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Q&As on the System for Non-Disclosure of Patent Applications

Japan Patent Office

From May 1, 2024, the System for Non-Disclosure of Patent Applications (hereinafter referred to as “the System”) will be implemented based on the Act on the Promotion of Ensuring National Security through Integrated Implementation of Economic Measures, commonly known as the Economic Security Promotion Act. This page will provide detailed explanations in a Q&A format, focusing on the specific operations and procedures of Primary Review and Prior Confirmation Regarding Prohibition of Foreign Applications conducted by the JPO under the System. In addition, please refer to the Cabinet Office website (linked to an external site. Japanese only) for Q&As regarding the entire system, including the Primary Review and Prior Confirmation Regarding Prohibition of Foreign Applications, where applicable.

List of Questions

1.Primary Review

2. Procedure for Prior Confirmation Regarding Prohibition of Foreign Applications

3.Other systems

Answers

1.Primary Review

1-1. Do I need to follow any special procedures or make any payments for a primary review?

No, a primary review is conducted for all national applications filed, except those that entered into the national phase via the PCT system. Therefore, there is no special procedure to follow or fee to pay for a primary review.

1-2. Can I file a request for examination and proceed with the patent examination process while a primary review is being conducted?

Yes, you can file a request for examination of the patent application and proceed with the patent examination process during a primary review. However, during a security review, the decision to grant a patent and the decision of refusal are suspended (even if a security designation is made following a security review, these decisions remain suspended until the security designation period has elapsed or the security designation has been canceled). Other procedures, except decision to grant a patent and decision of refusal, may continue while these decisions are suspended.

1-3. Can I bypass a primary review?

No, a primary review cannot be bypassed. All national applications are subject to a primary review, except those that entered into the national phase via the PCT system.

1-4. Are patent applications that have entered the national phase via the PCT system subject to a primary review?

No, according to Article 66(5) of the Economic Security Promotion Act, patent applications that entered into the national phase via the PCT system are not subject to a primary review.

1-5. Are patent applications claiming internal priority, patent applications that serve as a basis of internal priority, divisional patent applications, applications to register a patent term extension, and applications for utility model registration subject to a primary review?

Patent applications claiming internal priority, those serving as a basis of internal priority, and divisional patent applications are subject to a primary review. However, applications to register a patent term extension and applications for utility model registration are not subject to a primary review.

1-6. Are converted patent applications from applications for utility model registration or for design registration and patent applications based on utility model registration subject to a primary review?

Yes, converted patent applications from applications for utility model registration or for design registration and patent applications based on utility model registration are also subject to a primary review.

1-7. How do I request to seek a security review?

To request to seek a security review, please submit a “Request for a Security Review” form along with your patent application. This form will ensure that the information pertaining to the invention will be subject to a security review, whether or not the invention belongs to the specified technology field, unless it is found to be obviously unnecessary to proceed with a security review in light of the relevant invention’s technology level, characteristics, or disclosure status.

1-8. What information should be included in a “Request for a Security Review” form?

Please review the form (PDF:189KB). For details on how to submit online, please see the Electronic Application Software Support Site (link to an external site. Japanese only).

1-9. Can I submit a “Request for a Security Review” form online?

Yes, you can submit the form online through the "Online Filing Function" in the internet application software.

1-10. Is there a deadline for submitting a “Request for a Security Review” form?

Yes, a request for a security review must be filed with the patent application (a request filed on the same day as the patent application will be considered as filed with the application). Requests filed after the day following the filing date will not be accepted. It is not acceptable to file the request included in the patent application. Therefore, please be sure to file the request using the prescribed form.

1-11. In cases involving two or more applicants, can only some of the applicants request a security review?

No, all applicants must jointly request for a security review since it could affect subsequent processes. If only some of the applicants request it, a notice to seek confirmation from all applicants’ intentions will be issued. In cases where an agent has been assigned, the agent may proceed with the request on behalf of all applicants.

1-12. In cases of deficiencies in the procedures for a request for a security review, will an order of the amendment of procedures or a dismissal of procedures be issued?

For deficiencies in the procedures for a request for a security review, instead of issuing an order of the amendment of procedures or a dismissal of procedures under the Patent Act, a notice will be sent to address the procedural deficiencies. In particular, if a request for a security review is made by only some of the applicants, a notice will be sent for requesting confirmation of the intentions of all applicants. To this end, a response to the notice in the form of a written statement or similar will be required. Failure to resolve the deficiencies will result in denial of the request.

