SERVICE

Prosecution

Our ability to quickly translate our foreign clients’ amendments into Japanese, as well as our ability to translate office actions from Japanese quickly and concisely allows us to deal with prosecution matters better than most Japanese firms.

Annuity payments・Renewals

Our firm is also equipped to make the annuity payments on patents, utility models and designs. We routinely notify our foreign clients well before payment deadlines, and send reminders as necessary to avoid oversights.
Similarly, for trademark registrations we notify our clients before the renewal period begins, and send reminders to ensure that a registration does not unintentionally lapse.

Searches

Virtually all of our searches are handled in-house, to ensure client confidentiality. We employ state-of-the-art computers that link our office to the patent and trademark data distribution system, which provides quick and reliable access to documents published by the government. Our firm has access to search databases. Certified professional searchers handle all searches for our foreign clients.

Applications

Patent, design, utility model and trademark applications are the backbone of our firm. We believe we can provide faster, more efficient and higher quality application services for our international clients than most other firms because we do nearly all of our translations in-house.

Fees

We offer standard flat rate fees for services, allowing our clients to plan their budgets for intellectual property protection. Our location in Gifu, one of the main industrial corridors of Japan, allows our firm to offer reasonable fees.

Communication

We take pride in our unparalleled speed in responding to customer inquiries. Typically, we respond within one or two business days of receiving your inquiry.
In certain regions of Asia and Oceania, it is customary to respond to inquiries received in the morning before the end of the business day.
You can contact us via “CONTACT”.

