find information on the legal status.

Please refer to FAQ 5-4: "Does the Japan Patent Office provide English translations of Japanese patents or utility models?"

The following shows the search results when doing a “PAJ Search”. The button to find information on the legal status is located at the top right of the screen, highlighted below.

5-6. How do I find cited documents in the IPDL database?

The IPDL (Industrial Property Digital Library) provides patent documents issued by the Japan Patent Office (JPO). Please refer to the IPDL help page for the year-by-year range of stored data by clicking on the following URL.

http://www.ipdl.inpit.go.jp/Bunchiku/tjbunchikubsen.ipdl?N0000=317

The IPDL does not provide any non-patent documents. Therefore, you should ask your representative for any non-patent documents that you may need, such as documents used in determining reasons for refusal.

You can also refer to FAQ 5-4: "Does the Japan Patent Office provide English translations of Japanese patents or utility models?"

If you have difficulties using the IPDL, you can e-mail questions to the IPDL Helpdesk at the following e-mail address. helpdesk@ipdl.inpit.go.jp

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/cgi/linke.cgi?url=/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/cgi/linke.cgi?url=/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?

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

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.

6-6. Can I make a payment of official fees such as application fees, patent/registration fees etc. directly to the JPO from overseas?

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) or a member of the World Trade Organization (see WTO website) 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, the applicant is required to claim the priority right at the same time of filing his/her patent application in Japan in the prescribed manner under Article 43 or 43-2 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 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 filing date of the first application or the earliest filing date when multiple priority rights are claimed, whichever is earlier.

Notes: The explanation above applies to a utility model, an industrial design and a trademark.

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

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

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

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.

(iii) Design

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.

[Renewal of duration of a trademark right]

Please note

See FAQ 4-1: "How much are the fees?" and refer to section 3. "Annual fee/ Registration fee"

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

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/cgi/linke.cgi?url=/tetuzuki_e/t_tokkyo_e/submission.htm

●Utility Model

7-1. What is a utility model?

(i) Subject of protection under the Utility Model Act

The subject of protection of the Utility Model Act (Articles 2-3) is a device that is related to the shape or structure of an article or combination of articles, industrially applicable, and characterized by creative technological concepts based on natural laws and rules.

(ii) Difference between a utility model and a patent

Although the patent system is designed to protect an invention which involves highly advanced and sophisticated technologies, the utility model system is, on the other hand, designed to protect a device related to the shape or construction of articles or combination of articles. The words "invention" (i.e., reflecting "high creativity") and "device" (i.e., reflecting "creativity") are used for ideas involving different levels of creativity.

Since the Utility Model Act is designed to protect only "devices" relating to the shape or construction of articles or combination of articles, a method, such as a manufacturing process, is not protected under the Utility Model Act.

The process for granting a patent right differs from that for granting a utility model right. In the patent system, an examiner performs a substantive examination for a patent application upon receiving a "request for examination," which has to be submitted by the patent applicant or any person other than the applicant within three years of the filing date of the patent application. On the other hand, a utility model is registered without a substantive examination as long as it meets the basic requirements provided by Article 6-2 of the Utility Model Act.

For the "basic requirements," please refer to Part X: UTILITY MODEL, Chapter 2 Basic Requirements for Utility Model Registration of the Examination Guidelines for Patent and Utility Model in Japan at the following URL:

http://www.jpo.go.jp/cgi/linke.cgi?url=/tetuzuki_e/t_tokkyo_e/1312-002_e.htm

(iii) Duration of a utility model right

The period of a utility model right is ten years from the date of filing of the utility model application. The period may not be extended.

(iv) Outline of procedures for obtaining a utility model right

An outline of the procedures for registration of a utility model is displayed at the following URL:

http://www.jpo.go.jp/cgi/linke.cgi?url=/tetuzuki_e/t_gaiyo_e/model.htm

7-2. How is a procedures for obtaining a utility model right?

An outline of the procedures for registration of a utility model is displayed at the following URL:

http://www.jpo.go.jp/cgi/linke.cgi?url=/tetuzuki_e/t_gaiyo_e/model.htm

7-3. What should I know before I file a utility model application?

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

A utility model may be registered without a substantive examination as long as the utility model application meets both the basic and formal requirements. In addition, according to Article 7 of the Utility Model Act, when two or more applications are filed for a utility model on different dates, only the applicant who filed the application first will be entitled to register that utility model. This is called the "First to File" principle. This means that if any other applicants file applications for the same utility model after the first applicant has applied, those later applications will be refused.