1-13. Can I request for my invention to be exempt from a security review?

No, in the course of a primary review, the determination of whether the invention is subject to a security review is made automatically in accordance with the International Patent Classification, etc. Therefore, even if you prefer the relevant invention to be exempt from a security review, it will undergo a security review in case it meets the requirements.

1-14. If I list a classification within the specified technology field in the “International Patent Classification” column on the patent application, will it undergo a security review? If I list only a classification outside the specified technology field, will it definitely be exempt from a security review?

In the course of a primary review, the determination of requirements such as whether an invention belonging to the specified technology field is stated, is not based on the column of International Patent Classification on the application form. Instead, it is based on the content of the description, claims, or drawings attached to the application. Therefore, just because you list a classification within the specified technology field in the column of "International Patent Classification", it does not mean that it will necessarily undergo a security review, and conversely, just because you list only a classification outside the specified technology field, it does not mean that it will definitely be exempt from a security review.

1-15. How do I find out the result of a primary review?

1. In cases where it was determined necessary to send relevant documents to the Cabinet Office, (i.e., to undergo a security review) following a primary review:

Within three months after "the filing date of the patent application" (although it may take longer to reach the applicant by registered mail), a notice will be sent informing the applicant that the relevant documents have been sent to the Cabinet Office. By receiving this notice, you will find out the result of the primary review.

“The filing date of the patent application” will be the date on which the translation is submitted for "foreign-language application" provided in Paragraph 2 of Article 36bis of the Patent Act. It will be also the date on which an original patent application is divided for a new patent application provided in Paragraph 1 of Article 44 of the Act, and it will be the date on which an original application is converted to a patent application for the case of conversion of applications provided in Paragraph 1 of Article 46 of the Act.

2. In cases where it was determined not necessary to send relevant documents to the Cabinet Office, (i.e., not to undergo a security review) following the primary review:

You may find out the result of the primary review by one of the following methods:

    (1) Confirming that a notice informing the applicant that the relevant documents have been sent to the Cabinet Office has not been issued by the end of approximately three months after the filing date of the patent application.

    - If a determination to send documents to the Cabinet Office is made, a notice will be issued within three months after the filing date of the patent application (although it may take longer to reach the applicant by registered mail). If no notice is received by that time, it means that the invention was not subject to a security review.

  • (2) Submitting a “Request for Notification Concerning the Determination Not to Send Relevant Documents” form to receive a notice of the determination not to send documents.

    - Once a “Request for Notification Concerning the Determination Not to Send Relevant Documents” form is submitted, where the relevant documents have not been sent to the Cabinet Office, an explicit notice to that effect will be issued. This procedure is not mandatory. This procedure is only necessary for those who wish to receive explicit notice from the JPO, even if the relevant documents have not been sent to the Cabinet Office.

1-16. What is the effect of the submission of a “Request for Notification Concerning the Determination Not to Send Relevant Documents”?

Foreign applications stating certain inventions may be prohibited (see section 8-1 of the Q&A on the system for non-disclosure of patent applications on the Cabinet Office's website for details). However, for these inventions, if an application is filed nationally in Japan and the invention does not undergo a security review (i.e., is not sent to the Cabinet Office following a primary review), the prohibition of foreign applications will be lifted, permitting foreign applications to proceed.

As mentioned in the answer to the previous question, the method of answer 2(1) to the previous question makes it possible to confirm that the invention is not subject to a security review. In addition, using the method of answer 2(2) to the previous question ensures that subsequent foreign applications will not be prohibited upon receiving a notice of determination not to send documents (even if less than three months have elapsed since filing).

In addition, for inventions that are inherently exempt from the prohibition of foreign applications (i.e., those that, if filed in Japan, would be deemed not to belong to the specified technology field or would not meet further requirements in the field subject to the further requirements in the course of a primary review), filing a patent application in Japan solely to confirm this exemption is not necessary. Moreover, even if a patent application is filed in Japan first, foreign applications can proceed without waiting for the result of a primary review.

1-17. Can I receive a notice online informing the applicant that the documents have been sent to the Cabinet Office?

No, a notice that the relevant documents have been sent to the Cabinet Office will be sent by registered mail, not online. This ensures guaranteed delivery to the applicant, considering the importance of the notice for the subsequent procedures and the need to respond to a security review.