Procedures for Obtaining a Patent Right

Filing Routes in Japan	There are two primary methods for filing a Japanese patent application. Direct Filing (including the Paris Convention Route) National Phase Entry (PCT Route)
Necessary Documents and Information	■Patent Application: -Direct filing: Name and address of the applicant for the patent (for corporations, the location of the head office) Name and address of the inventor(s) (If required) Power of attorney (may be submitted later) (If required) Exception to loss of novelty -For Paris Convention Priority Applications (Paris Convention Route): Additional requirements are as follows: Priority information (country, filing date, application number) Priority document (must be submitted within 16 months from the earliest priority claim date) or a DAS code Requires a patent application claiming priority under the Paris Convention priority within one year of the priority date. If not submitted within the period, the priority claim becomes invalid, and the application date will be the actual application date in Japan. -Foreign Language Written Applications: ＊There is also a system for foreign language written applications where the specification, claims, necessary drawings, and abstract can be submitted in English or other foreign languages. ■National Phase Entry into Japan (PCT Route):* National phase application must be filed within 30 months from the priority date. International application number or international publication number of PCT application Bibliographic information and amendments if Article 19 or Article 34 amendments were made during the international phase (If required) Request for exception of loss of novelty (Power of Attorney: may be filed later) In the case of non-publication; The name and the address of the applicant for the patent (for corporations, the location of the head office) The name and the address of the inventor(s) Specification (title of the invention, brief description of the drawings, detailed description of the invention) Claims, necessary drawings (Clear copies acceptable), and abstract
Translation	A special period for submitting translations exists under certain conditions Foreign Language Written Applications: The Japanese translation of a foreign language written applications must be submitted within 16 months from the earliest priority date or filing date. However, if a divisional or conversion application is filed based on a foreign language written application, the translation may be submitted within two months from the new filing date. National Phase Entry of the PCT Translations during National Phase application must be submitted within the National Phase application filing period (within 30 months from the priority date). However, if the National Phase application is filed between the second month prior to the expiration of the National Phase application filing period and the expiration date, the translation may be submitted within two months from the date of filing the National Phase application.
Overview of the Patent Process after Filing	Formality Examination Upon filing, the JPO assigns an application number and conducts a formality examination. If any formal deficiencies are found, the JPO will issue an “Invitation to Correct” (Order for Amendment), and the applicant must rectify the defects within a specified time limit. Publication of Application A patent application is published in the Official Gazette after 18 months have passed from the earliest priority date. The applicant may also request early publication of the application. * For PCT applications, the domestic publication is issued promptly after the Japanese translation is submitted and the national processing has commenced. Request for Examination Substantive examination is initiated only upon the filing of a Request for Examination. Currently, the first office action is issued, on average, 10 months after the request is filed. Applicants must file the request within three years from the actual filing date (or the international filing date for PCT applications). If no request is filed within this period, the application will be deemed withdrawn. Optional Procedures Voluntary Amendments Applicants may voluntarily amend the claims, specification, and/or drawings at any time prior to receiving the first Office Action. Please note that it is highly recommended to eliminate multi-multi dependent claims before or at the time of filing the Request for Examination. This helps avoid unnecessary objections as all multi-multi dependent claims will be subject to rejections without exception. Accelerated Examination and PPH For applications meeting certain requirements, expedited examination is available through systems such as Accelerated Examination, Super-Accelerated Examination, and the Patent Prosecution Highway (PPH). These programs significantly shorten the period until the first Office Action. Substantive Examinations (Application Prosecution) Substantive examinations are conducted in accordance with the Examination Guidelines for Patent. The main requirements for patentability subject to examination are as follows. Patentability Requirements Novelty Inventive Step Industrial Applicability Support Requirement Enablement Requirement Unity of Inventions Clarity If the examiner finds reasons for refusal, a Notice of Reasons for Refusal (Office Action) will be sent to the applicant. If the applicant receives the notification, written argument and/or amendments must be submitted within the designated time limit (3 months for foreign applicants). This period can be extended by up to 3 additional months upon filing a request and paying the required fees. Final Decision Decision of Patent Grant If the examination finds no reasons for refusal, or if the reasons for refusal were resolved by written argument and/or amendments, a Decision of Patent Grant will be made. In order to have the patent registered, the required registration fees (the first to third years) must be paid within 30 days from the date of receipt of the Allowance Notice from JPO. Certificate of Patent will be issued accordingly. A divisional application may be filed within 30 days from the date of receipt of the Allowance Notice and before payment is made. Decision of Rejection If the reasons for refusal were not eliminated, a Decision of Rejection will be made. When a Decision of Rejection is issued, you may take the following measures: 1. Appeal against Decision of Rejection An appeal against the decision of rejection may be filed within four months from the date of service of the certified copy of the decision of rejection. An amendment may be filed at the same time. This period is not extendable. 2. Divisional Application A divisional application may be filed within four months from the date of service of the certified copy of the decision of rejection. 3. Conversion of Application The application may be converted into a utility model application or a design application.
Annuity Payment	To maintain the patent right, the patent fee (annuity fee) must be paid every year. If the payment due date is missed, the right can still be maintained during a six-month grace period by paying twice the normal amount. If the grace period expires without payment, the right will lapse.