If anybody else files an application for the same device as your device on an earlier date than you file an application for your device, your utility model registration can be invalidated (Article 37, Utility Model Act). Therefore, if you intend to protect your device as a utility model registration, you must pay attention to the principle.

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

You are advised not to publish or disclose your utility model before you file your application to register your utility model. Once you disclose your device to the public, your device will be deemed to have lost its novelty and cannot be registered. (This is according to Article 3 of the Utility Model Act.)

In Japan, any utility model that has been disclosed before an application has been filed to register that utility model will basically not be able to be registered. However, Article 30 of the Patent Act, which also applies to utility models, makes an exception to this rule. When the utility model was disclosed due to certain circumstances and an application to register it is filed within six months from the date on which the utility model was disclosed; the utility model will not have lost its novelty or inventive step due to its having been disclosed. (Based on Article 11 of the Utility Model Act, the same provision stipulated in Article 30 of the Patent Act also applies to applications filed to register utility models.)

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

7-4. 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).

7-5. Can I convert a utility model application into a patent application?

A utility model application may be converted into a patent application within three years of the filing date of the utility model application. The patent application resulting from the conversion of a utility model application is deemed to have been filed on the filing date of the original utility model application with some exceptions. In addition, the original utility model application is deemed to have been withdrawn (Article 46 of Patent Act).

Moreover, even after registration of a utility model, the holder(s) of the utility model right can file a patent application based on the utility model right unless the patent application is submitted at a time provided by Article 46-2 of the Patent Act. A patent application based on a utility model right is deemed to have been filed on the same day as the filing date of the original utility model application with some exceptions. Moreover, when you apply for a patent based on your utility model right, you have to renounce your utility model right (Article 46-2 of Patent Act).

Meanwhile, please note that you cannot obtain a patent and lose your utility model right if the patent application based on your utility model right does not eventually meet the prescribed formal requirements after a notification to request you to comply with the requirements within the specified period is sent by our Office.

7-6. What is a Report of Utility Model Technical Opinion ?

According to Article 16 of the Utility Model Act, "the owner of a utility model shall have an exclusive right to commercially work the registered model", in addition to having the right to demand an injunction, compensation for damage, and/or compensation for unfair profits gained by any persons who infringe such right.

The application you file to register your utility model will be registered without the need to undergo any substantive examination, as long as your utility model application meets the formal and basic requirements. In other words, this means that your utility model will be registered even if it does not meet the particular requirements for your specific utility model to be registered, so you must carefully check the details regarding this point.

As a result, the validity of a utility model right is actually uncertain because owners of utility models, who plan to exercise their rights, need to first verify the validity. If they do not, unforeseen conflicts with other persons over rights might arise, as well as the need to pay compensation for damage.

To avoid such a situation, anyone can request a "Report of Utility Model Technical Opinion". You can exercise your utility model right only after giving warning to the suspected infringer, presenting the report to him/her. The report contains an expert opinion on aspects such as the novelty and inventive step of the utility model.

A Report of Utility Model Technical Opinion is an assessment report based on the result of a prior art search conducted by an examiner at the JPO on either the registrability (novelty, inventive step, etc.) of a utility model application that has been filed on a utility model that has already been registered.

After a utility model application is filed, not only the applicant but also other persons can request a certified copy of the Report of Utility Model Technical Opinion, even after the right has been extinguished.

●Design

8-1. What is an industrial design?

(i) You should know the "First to File" principle

According to Article 9 of the Design Act, where two or more design applications for an identical or a similar design have been filed on different dates, only the applicant who filed the design application on the earliest date shall be entitled to registration of a design. That means that if anybody else files an application for the same design or similar design on a later date, that application will be refused.

Design Act: http://www.japaneselawtranslation.go.jp/law/detail/?id=44&vm=04&re=02

(ii) Keep your design unpublished or undisclosed before filing

You are advised to keep your design unpublished before filing a design application for the design. Otherwise, your design has lost its novelty, and you may not have your design registered (Article 3, Design Act).

Meanwhile, Article 4 of the Design Act stipulates exception to lack of novelty of design in spite of disclosure of the design to the public before filing for a six month period of time under certain conditions.

(iii) To carefully prepare an application form and drawings

When applying for registration of a design, you are required to prepare a Request for Registration of a Design and drawings in the prescribed manner. The key to appropriately preparing an application lies in how you prepare drawings.

