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?
• 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?

 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“Request for Examination” is not submitted within the prescribed period, the patent application is deemed to have been withdrawn in Japan.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"

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

 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

 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?").