1-18. To whom will a notice informing the applicant that the documents have been sent to the Cabinet Office be sent?

In cases involving an agent, the notice will be sent to the agent. If no agent is assigned, it will be sent directly to the applicant. If an applicant has two or more agents, the notice will be sent to the lead agent. In cases involving two or more applicants but no agents, it will be sent to all applicants. If two or more applicants each have their own agent, the notice will be sent to each of their lead agent.

1-19. What information should be included in a “Request for Notification Concerning the Determination Not to Send Relevant Documents” form?

Please review the form (PDF: 189KB). For details on how to submit online, please see the Electronic Application Software Support Site (link to an external site. Japanese only).

1-20. Can I submit a “Request for Notification Concerning the Determination Not to Send Relevant Documents” form online?

Yes, you can submit the form through the “Online Filing Function” in the internet application software.

1-21. Is there a deadline for submission of a “Request for Notification Concerning the Determination Not to Send Relevant Documents” form?

This form must be submitted within three months from filing the patent application because the results of the primary review will be available by then.

1-22. In cases involving two or more applicants, can only some of the applicants make a request for notification concerning the determination not to send relevant documents?

Submitting such a request will only result in an explicit notification to that effect, where the relevant documents are not sent to the Cabinet Office following a primary review. This action will not affect the subsequent process and may therefore be initiated by only some of the applicants.

1-23. In case of deficiencies in the procedures for a request for notification concerning the determination not to send relevant documents, will an order of the amendment of procedures or a dismissal of procedures be issued?

Unlike procedures under the Patent Act, no order of the amendment of procedures or a dismissal of procedures will be issued on a Request for Notification Concerning the Determination Not To Send Relevant Documents; instead, you will receive a notice to correct any procedural deficiencies. If the corrections are not made, the request cannot be accepted.

1-24. Can I receive a notification online concerning the determination not to send relevant documents?

Yes, you can use the Internet Application Software to receive the notice online.

1-25. Is power of attorney required when an agent submits a request for a security review or a request for a notification concerning the determination not to send relevant documents?

Power of attorney is not required for a request for a security review and a request for a notification concerning the determination not to send relevant documents.

1-26. Can I submit a request for a security review or a request for a notification concerning the determination not to send relevant documents for PCT applications after entry into the national phase?

No, you cannot submit such requests for PCT applications after entry into the national phase, since no primary review or security review is conducted on these applications.

1-27. Where an invention is associated with the results of technology-related research and development that the State has entrusted to another person etc., which falls under the requirements provided by the Cabinet Order (i.e., further requirements), do I need to declare it at the time of filing a patent application?

In the column of “Description of matters related to research entrusted by the national government and others” in the application form, please specify as “patent application subject to Article 17(1) of the Industrial Technology Enhancement Act, XX entrusted project (or subcontracted project), the Ministry of XX, 20XX.”

Back to List of Questions

2. Procedure for Prior Confirmation Regarding Prohibition of Foreign Applications

2-1. Which types of foreign applications are subject to the prohibition of foreign applications?

Foreign applications, including PCT applications, describing inventions made in Japan, that have not been made public and are subject to security review if those are filed in Japan, as specified in Article 66(1) of the Economic Security Promotion Act.

2-2. Is filing a PCT application without claiming priority, i.e., a “direct PCT application”, considered prohibited?

Foreign applications prohibited under Article 78 of the Economic Security Promotion Act also include PCT applications. However, inventions subject to the prohibition of foreign applications are limited to those belonging to the specified technology field designated by the Cabinet Order when inventions made in Japan and not been made public. (For inventions in the technology field that also require additional requirements to be met, only those inventions that also meet these additional requirements are included. Hereinafter the same applies). Inventions belonging to the specified technology field are subject to penalties if filed in foreign countries, so caution is advised for inventions where you are uncertain whether they belong to the specified technology field.

If a national application is filed, the JPO determines whether the invention belongs to the specified technology field in the course of a primary review, as provided in Article 66(1) of the same Act. Therefore, if you are uncertain whether the invention belongs to the specified technology field, filing a national application first is also an option. After filing the national application, if it is determined that the invention does not belong to the specified technology field, or if it is determined that there is no need to make a security designation as a result of a security review, a foreign application can be legally filed.