(iv) Appointment of a representative (Patent Administrator)

If you do not have a permanent address or residence (office, if the applicant is a legal entity) in Japan, you are required to appoint a representative such as a patent attorney, in Japan. For more detail, please see FAQ 1-4: "Should I appoint a patent attorney as my representative to apply for a patent, a utility model, industrial design, trademark to the Japan Patent Office from overseas?")

8-2. How is a procedures for obtaining a industrial design right?

An outline of the procedures for registration of a design is displayed at the following URL:

http://www.jpo.go.jp/cgi/linke.cgi?url=/tetuzuki_e/t_gaiyo_e/de_right.htm

8-3. What should I know before I file an industrial design application?

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

According to Article 9 of the Design Act, when two or more applications are filed for an industrial design on different dates, only the applicant who filed the application first will be entitled to register that design. This is called the "First to File" principle. This means that if any other applicants file applications for the same industrial design after the first applicant has applied, those later applications will be refused.

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

You should not to publish or disclose your industrial design before you file your application to register your design. Once you disclose your design to the public, your design will be deemed to have lost its novelty and cannot be registered. (This is based on Article 3 of the Design Act.)

In Japan, any design that has been disclosed before an application has been filed to register that design will basically not be able to be registered. However, Article 4 of the Design Act makes an exception to this rule when the design was disclosed due to certain circumstances and an application to register it is filed within six months from the date on which the design was disclosed.

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

8-4. How do I make drawings?

In some countries, it is possible to show a design with only one drawing. In Japan, however, it is standard to show a design based on a set of orthographic drawings that include a front view, rear view, left-side view, right-side view, top-view, and bottom-view. All of the drawings must be the same scale. However, it is also possible to show a design by using isometric drawings or oblique drawings.

In addition, instead of submitting a set of drawings, it is also possible to submit photographs, models or specimens that show the design.

Attention

Please note that under Article 8 of the Patent Act, any persons who don’t reside or who are not domiciled in Japan cannot conduct any procedures directly with the JPO and must appoint a representative in Japan. (This same type of provision applies 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 your representative about the procedures in detail.

●Trademark

9-1. What is a trademark?

(i) Subject of protection under the Trademark Act

The subject of protection of the Trademark Act is a trademark. According to the Article 1 of the Trademark Act, the purpose of this Act is, through the protection of trademarks, to ensure the maintenance of business confidence of persons who use the trademarks and thereby to contribute to the development of the industry and to protect the interests of consumers.

It goes without saying that consumers benefit from the economic activities of various companies and other economic entities.

Consumers expect a certain level of quality of products or services from certain brands and therefore benefit by being able to determine the manufacturer of a product or provider of a service.

Trademarks indicate a specific function of a product or a service. By protecting the reputation of a brand associated with a trademark, the trademark system protects the interests of the consumer and contributes to the development of industries.

Article 2 of the Trademark Act defines a "trademark" as any character(s), figure(s), sign(s) or three-dimensional shape(s), or any combination thereof, with colors (hereinafter referred to as a "mark") which is:

(i) used in connection with the goods of a person who produces, certifies or assigns the goods as a business; or

(ii) used in connection with the services of a person who provides or certifies the services as a business (except those provided for in the preceding item).

In addition, "Services" set forth in item (ii) above shall include retail services and wholesale services, namely, the provision of benefits for customers conducted in the course of retail and wholesale business.

(ii) Duration of a trademark right

The period of a trademark right is ten years from the date of registration of the trademark right.

The period may be renewed every ten years.

(iii) Outline of procedures for obtaining a trademark right

An outline of the procedures for the registration of a trademark is displayed at the following URL:

http://www.jpo.go.jp/cgi/linke.cgi?url=/tetuzuki_e/t_gaiyo_e/tr_right.htm

9-2. How is a procedures for obtaining a trademark right?

An outline of the procedures for registration of a trademark is displayed at the following URL:

http://www.jpo.go.jp/cgi/linke.cgi?url=/tetuzuki_e/t_gaiyo_e/tr_right.htm

9-3. What should I know before I file a trademark application?

First of all, you should know the "First to File" principle.

According to Article 8 of the Trademark Act, when two or more applications are filed on different dates to register an identical or similar trademark used for identical or similar goods and services, only the applicant who filed the application first will be entitled to register that trademark. This is called the "First to File" principle. This means that if any other applicants file applications for the identical or similar trademark used for identical or similar goods and services after the first applicant has applied, those later applications will be refused.

