Outline of Procedures Implemented due to the Accession to the Patent Law Treaty (PLT)

April 1, 2016
Japan Patent Office

The Act for the Partial Revision of the Patent Act and Other Acts (Act No. 55 of 2015) including provisions to implement the provisions of the Patent Law Treaty (PLT), which will come into force on June 11, 2016 for Japan, has come into force on April 1, 2016.
Accordingly, we hereby describe below the outline of the implemented procedures.

1. Definition of the requirements for according the filing date and correction to fulfill the requirements (Article 38-2 of the Patent Act)

In accordance with the provisions in Article 5 (1) of the PLT, the requirements for according the filing date of a patent application have been defined in the Patent Act. Also, when the requirements are not fulfilled, the applicant may now file the correction of the application to fulfill them.

The date on which the patent application form was submitted to the Japan Patent Office(JPO) shall be accorded as the filing date of the patent application, unless falling under one of the following: (1) when recognized that the patent application does not expressly contain an indication that the applicant intends to obtain a patent; (2) when recognized that the patent application does not contain an indication of the name of the applicant, or that the indication is not clear enough to identify the applicant; (3) when the patent application does not contain a part which on the face of it appears to be a description.

When falling under any one of the items from (1) to (3), the JPO will send a notification of that effect to the applicant. The applicant may file the correction of the application　within the period prescribed by the Ordinance for Enforcement of the Patent Act. The said period is two months from the date of notification or, when the applicant voluntarily files the correction of the application prior to receiving the notification, it is two months from the date when the application documents are received by the JPO.

If the correction of the application is filed, the date on which the correction was filed shall be accorded as the filing date of the patent application. However, if the applicant does not file the correction of the application despite the notification having been sent by the JPO, the said application shall be dismissed.

Meantime, according to the Article 5(2) of the PLT, with respect to foreign language written application under the Article 36-2(1) of the Patent Act, the relevant provision of the Ordinance for Enforcement of the Patent Act has been revised and the description, claims, texts in drawings and abstract may now be written in not only English but also any other language.

2. Patent application containing a reference to a previously filed application (Article 38-3 of the Patent Act)

In accordance with the provisions in Article 5 (7) of the PLT, a system has been adopted whereby the filing date is accorded under certain conditions even without a description, which should be attached to the patent application form.

The filing date shall be accorded even without a description attached to the patent　application form if the application form contains the indication to the effect that it is a patent application containing a reference to a patent application previously filed by the applicant (including applications filed in foreign countries), and also the indication of the application number, etc. of the said previously filed application, under the condition that the prescribed procedures will be conducted after the application is filed.

The prescribed procedures to be conducted after the filing include the submission of a description and necessary drawings within the period prescribed by the Ordinance for Enforcement of the Patent Act (i.e. within four months from the filing date). *The applicant needs to pay a fee of 14,000 yen when submitting the description and necessary drawings, besides the application fee of 14,000 yen.

3. Submission of missing parts of the description or drawings (Article 38-4 of the Patent Act)

In accordance with the provisions in Article 5 (5) and (6) of the PLT, a system has been adopted whereby missing parts of the description or drawings attached to an already filed patent application may be submitted when it is found that there are missing parts.

When finding that a part of the description or drawings attached to the already filed patent application is missing (hereinafter referred to as “missing part”), the JPO shall notify the applicant to the effect that he/she may submit the missing part. The applicant may submit the missing part only within the period prescribed by the Ordinance for Enforcement of the Patent Act. The said period is two months from the date of the notification (or, when the applicant voluntarily submits the missing part prior to receiving the notification, two months from the date on which the application documents are received by the JPO). The description and drawings for which the missing part has been submitted shall be deemed to have been filed by being attached to the application form.

When the applicant submits a missing part, in principle, the date of submission of the missing part shall be the filing date of the patent application. However, where the patent application, whose missing part was submitted, contains a priority claim and, furthermore, the missing part is included in full in the first application based on which the said priority claim is declared (in principle, the submission of a copy, etc. of the said first application is required), the filing date of the patent application shall be the date on which the application form was filed.

When the filing date shall be the date on which the missing part was submitted, the JPO will notify this to the applicant. The applicant may withdraw the submission of the missing part within one month the date of the notification.

4. Relief in respect of specified time limits (Article 5(3) of the Patent Act)

In accordance with the provision in Article 11(1) of the PLT, the applicant may now request for extension of a time limit specified by the provisions of the Patent Act, only within a certain period, even after the expiration of the specified time limit, except for those in the process of an appeal against the decision by an examiner.

For instance, with regards to the extension of a specified time limit by request before the expiration of the time limit (Article 5(1) of the Patent Act), the applicant may still request for the extension within two months even after the expiration of the specified time limit (This two-month period is prescribed by the Ordinance for Enforcement of the Patent Act).

*The time limit for requesting the extension after the expiration of a specified time limit is two months from the day following the last day of the said time limit even when the last day falls on a day when the JPO is closed, such as Saturdays, Sundays and national holidays.

*With regard to request for extension of a specified time limit after the expiration of the said specified time limit, the applicants need to pay a fee of 51,000 yen when requesting for extension of the specified time limit for responding to a Notification of Reasons for Refusal, and a fee of 4,200 yen when extending the specified period for responding to any other procedures.

