Japanese Intellectual Property, Patent and Trademark Law Firm in Japan

In order to acquire patent protection in Japan, it is not enough for you to file a patent application.  Since Japanese patent system has adopted “Examination-on-Demand System”, you need to submit a request for the substantive examination to the JPO to have your patent application examined.

Here is basic information on the request for the substantive examination in Japan.

Anyone can submit the request for the substantive examination for your patent application.  Therefore, even if you have no intention to proceed with your patent application, a third party can submit the request to examine your patent application.

You have to submit the request for the substantive examination within three years from the filing date.

Even if you file a Japanese patent application claiming the priority, you can submit the request within three years from the filing date of the Japanese application (not from the priority date).

As for PCT application, you have to submit the request within three years from the international filing date (not from the date of entering national phase in Japan).

Where your patent application is a divisional application, you can submit the request within thirty days from the filing date of the divisional application.  In other words, You can submit the request after three years from the filing date of the original application, as long as you submit it within thirty days after filing the divisional application.

The official fee ^(*1) for the request is calculated as follows:

in PCT case, the official fee is 106,000 yen + 3,600 yen per claim ^(*2);

in Paris convention case, the official fee is 118,000 yen + 4,000 yen per claim.
(*1) The official fee for the request has been reduced by approximately 25 % since August 1, 2011.

(*2) Applied to the case where the International Searching Authority (ISA) is other than the JPO.  Where ISA is the JPO, the official fee is 71,000 yen + 2,400 yen per claim.

You can NOT withdraw the request after submitting it.

However, if you have no intention to proceed with your patent application after submitting the request, the half amount of the official fee for the request can be refunded through “Half Refund System” ^(*3).

In order to get a refund, you have to:

[1] withdraw your patent application before you receive the first office action on the merit from the JPO; and 

[2] submit a request for the refund to the JPO within six months from the withdrawal of you patent application.

(*3) Detailed information is provided here:http://www.jpo.go.jp/cgi/linke.cgi?url=/tetuzuki_e/ryoukin_e/half_refund_system.htm

Notes.

(1) As mentioned above, failure to submit the request results in withdrawal of your patent application and there is no means to recover it.  Thus, particular care should be paid to submit the request within prescribed period.  

(2) Since the utility model system in Japan has adopted non-examination system, you do not need to submit a request for the substantive examination of a utility model application.

If you need more information in this matter, please contact us at http://en.aigipat.com/contact/index.html.

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