Patent, Trademark Application and Registration Information

Necessary documents and information for filing	Specification (and drawings if necessary, clear photocopies are acceptable). Applicant’s address, name and nationality. Inventor’s address and name. Power of Attorney (may also be filed at a later stage). Priority data (country, date and application number). Priority certificate must be filed within 16 months of the priority date. If submitted late, the priority will lapse, but the application will proceed under the actual Japanese application date.
Not necessary for filing	Evidence of assignment from the inventor to the applicant prior to application is not required.
PCT Japanese National Phase filing requirements	Specification, claims, abstract (and drawings, if necessary). Applicant’s address, name and nationality. Inventor’s address and name. Power of Attorney (may be filed at a later stage) International filing date. ※General Information about Japanese Patent System
Filing and the First-to-File rule	The application request, specification (with claims), abstract and drawings should be submitted in Japanese. Recently, the J.P.O. has begun accepting applications with the specification and claims written in English. However, the request for application must be written in Japanese. Additionally, the entire application must be translated into Japanese within 2 months of the application date. Japan applies a first-to-file rule. The first person to file an application for a patent in Japan will be given priority over all subsequent applicants. The search for prior art in Japan includes a search of both patent applications and registrations, and utility model applications and registrations.
Publication of the applications	18 months from the application date, Japanese patent applications are published. This is referred to in Japanese law as “laying open the application.”
Patentability and Novelty	Under Section 29 of the Patent Act, inventions that were publicly known in Japan prior to filing shall not be granted patents (see See Section 29(i)). Similarly, inventions which were publicly used in Japan prior to filing, and inventions which were described in a publication distributed in Japan or elsewhere prior to filing will also not be granted patents (see See Sections 29(ii) and (iii)).
Examination	A request for substantial examination of an application should be filed within 3 years from the application date.(For PCT applications, the international application date is used.) If no request is filed, the application is regarded as withdrawn. If the examiner issues an office action, the applicant can respond by submitting an Argument and/or an Amendment to the J.P.O. During examination, any amendment must be within the scope of the original application or it will be refused. There are no maintenance fees for patent applications. After the application is allowed, the applicant must pay a patent annuity fee for the first 3 years of the patent. For the next 4 – 20 years, the patentee can pay the fee annually in a lump sum for the full period, or a portion thereof.
Patent term	A patent may remain in force for 20 years from the application date. However, for pharmaceutical patents, a maximum of a 5- year extension on the patent term is available under certain conditions. Please contact us if you have any questions about this specific issue.
Conversion	Patent applications may be converted to utility model applications or design applications.

CONTACT US

Procedures for Obtaining a Utility Model Right

Necessary Documents and Information

■Utility Model Application: -Direct filing:

Name and address of the applicant (for corporations, the location of the head office)
Name and address of the inventor
Specification (title of the invention, brief description of the drawings, detailed description of the invention)
Claims for utility model registration, drawings (clear copies acceptable), and abstract
(If required) Power of attorney (may be submitted later)
(If required) Exception to loss of novelty

-For Paris Convention Priority Applications (Paris Convention Route):

Additional requirements are as follows:

Priority information (country, filing date, application number)
Priority Document (must be submitted within 16 months from the earliest priority claim date) or DAS code
*Requires a patent application claiming Paris Convention priority filed within one year of the priority date.
If not submitted within the period, the priority claim becomes invalid, and the application date will be the actual application date in Japan.

■National Phase Entry into Japan (PCT Route):

Similar to patents, National phase application is possible based on an international application under the Patent Cooperation Treaty (PCT).

Differences from Patents

＊Payment of 1 to 3 years’ worth of annual fees is required at the time of filing.
＊Drawings are mandatory. Methods are not included in the scope of protection.
＊Instead of substantive examination for utility model registration, a request for a utility model technical evaluation can be made. However, opportunities for correction after utility model registration are limited, so this must be done carefully.

Conversion of Application

A patent application may be converted to a utility model application or a design application.

Procedures for Obtaining a Utility Model Right

Electronic
Applications

Our office is also equipped to file our applications electronically via the Japanese Patent Office’s electronic filing system. This allows us to complete the application process instantaneously and immediately report back to our clients with application numbers.

APPLY ONLINE

Procedures for Obtaining a Trademark

Coming soon

Procedures for Obtaining a Design

Coming soon

Power of Attorney

Please kindly have either of the attached power of attorney forms executed by the applicant and send the original to us by airmail.
We would prefer that the applicant sign the general power of attorney form, as it. Would cover the current matter as well as other new matters that might arise in the future. If other new matters arise, we could then represent the applicant in connection with those matters without need for an additional power of attorney from the applicant.
If, the applicant prefers for any reason to limit the scope of our power to the current matter, the applicant may do so by signing and returning the more specific power of attorney form.

General Power of Attorney form (PDF)

General Power of Attorney form Patent Professional Corporation (PDF)