Therefore, before filing a trademark application, please be sure to search prior trademarks to see if identical or similar trademarks have been registered by other applicants.

Please also note that even if no trademark applications have been filed earlier or if no registered trademarks exist, your trademark still might not be able to be registered if it corresponds to either of the trademarks stipulated in Article 3 and Article 4(1) of the Trademark Act. In addition, the "Examination Guidelines for Trademarks" is helpful for letting you know what kinds of trademarks cannot be registered.

Examination Guidelines for Trademarks:

http://www.jpo.go.jp/cgi/linke.cgi?url=/tetuzuki_e/t_tokkyo_e/tt1302-002.htm

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

9-4. How can I renew my trademark registration?

A trademark right expires 10 years from day on which the trademark was registered.

You can renew your trademark right by filing a request for renewal six months before the trademark right expires. You need to pay the renewal fee at the same time you request to renew your trademark right.

Please note

See FAQ 4-1: "How much are the fees? and refer to section 3. "Annual fee/ Registration fee"

9-5. Can I pay my registration or renewal fees in installments?

The renewal fee can be paid in two installments as well, one for the first five years and the next for the last five years, in the same way that you can pay registration fees.

When paid over installments, however, the amount of the renewal fee ends up being higher than if it were paid all at once.

Please note

See FAQ 4-1: "How much are the fees? and refer to section 3. "Annual fee/ Registration fee"

9-6. How can I file an opposition?

If you would like to raise an opposition against a trademark registration, you can file an opposition against that registration within two months from the date on which the Gazette containing the trademark was published. You need to state that your opposition is based on the grounds that the trademark lacks the requirements needed for the trademark to be registered. (This is based on Article 43-2 of the Trademark Act.)

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 any procedures directly with the JPO and must appoint a representative in Japan. (This same type of provision applies 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 your representative about the procedures in detail.

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

●PCT

10-1. How can I have my PCT international application entered into the national phase in Japan?

(i) Time limit for having your PCT application entered into the national phase in Japan

The time limit for having your PCT application entered into the national phase in Japan is 30 months from the priority date.

In order to have your PCT application entered into the national phase in Japan, you have to submit Japanese translations of the description, claims, drawings (when explanatory text is included in the drawings) and an abstract of your PCT international application to our office within 30 months from the priority date and special transmittal form (form No.53) is available for such submission.

This 30-month time-limit is referred to as the "time limit for submitting national documents" (see the WIPO´s "PCT Applicant´s Guide <PDF 119KB>").

However, if you submit Form 53 anytime within two months prior to the expiration of the "time limit for submitting national documents" (i.e. during a period from the beginning of the 29th month to the end of the 30th month from the priority date), you may submit the translations within two months from the date on which you submitted Form 53. This will hereinafter be referred to as the “special time limit for submitting translations”. If the translations have not been submitted to our Office within the time limit, your PCT application will be deemed to have been withdrawn in Japan.

(ii) National fee (as of April 1, 2012)

The fee is JPY 15,000 (to have your application entered into the national phase in Japan).

Please note

(iii) Representative

In principle, under Article 8 of the Patent Act all procedures by non-residents of Japan have to be completed by an appointed representative residing or domiciled in Japan because non-residents cannot conduct any procedures directly with our office. However, the submission of Form 53 by applicant domiciled oversea may be allowed without a representative in Japan under Article 184-11(1) of the Patent Act.

A representative in Japan must be appointed and the notification of power of attorney must be filed with the JPO within three months after the expiration of the "time limit for submitting national documents" or the "special time limit for submitting translations" (if applicable). Please note that your PCT application will be deemed to have been withdrawn in Japan if you have not appointed a representative in Japan within the time limit.

^* If you submit a request for examination before the "time limit for submitting national documents" or "special time limit for submitting translations" has expired, you have to appoint a representative in Japan within three months after the request for examination.

(iv) How to submit documents to our Office

You may submit Form.53 directly to our Office by postal mail service. The mailing address is as follows:

Japan Patent Office

3-4-3, Kasumigaseki, Chiyoda-ku, Tokyo 100-8915, Japan

There is an electronic online system for entering the Japanese national phase, however, the system is available only for those applicants or representatives in Japan who have carried out the necessary registration proceeding at the JPO in advance.

Please note that the documents for entering in to the national phase have to reach our office by the "time limit for submitting national documents". In other words, this means within thirty (30) months from the priority date or “special time limit for submitting translations”, if applicable^*.

^*You cannot submit Form 53 by e-mail or fax.

