The accelerated examination of patent applications in Japan: Consider an accelerated examination to obtain a patent in Japan in as short as three months!
　
Japanese patent law requires for an applicant to file a request for an examination, which has to be filed with the Japan Patent Office (JPO) within seven years from the international filing date. Even though the request for an examination is filed immediately after the filing date, it usually takes more than two years before the first action or the notice of allowance is issued by the JPO.

Contents

 1. Overview
 2. Qualified Applications
 3. Request Deadline
 4. Required Documents for Requesting an Accelerated Examination
 5. Procedures
 6. The Right to Claim Royalty for Infringement
 7. Fees
 

I. Overview

l      In Japan, a patent application will not be examined unless a request for a substantial examination is filed.  After a request is filed, it usually takes more than two years for a case to be examined.

l      The accelerated examination system is exceptions to the normal procedure.

l      An applicant can obtain the result within three to four months from the request date.  This is considered the fastest examination system in the world.

l      An accelerated examination reaches a result faster especially if the application in question has been positively approved as “patentable” as a result of the International Preliminary Examination, or if the case has already been patented in the Unites States or any countries other than Japan.

l      An applicant can also acquire the right to claim compensation (royalty) for infringement without waiting for a translation to be published (see section VI below).

II. Qualified Applications

An application must meet one of the following requirements:

1. International Applications

l      A patent application must be filed not only at the Japan Patent Office but also at other offices.

l      Both an application claiming the convention priority right based on foreign patent application and a PCT international patent application fall into this category.

2. Work-related Applications (Commercial Use Invention)

l      The invention in question must be already exploited.

l      In case of the application from a non-Japanese client, the case usually fulfills the above requirement (1); therefore, an application does not have to satisfy this requirement (2).

III. Request Deadline

l      An applicant can request an accelerated examination after a request for a regular examination.

l      A request for a regular examination must be filed within three years of the international filing date (or seven years for the patent application filed before October 1, 2001).

l      A request for an accelerated examination is usually filed simultaneously with a request for a regular examination.

IV. Required Documents for Requesting an Accelerated Examination

1. The results of the prior art search

l      The search report prepared by an applicant him/herself

l      The PCT International Search Report

l      The PCT International Preliminary Examination Report

l      The results of the patent examination by the USPTO, etc.

2. Comments comparing the invention in question from the results of the prior art search

l       An applicant can quote comments from the International Preliminary Examination Report or the approved results from the U.S. patent examination.

V. Procedures

l       Upon requesting an accelerated examination, the examination begins immediately.  Within three to four months from the request, the applicant will receive the first office action or a notice of allowance.

VI. The Right to Claim Royalty for Infringement

l       It generally takes more than one year or sometimes more than two years for a translated application to be published after entering into the Japanese national phase.

l       This means that an applicant’s provisional right to claim compensation (royalty) for infringement does not accrue until one or two years later because the right is obtained only after a translation is published.

l       Accelerated examination could be a solution to this problem.

l       Instead of waiting for years until the translated application gets published, the accelerated examination system allows an applicant to obtain a patent and acquire the right to claim compensation (royalty) from infringers.

VII. Fees

l       There is no official fee for the Japan Patent Office.

l       A patent attorney fee for this examination, which includes the argument and preliminary amendments, usually costs $750 to $2,000, if an additional search is not required due to the fact that the examination has been already completed in the United States or that the international preliminary examination has been completed.

l       This accelerated system leads an applicant to save one official action; therefore, per cost effectiveness is high.

 

If you are interested in requesting an accelerated examination, or if you have any questions regarding the accelerated examination practice in Japan, please feel free to e-mail us.