*Similar procedures also apply to applications for a utility model registration (provisions of the Patent Act applied mutatis mutandis).

Please refer to the page below for details regarding the extension of the specified time limit for responding to a Notification of Reasons for Refusal.

Reference

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

5.Notification after the expiration of the submission time limit of the translation of a foreign language written application (Article 36-2(3) and (4) of the Patent Act)

In accordance with the provisions in Article 6(3) and (7) of the PLT, the applicant may now submit the Japanese translation of a foreign language written application, only within a certain period, even after the expiration of the submission time limit.

If the applicant does not submit the translation of a foreign language written application (Article 36-2(1) of the Patent Act) within the submission time limit [one year and four months from the filing date (or the priority date if a priority claim is declared)], the JPO will send a notification to the applicant. The applicant may submit the translation only within two months from the date of the notification (This two-month period is prescribed by the Ordinance for Enforcement of the Patent Act).

*If the applicant does not submit the translation within two months from the date of the above-mentioned notification, the application shall be deemed to have been withdrawn. When the application has been deemed to have been withdrawn, if there is a justifiable reason why the applicant did not submit the translation before the expiration of the time limit (i.e. where the applicant has failed to comply with the time limit and the Patent Office finds that the failure occurred in spite of due care required by the circumstances having been taken), the application may be reinstated. (This relief has been implemented by 2011 Amending Act.)

6.Notification after the expiration of the submission time limit for submitting a priority certificate (Article 43(6) and (7) of the Patent Act)

In accordance with the provisions in Article 6(5) and (7) of the PLT, the applicant may now submit a priority certificate for a patent application, only within a certain period, even after the expiration of the submission time limit.

Regarding patent applications claiming a priority right under the Paris Convention, the JPO will send a notification to the applicant after the expiration of the submission time limit of documents certifying a priority right (i.e. priority certificate), and the applicant may submit the priority certificate only within two months from the date of the notification (This two-month period is prescribed by the Ordinance for Enforcement of the Patent Act).

In addition, in accordance to the Article 13(3), the relevant provision of the Ordinance for Enforcement of the Patent Act has been revised and the applicant may now submit the priority certificate only within one month (two months for overseas residents) from the date on which the applicant received the certificate when he or she could not submit it by the submission time limit due to delayed issuance of the certificate and a certain conditions are fulfilled.

*Similar procedures will also apply to applications for a utility model registration (provisions of the Patent Act applied mutatis mutandis).

7.Notification after the expiration of the time limit for submitting a Notice of Appointment of a Patent Administrator for a PCT International Application (Article 184-11(3), (4) and (6) of the Patent Act)

In accordance with the provisions in Article 7 (2)(a) and (5) of the PLT, when an overseas resident does not notify the appointment of a patent administrator within the prescribed time limit with regards to an international patent application filed under the Patent Cooperation Treaty (PCT),which has entered into the national phase, the JPO will send a notification to the applicant. The applicant may now submit the notice only within two months from the date of the notification by the JPO (This two-month period is prescribed by the Ordinance for Enforcement of the Patent Act).

In addition, when the application is deemed to have been withdrawn due to the expiration of the two-month time limit mentioned above, under the provisions in Article 12 of the PLT, if there is a justifiable reason why the applicant did not submit the notice before the expiration of the two-month time limit (i.e. where the applicant has failed to comply with the time limit and the Patent Office finds that the failure occurred in spite of due care required by the circumstances having been taken), the application may be reinstated.

*Similar procedures will also apply to applications with regards to PCT international applications for a utility model registration (provisions of the Patent Act applied mutatis mutandis).

8.Direct procedures by an overseas resident (Article 8(1) of the Patent Act and Article 1 of the Order for Enforcement of the Patent Act)

In accordance with the provisions in Article 7 (2) (a) of the PLT, even an overseas applicant may file patent applications (except for divisional applications, conversion of applications, etc.) and some exceptional procedures directly without appointing a patent administrator to do so.

In addition, in accordance with the provisions in Article 7 (2) (b) of the PLT, even an overseas owner of a patent right may pay the patent annual fee from the fourth year onward directly without appointing a patent administrator to do so.

9.Submission by either one of the parties concerning a request for recordation of the transfer of patent right, etc. (Articles 18 and 38 of the Patent Registration Order)

In accordance with the provisions in Rule 16 (1) (a), etc. of the Regulations under the Patent Law Treaty, either one of the parties concerning a request for recordation of transfer of patent right, etc. may submit the request by himself or herself, given the condition that the documents prescribed by the Rule are attached (stipulated by the provisions in the Ordinance for Enforcement of the Patent Registration Order pursuant to the provisions in Article 18 of the Patent Registration Order).

In addition, in accordance with the provisions in Rule 15 (6), etc. of the Regulations under the Patent Law Treaty, a request for recordation with deficiencies may now be corrected to comply with the prescribed requirements.

*Similar procedures will also apply to requests for recordation concerning utility models, designs, and trademarks (provisions of the Patent Registration Order, etc. applied mutatis mutandis).

[Last updated 8 April 2016]

Contact

Customer Relations Policy Division, Trademark and Customer Relations Department, Japan Patent Office E-mail:PA1100@jpo.go.jp