(v) Time limit for requesting examination

For your PCT application that has entered into the national phase in Japan, you have to submit a request for examination, using Form No.44, This must be done through your representative within three years of the international filing date of your PCT international application.

To find out about the fees you need to pay to request an examination, please refer to FAQ 4-1: "How much are the fees?"

Patent fees are the same for both international and national applications:

Please also see FAQ 4-1: "How much are the fees?" for this also.

(vi) Others

Please refer to “How to advance PCT international applications into the national phase in Japan” and the "PCT Applicant´s Guide" on the WIPO website for details on relevant procedures.

http://www.wipo.int/pct/guide/en/gdvol2/annexes/jp.pdf <PDF 124KB>

10-2. How can I acquire rights in Japan sooner by utilizing the PPH program for PCT applications?

After your PCT application enters the national phase in Japan, you will have to request for accelerated examination under the Patent Prosecution Highway (PPH) program after submission of an examination request until starting of the substantial examination.

In case of PCT application, you can apply for accelerated examination by using positive results of a written opinion prepared by the certain International Searching Authority (WO/ISA), a written opinion prepared by the certain International Preliminary Examining Authority　(WO/IPEA) or an international preliminary examination report prepared by the certain International Preliminary Examining Authority (IPER/IPEA).

For detailed information about the PPH program, which uses PCT international work products, please refer to the following URL.

http://www.jpo.go.jp/torikumi_e/t_torikumi_e/pph_pct/pct_e.htm

Furthermore, you can apply for accelerated examination under the PPH program, using patentable result in the certain "Office of Earlier Examination (Office of First Filing)" or "designated countries".

For your reference, please also see FAQ 6-12: "What can I do to acquire rights in Japan sooner by using the PPH program?"

If you want to know how you can have your PCT application entered into the national phase in Japan, please refer to FAQ 10-1: "How can I have my PCT international application entered into the national phase in Japan?"

10-3. Can the Japan Patent Office restore my priority right as the designated office?

In accordance with PCT Rule 49: 3.2 (h), the Japan Patent Office has informed the International Bureau (IB) about the incompatibility between PCT Rule 49:3.2 and Japanese domestic law. As a result, it is not possible for the JPO to restore your priority right, even if you request for it.

In addition, the JPO has also notified the IB in accordance with PCT Rule 49: 3.1(g). Therefore, the Japan Patent Office as a designated office does not have the authority to restore the right of priority given by a receiving office.

Please refer to “PCT Reservations, Declarations, Notifications and Incompatibilities” on the WIPO website for further information:”

http://www.wipo.int/pct/en/texts/reservations/res_incomp.html

10-4. When are unexamined PCT applications, which have entered into the national phase of Japan, published?

The dates on which unexamined PCT applications are published will differ depending on the details of the PCT applications, the stage in which the applications are in terms of the application process, limitations in the capacity of the medium used, e.g. DVD-ROM , and other factors. However, the following provides a rough estimate of the anticipated schedule.

・Approximately two years after patent gazettes/PCT applications are published^*1

・Approximately two years after domestic patent gazettes/PCT applications have been republished^*1

^*1 Depending on the capacity of the DVD-ROM used, the period may vary by about two months, either earlier or later. Furthermore, the reason it takes more time to publish PCT applications compared to patent gazettes is due to the restriction in Article 23 of the PCT stating that publications are to be “30 months from the priority date” when entering the national phase.

●Madrid Protocol

11-1. What should I be aware of when I apply for trademark registration under the Madrid Protocol (Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks) designating Japan?

Please refer to the following URL for some notes you need to give attention to when you designate Japan in your international trademark registration.

http://www.jpo.go.jp/cgi/linke.cgi?url=/torikumi_e/t_torikumi_e/japan_under_the_madrid_protocol.htm

Especially, you have to pay attention to the payment of fees concerned with an international trademark registration designating Japan. Our Office has adopted an individual fee consisting of two parts in accordance with Rule 34(3)(a) of the Common Regulations under the Madrid Protocol.

Therefore, the first part of the individual fee, which corresponds to an application fee, will have to be paid at the time of international registration or the subsequent designation. The second part of the individual fee, which corresponds to a registration fee, will have to be paid within the prescribed period mentioned in the "NOTIFICATION OF SECOND PART OF INDIVIDUAL FEE" which will be issued with "STATEMENT OF GRANT OF PROTECTION". Both fees are to be paid directly to the International Bureau of the WIPO.