Alternatively, if you intend to file a foreign application without first filling a national application, you may use the system of prior confirmation regarding prohibition of foreign applications. However, this system does not scrutinize the need for security designation as thoroughly as a security review in the national applications. If it is determined through prior confirmation that the invention belongs to the specified technology field, filing foreign applications is prohibited unless it is “obvious that making the invention public will not impact the security of the nation and its citizens.”

2-3. What information should be included in a “Request for Prior Confirmation Regarding Foreign Applications” form?

Please review the form (PDF: 189KB). Where you submit several requests on the same day, you are advised that you write down the individual reference number on each form.

2-4. Can I submit a “Request for Prior Confirmation Regarding Foreign Applications” form online?

No, the form cannot be submitted online. Please send it by mail or visit the JPO counter to submit it.

2-5. Do I need pay a fee to submit a request for prior confirmation regarding foreign applications?

Yes, a fee of 25,000 yen in revenue stamps is required.

2-6. Can I pay the fee with patent revenue stamps when submitting a request for prior confirmation regarding foreign applications?

No, unlike the procedure under the Patent Act, payment must be made with revenue stamps, not patent revenue stamps.

2-7. How is the response to a request for prior confirmation regarding foreign applications notified?

If an agent is involved, the response will be sent to that agent; if not, it will be sent directly to the requester. If an applicant has two or more agents, the response will be sent to the lead agent. In cases involving two or more requesters without an agent, the response will be sent to all of them. If two or more applicants each have their own agent, the response will be sent to each of their lead agent.

2-8. How long will it take to receive a response after submitting a request for prior confirmation regarding foreign applications?

In most cases, a response will be sent approximately ten working days after the JPO receives the written request. However, if the description of the invention is exceptionally long and detailed, etc. it may take longer.

2-9. Should patent claims be described in a document stating the details of the invention attached to a “Request for Prior Confirmation Regarding Foreign Applications” form?

It is preferable to include documents indicating the intention to file foreign applications (with Japanese or English translations if the documents are not written in Japanese or English) along with the patent claims in a “Request for Prior Confirmation Regarding Foreign Applications” form. However, describing the patent claims is not mandatory.

2-10. If I have previously submitted a request for prior confirmation regarding foreign applications and received a response stating that the invention does not fall under the prohibition of foreign applications, but I make some changes to the content of the documents before filing a foreign application, would this still be considered a case under the prohibition of foreign applications?

For inventions determined not to belong to the specified technology field in the prior confirmation regarding foreign applications, it does not constitute a violation of the prohibition of foreign applications to include the inventions in a foreign application. However, changes made to the content after the prior confirmation regarding prohibition of foreign applications are not guaranteed to remain outside the scope of the prohibition of foreign applications (i.e., they may not belong to the specified technology field).

2-11. If I intend to file a foreign application, but the invention may or may not fall under the prohibition of foreign applications and therefore I plan to file a patent application in Japan first. In this case, do I need to proceed with the procedure of prior confirmation regarding foreign applications in parallel?

No, you do not need to proceed with the procedure in parallel. The procedure for prior confirmation regarding foreign applications is to determine whether foreign applications are prohibited without filing a patent application in Japan. If you file a patent application in Japan, you may legally file a foreign application if it has not been sent to the Cabinet Office following a primary review at the JPO, or if it has been sent to the Cabinet Office following a primary review and has undergone a security review without a security designation, provided that all other necessary requirements are met. Therefore, please wait for the results of the primary review or security review.

2-12. If I want to file a foreign application for an invention that may or may not fall under the prohibition of foreign applications, I understand that I only need to either file a patent application in Japan or submit a request for prior confirmation regarding foreign applications. Will the result be the same regardless of which option I choose?

For inventions that may be subject to the prohibition of foreign applications, filing a patent application in Japan can lift this prohibition if it is confirmed that they do not require a security designation. This allows for filing the foreign application. Conversely, a request of prior confirmation regarding foreign applications may lead to a notice of prohibition of foreign applications, unless it is “obvious that making the invention public will not impact the security of the nation and its citizens due to actions taken from the outside”. In this respect, filing a patent application in Japan exempts a broader range of inventions from this prohibition of foreign applications compared to a request for prior confirmation regarding foreign applications (see Q&A 8-10 on the Cabinet Office’s website for details on the system for detailed information on the system for non-disclosure of patent applications).

