Frequently Asked Questions on Japanese Patent Lawnew
site
I.
Questions on PCT Japanese national phase entry
Q1
I
unintentionally failed to enter the Japanese national
phase within the 30-month time limit. Is there any
way to reinstate my patent rights, and enter the
Japanese national phase?
A1
Unfortunately, once the rights of the applicant in the
international application are lost, he/she cannot
reinstate the rights at that point. The new
PCT49.6 rule has not been recognized in Japanese
intellectual property law. The Japan Patent Office
said that it would not be likely to accept this new rule
in the near future.
For your
information, under the PCT49.6 rule, when the effect of
the international application provided for in Article
11(3) has ceased due to the applicant's failure to
perform the acts referred to in Article 22(1)* within
the applicable time limit, the designated Office shall,
upon request of the applicant, reinstate the rights of
the applicant with respect to that international
application if it finds that any delay in meeting that
time limit was unintentional or, at the option of the
designated Office, that the failure to meet that time
limit occurred in spite of due care required by the
circumstances having been taken.
* Article 22(1) of the Patent Corporation Treaty: The
applicant shall furnish a copy of the international
application and a translation thereof, and pay the
national fee (if any), to each designated Office not
later than at the expiration of 30 months from the
priority date.
Q2
I currently
have a PCT international application, and am considering
entering into the Japanese national phase.
However, the time is running out and I am looking for
the way to drop a priority claim without losing an
opportunity in my patent rights. Please advise.
A2
The
applicant may withdraw a priority claim, made in the
international application under Article 8(1), at any
time prior to the expiration of 30 months from the
priority date, according to the PCT Rule 90bis.3.
When the withdrawal of a priority claim causes a change
in the priority date, any time limit that is computed
from the original priority date and has not already
expired shall be computed from the priority date
resulting from that change. In other words, the
new time limit will be 30 months from the new priority
date.
Q3
I want to
know when a Japanese translation needs to be filed.
Should it be filed with or without a PCT application at
the time of the Japanese national phase entry?
A3
According to the Japanese patent law, a PCT
application can be entered into the Japanese
national phase without a Japanese translation.
Then, there is the two-month deadline after the
entry of the Japanese national phase for filing a
Japanese translation. Please note that the translation filing
due is two months from the date of the entry,
not two months from the 30-month deadline.
Q4
I would like
to know the cost estimate for entering into the Japanese
national phase and preparing and filing a Japanese
translation within two months from the date of entry.
A4
Omori
& Yaguchi provides online fee calculator, which is
available at
http://www.omoriyaguchi.com/orderpatent.htm.
The calculator is designed to help attorneys and/or
legal service professionals obtain fee estimate for the
PCT Japanese national phase entry and filing a Japanese
trademark application. This is also for the holders of
published PCT applications seeking the fee information
on filing patents in Japan.
II.
Questions on Japan's patent examination system
Q1
What is
Japan's patent examination system?
A1
In Japan, the
applicant must file a request for examination with the
Japan Patent Office within three years from the
international filing date. A patent application
will not be examined unless the request is filed on a
timely matter.
Q2
I heard that
Japan Patent Office (JPO) provides Japanese universities
with the small entity type discount on Japanese patent
examination fee and patent annuities. Does this
discount apply to universities in the United States?
If so, how can we pursue more information?
A2
Yes,
non-Japanese universities also qualify 50 percent off of
Japanese patent examination fee and patent annuities
when they file patents with the JPO, as long as they can
demonstrate the invention is assigned to the university.
Omori & Yaguchi will review your international patent
application to find whether it qualifies 50 percent
discount.
(Last Updated July 25, 2005)
Questions? Please send an e-mail to
usmail@omoriyaguchi.com
or call 1-866-Japan-IP (527-2647)