Please note that if the second part of the individual fee is not paid within the prescribed period, the designation of Japan in the international registration will be cancelled.

11-2. How can I refer to the notification of provisional refusal under the Madrid Protocol?

The Notification of Provisional Refusal is available in the ROMARIN database on the WIPO website at the following URL:

WIPO ROMARIN

http://www.wipo.int/romarin/

Please note the following when you respond to the Notification of Provisional Refusal. Under Article 8 of the Patent Act of Japan, applicants who do not reside or who are not domiciled in Japan cannot directly conduct any procedures with the JPO. Applicants falling under this circumstance have to appoint a representative in Japan, such as a patent attorney. For your information, this same article applies accordingly to trademarks and other rights based on their respective laws. We also recommend that you consult with your representative about the procedures in detail.

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

11-3. How can I respond to a “Notification of Provisional Refusal” with regard to my international trademark application under the Madrid Protocol?

You can respond to a “Notification of Provisional Refusal” with regard to your international trademark registration by one of the following two measures:

i) submitting an amendment (to adjust the designated goods or services to comply with the Notification of Provisional Refusal) to our Office through a representative (it is strongly recommended that you appoint a patent attorney) who has a permanent address or residence in Japan within three months from the “date of pronouncement“ (i.e., the mailing date of the notification) or

ii) filing a request for a limitation of goods and services using the official form (MM6) with the prescribed fee with the WIPO.

For detailed information, please refer to the following URL.

http://www.jpo.go.jp/torikumi_e/t_torikumi_e/japan_under_the_madrid_protocol.htm#5

11-4. What will happen if I don’t respond to a Notification of Provisional Refusal?

If you do not respond at all to the Notification of Provisional Refusal, or if you do not resolve the reasons of refusal stated in the Notification of Provisional Refusal, the trademark application will be refused. In this connection, the JPO will send the Decision to Refuse a trademark registration to you.

If you are not satisfied with the decision, you will be able to demand an appeal trial against the decision any time within 3 months after the date of the Decision to Refuse a Trademark Registration was sent. A demand for an appeal trial will have to be made through your representative who resides in Japan.

If you do not demand for an appeal trial within the 3-month period, or if you are not successful in an appeal trial, the JPO will send a Confirmation of Total Provisional Refusal to the International Bureau (IB) of the WIPO, which will subsequently send the Refusal Confirmation to you.

Please refer to Articles 3, 4, and 69-2 of the Trademark Act.

http://www.japaneselawtranslation.go.jp/law/detail/?id=45&vm=04&re=01

See also General Information on the Madrid System on the WIPO website.

http://www.wipo.int/madrid/en/general/

11-5. Why haven't I received a certificate of registration with respect to Japan, even though I already registered the trademark under the Madrid Protocol?

The JPO also issues certificates of registration with respect to Japan for trademarks that were registered under the Madrid Protocol. However, the certificate of registration is normally sent to your representative in Japan, so you should ask your representative in Japan about this.

In case a certificate of trademark registration cannot be delivered to a representative in Japan and is returned to the Japan Patent Office for any reason, the Japan Patent Office will then send the certificate to the representative handling the international phase.

11-6. Why haven't I received the Notification of Second Part of Individual Fee?

The International Bureau (IB) of the WIPO handles all matters related to the payment of the second part of the individual fee (registration fee). In addition, the “Notification of Second Part of Individual Fee” is supposed to be sent from the IB to either rights-holders or their representatives.

If you have not received the notification, please contact the IB directly or contact your representative.

Please note that if you do not pay the second part of the individual fee to the IB by the deadline^*, your international trademark registration with respect to Japan will be cancelled in the International Register.

^*The deadline is within three months from the mailing date when the JPO sends out the Statement of Grant of Protection.

The following URL shows how to pay the fee directly to the IB of the WIPO.

http://www.wipo.int/madrid/en/fees/about_fees.html

11-7. What should I do if I miss the deadline to pay the second part of individual fee?

If you don’t pay the second part of the individual fee by the deadline written on the “Notification of Second Part of Individual Fee” sent to you, your international trademark registration with respect to Japan will be cancelled. There is no provision enabling you to make “late payments”.

However, if you still would like to register your trademark in Japan, you can submit form MM4 to the International Bureau of the WIPO, without having to go through the entire process of re-registering your trademark under the Madrid Protocol. Form MM4 is titled “Designation Subsequent to the International Registration” and can be found on the WIPO’s website, as noted below. However, please note that the filing date of your international trademark in Japan will be the date on which you submit the subsequent designation.