On the other hand, except for a few cases, the JPO will respond to prior confirmation regarding foreign applications within approximately 10 working days of receiving the form, ensuring a prompt response compared to waiting for the results of a primary review or a security review after filing a patent application in Japan (if a patent application is filed in Japan, a primary review alone may take up to three months from the filing date, and if it proceeds to a security review, determination whether or not it falls under the prohibition of foreign applications may take up to ten months).

Note: you can obtain the filing date as a priority date at the time of filing a patent application in Japan, unlike the system of prior confirmation regarding foreign applications. If you would prefer keeping an earlier priority date, filing a patent application in Japan is necessary, even if the likelihood of being subject to prohibition regarding foreign applications seems low.

2-13. For an invention clearly exempted from the prohibition of foreign applications, which may be determined not to belong to the specified technology field or may not meet further requirements in the field subject to these requirements, do I need to file a patent application in Japan or proceed with the procedure of prior confirmation regarding foreign applications?

No, you do not need to take these steps. For inventions clearly exempted from the prohibition of foreign applications, you may file foreign applications without additional procedures at the JPO.

2-14. If an invention falls under the prohibition of foreign applications and has been filed in Japan before the System comes into effect, do I need to file a patent application in Japan or proceed with the procedure of prior confirmation regarding foreign applications in order to file foreign applications for the invention after the System comes into effect?

No, you do not need to take these steps. Inventions filed in Japan before the System comes into effect will not be subject to the prohibition of foreign applications, even after the System comes into effect.

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3.Other systems

3-1. Can I still use the accelerated and super-accelerated examination systems even after the System comes into effect?

Yes, you can still use them after the System comes into effect. Applications selected for accelerated or super-accelerated examination will proceed at an accelerated pace compared to the regular process, even after the System comes into effect. Although the decision of refusal and the decision to grant a patent are suspended during a security review or a security designation, expedited patent protection can be pursued, once it is determined that no security designation is required.

3-2. Are there any changes in the issuance process for priority documents and access codes?

In relation to the provisions of Article 78 of the Economic Security Promotion Act concerning the prohibition of foreign applications, during up to three months for a primary review at the JPO, priority documents, certified documents and access codes will not be issued for any patent applications. Priority documents, certified documents and access codes will be issued promptly upon completion of the primary review, provided that the relevant patent application is not sent for a security review. However, please note that a notification of access code does not replace the Notification Concerning the Determination Not to Send Relevant Documents (see section 1-16).

Only if the relevant patent application proceeds to a security review, priority documents, certified documents, and access codes will not be issued for up to ten months from the filing of the application until the completion of the security review. If no security designation is made, in principle, the JPO will notify you of the access code once it becomes available, and therefore, it is not necessary to request its issuance, However, if a security designation is made and the access code is required, please request its issuance.

Although utility model registration applications are not subject to primary review at the JPO or security review, in relation to the provisions of Paragraph 5 of Article 82 of the Act, access codes will be issued as soon as it is confirmed that no inventions for security designation are described in the utility model registration application. If it is confirmed that an invention for security designation is described and it is not registered, please request the issuance of the access code when you need it.

3-3. Will priority documents not be issued once a security designation has been made?

If a security designation is made for the relevant application, it will still be possible to file foreign applications for parts other than the invention for security designation, as the invention for security designation will become clear. In this case, a priority document will be issued in which the parts describing the invention for security designation are blacked out. The same applies when filing priority documents with foreign patent offices via the Digital Access Service (DAS).

In addition, if a priority document with blacked-out parts is sent to foreign patent offices, a document explaining the reasons for the blacked-out will be issued together with the priority document.

If an application is waivered, withdrawn, or dismissed in the course of its security review, the invention for security designation will not be clarified. Therefore, please note that the entire content of the invention will be blacked out in the priority document, if a priority certificate is requested for such an application.

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※This English translation is provisional, and the details may be revised after the official English translation of the law is published.

[Last updated 18 March 2025]

Contact

Contact details for Procedures for Primary Review and Prior Confirmation of Prohibition of Foreign Applications

Non-Disclosure General Affairs Section, Customer Relations Policy Division,
Trademark and Customer Relations Department

Phone: +81-3-3581-1101 Ext. 2628

Contact details for reviews for Primary Review and Prior Confirmation of Prohibition of Foreign Applications

Non-Disclosure Management Section, Administrative Affairs Division,
Patent and Design Examination Department

Phone: +81-3-3581-1101 Ext. 3126

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