Japanese Intellectual Property, Patent and Trademark Law Firm in Japan

In principle, a patent application in Japan needs to be filed in Japanese language.  But, Japan has adopted the foreign language application system so that an applicant is able to file a patent application in a foreign language.  This foreign language application system is especially beneficial for a foreign applicant who is filing a patent application in Japan just before the expiration of priority period.

The following is basic information on the foreign language application system and comparison thereof with other countries (USA, Europe, China, Korea, and Taiwan).

Overview of foreign language application system

Japanese Patent Law allows a patent application with the description, claims, drawings and abstract in a foreign language in lieu of those in Japanese. After filing the application (foreign-language application), an applicant is required to submit Japanese translations of the description, claims, drawings and abstract within statutory period.

1. What foreign language is available?

As of now, a foreign-language application is limited solely to “English”.  Therefore, an applicant with a foreign-language application must file the description, claims, drawings and abstract in English.

It is to be noticed that an application form of a foreign-language application must be written in Japanese.

2. By when Japanese translations must be submitted?

Japanese translations must be submitted within one year and two months after filing a foreign-language application.
If a foreign-language application has claimed priority based on Convention, Japanese translations must be submitted within one year and two months after the priority date (i.e., the filing date of the first application).

Japanese translations timely filed are legally regarded as the description, claims, drawings and the abstract. Namely, Japanese translations become subjects of the examination and patent granting.

3. What happens if the Japanese translations are not submitted within the statutory period?

If Japanese translations of the description, claims and drawings are not submitted within the statutory period, a foreign-language application is deemed to have been withdrawn.  In other words, failure to submit Japanese translations of them will lead to the abandonment of the foreign-language application.

If Japanese translation of the abstract is not submitted within the statutory period, an office action to object is issued by the JPO.  This objection can be overcome by submitting Japanese translation of the abstract.

4. Is foreign-language application system available for a utility model application?

No.  Foreign language application system is only available for a patent application in Japan.

Comparison with major countries

USA

 A patent application in a language other than English may be filed in USA (37CFR1.52(d)).  Any languages are available.  English translations need to be filed within two months after receiving a notice to file translations from the USPTO.

Europe (EPC)

 A patent application in a language other than an official language (English, French or German) may be filed in EP.  Any languages are available.  Translations in an official language need to be filed within two months after filing the application.

China

 China has not adopted a foreign language application system.  Therefore, a patent application in China must be filed in Chinese language.

Korea

 Korea has not adopted a foreign language application system.  Therefore, a patent application in Korea must be filed in Korean language.

Taiwan

 A patent application in a language other than Chinese may be filed in Taiwan.  As of now, Japanese and English languages are available.  Translations in Chinese language need to be filed within four months after filing the application.

Comparison Table of “Foreign Language Application System”

Notes.
As mentioned above, non-submission of Japanese translations results in abandoning a foreign-language application in Japan.  In addition, if an applicant fails to submit the translations within the statutory period, an opportunity to submit them would not be given to him/her unless there are any justifiable grounds for the failure. Therefore, if you utilize the foreign-language application system, particular care should be paid to submit the translations within the statutory period.

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

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