For details, please refer to the following the WIPO webpage.

http://www.wipo.int/madrid/en/filing/subsequent_designation.html

Form MM4 can be found in the following URL.

http://www.wipo.int/madrid/en/forms/

●Appeals and Trials

12-1. What is a trial for invalidation?

A “trial for invalidation” is a means established to legally invalidate a patent right (or a utility model right, design right, or trademark right) that was granted for an invention (or trademark, etc.), but which should have been rejected by law. Under such circumstance, a trial for invalidation declares that the patent right or registration right never existed in the first place.

Patent rights and other rights that were invalidated are regarded to have never existed and the validity of such rights will be extinguished retroactively to the time when such rights became effective.

Please note that under Article 8 of the Patent Act, persons who do not live or who are not domiciled in Japan cannot conduct any procedures directly with the JPO and must appoint a representative in Japan. (This provision also applies 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 your representative about the procedures in detail.

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

12-2. What is an appeal against an examiners' decision of refusal?

In general, when people disagree with legal judgments they generally file a lawsuit in a court of law. However, in order for applicants to correct any errors that they feel occurred in their examination process, and which ultimately led to a decision of refusal, an “appeal/ trial” system was set up under the Patent Act, Design Act, and Trademark Act to respond to these cases. Applicants who wish to contest a decision of final refusal, which they consider to have been determined in error, are required to file an appeal against the examiner’s decision of refusal to the Japan Patent Office instead of filing a lawsuit in a court of law. This action is called an appeal against an examiner’s decision of refusal.

An applicant can file an appeal against an examiner’s decision of refusal to the Japan Patent Office within 3 months from the day on which a certified copy of the decision of final refusal is received. (This is based on Article 121 of the Patent Act, Article 46 of the Design Act, and Article 44 of the Trademark Act)

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

●Others

13-1. What is the responsibility of the JPO? Is the JPO also responsible for the protection of copy rights?

The Japan Patent Office (JPO) is responsible for the protection of the rights for patents for inventions, utility models for devices, industrial designs and trademarks. In Japan, these four kinds of rights are called “industrial property rights.” You can send queries about industrial property rights in Japan to the following e-mail address or fax number:

E-mail address for inquiries to the JPO:PA0842@jpo.go.jp

Fax number: (03) 3581 0762 (+81 3 3581 0762 from overseas)

In order to avoid unexpected misunderstandings in conversations over the phone, please contact us by e-mail or fax in English or Japanese.

Meanwhile, the JPO is not responsible for copy right. If you have any queries about copyright, please contact the Agency for Cultural Affairs, Ministry of Education, Culture, Sports, Science and Technology (MEXT).

The Agency for Cultural Affairs,

Ministry of Education, Culture, Sports, Science and Technology (MEXT)

3-2-2 Kasumigaseki, Chiyoda-ku, Tokyo 100-8959

Tel. (03) 5253 4111(main line) (+81 3 5253 4111 from oversees)

e-mail: voice@bunka.go.jp

URL: http://www.bunka.go.jp/english/index.html

13-2. How can I obtain a copy of the Patent Act and other Acts?

Please refer to the following URL for the Patent Act, Utility Model Act, Design Act and Trademark Act in English.

Patent Act:

http://www.japaneselawtranslation.go.jp/law/detail/?id=42&vm=04&re=01

Utility Model Act:

http://www.japaneselawtranslation.go.jp/law/detail/?id=43&vm=04&re=01

Design Act:

http://www.japaneselawtranslation.go.jp/law/detail/?id=44&vm=04&re=01

Trademark Act:

http://www.japaneselawtranslation.go.jp/law/detail/?id=45&vm=04&re=01

Japanese Law Translation offered by Ministry of Justice

http://www.japaneselawtranslation.go.jp/?re=02

13-3. Where can I purchase Japanese patent data?

You can obtain Published Registered Utility Model Applications, Published Registered Design Applications,Published Registered Trademark Applications and Published Unexamined/International Trademark Applications on the Official Publications page of the JPO website for free.

The URL is below.

http://www.publication.jpo.go.jp/utility/do/usr/topmenu?lang=e

In addition, the Japan Patent Information Organization (JAPIO) sells Patent Abstracts of Japan (PAJs) To purchase PAJs, please contact the Japan Patent Information Organization (JAPIO):

https://regist02.smp.ne.jp/regist/is?SMPFORM=rcr-lekbo-7fce48a14ae5206f268a5741ade48c46

The Japan Patent Information Organization (JAPIO) sells patent documents, except publication, in CD format also.

Please refer to the following URL for details:

http://www.japio.or.jp/english/service/index.html

To find out more about purchasing and the methods of payment to acquire patent information products, please contact the Japan Patent Information Organization (JAPIO):

https://regist02.smp.ne.jp/regist/is?SMPFORM=rcr-lekbo-7fce48a14ae5206f268a5741ade48c46

For inquiries about information other than making purchases, please contact the Information Dissemination and Policy Promotion Division of the Japan Patent Office:PA0620@jpo.go.jp

<Contact Point>
Foreign Advisory Unit
International Cooperation Division
General Affairs Department
Japan Patent Office
Fax:+81-3-3581-0762
E-mail：PA0842@jpo.go.jp

[Last updated 8 August 2013]

HOME >

Frequently Asked Questions (FAQs)

●How to apply for a patent, a utility model, industrial design, trademark to the Japan Patent Office

●Other procedures for a patent, a utility model, industrial design, trademark to the Japan Patent Office

●Forms for an application and other procedures

●Fees

●Searching for Patents, Utility Models, Designs, Trademarks

●Patent

●Utility Model

●Design

●Trademark

●PCT

●Madrid Protocol

●Appeals and Trials

●Others

●How to apply for a patent, a utility model, industrial design, trademark to the Japan Patent Office

1-1. Should I search for prior art before applying for a Patent?

1-2. How do I apply for a patent right if I am outside Japan? (or for a utility model, industrial design, or trademark right)

(i) First prepare the application forms

(ii) Appoint a representative in Japan

1-3. How can I prepare application forms?

[for patents]

(i) Required documents

(ii) Carefully prepare specifications

(iii) Focus on filing an application containing valuable claim(s)

(iv) Appoint a representative (Patent Administrator)

[for utility models]

(i) Required documents

(ii) Carefully prepare a specification

(iii) Appointment of a representative (Patent Administrator)

[for industrial designs]

(i) Required documents

(ii) To carefully prepare an application form and drawings

(iii) Appointment of a representative (Patent Administrator)

[for trademarks]

(i) Required documents

(ii) Appointment of a representative (Patent Administrator)

1-4. Should I appoint a patent attorney as my representative to apply for a patent, a utility model, industrial design, trademark to the Japan Patent Office from overseas?

1-5. Should I submit a power of attorney?

1-6. How can I get a list of patent attorneys in Japan?

1-7. If I live in Japan, do I need to appoint a representative in order to apply for a patent? (or utility model, industrial design or trademark registration)

1-8. May I file a patent application with the JPO that has been completed in English instead of Japanese?

1-9. How can I submit an application or other documents?

(i) bringing them directly to the counter at our Office

(ii) mailing them to the following address;

(iii) online (Internet)

1-10. Is there any database that I can use to search for patents, utility models, industrial designs, or trademarks?

1-11. Who may be an applicant?

1-12. Do I have to submit a power of attorney when I file a patent application?

1-13. What should I do to obtain a patent or register a utility model, an industrial design or a trademark/service mark?

●Other procedures for a patent, a utility model, industrial design, trademark to the Japan Patent Office

2-1. Is it necessary for me to file a request for examination with the JPO after I have submitted my patent application?

2-2. Can I have information on registration of right?

(i) Patent

(ii) Utility Model

(iii) Industrial Design

(iv) Trademark

2-3. What happens when a deadline falls on a weekend or public holiday?

2-4. Can I change the applicant in a pending application?

2-5. In order to assign my patent right in Japan to another party, what am I required I do?

●Forms for an application and other procedures

3-1. Are there any sample application forms for patents, utility models, industrial designs, and trademarks?

●Fees

4-1. How much are the fees?

4-2. Can I make a payment of official fees directly to the JPO from overseas?

4-3. What do I do about annual fees?

(i) for patents

(ii) for utility models

(iii) for designs

(iv) for trademarks

4-4. Can I have information on duration of right and time limit for payment of patent/registration fee?

(i) Patent

(ii) Utility Model

(iii) Industrial Design

(iv) Trademark

4-5. May I request a refund of the examination request fee if I withdraw or renounce my patent application?

4-6. Can I pay my registration or renewal fees in installments?

4-7. How much are the fees for bringing my PCT international application into the national Phase in Japan and the relevant fees?

(i) National fee

(ii) Fee for requesting examination

(iii) Patent fee