Filing in Japan

PCT ROUTE (NATIONAL PHASE ENTRY)

If one wishes to nationalize one’s PCT application into Japan, “request for national entry” needs to be filed in a timely manner. The due date for filing “request for national entry” is 30 months from the first priority date. This due date is strictly non-extendable. In Japan, if “request for national entry” is filed between 28 and 30 months from the first priority date, A Japanese translation can be filed within two months from the filing date of “request for national entry”. Therefore, it is not necessary to prepare a Japanese translation at the time of filing “request for national entry” which is due 30 months from the first priority date.

No “power of attorney” is required for filing “request of national entry” nor filing a “Japanese translation”. In fact, it is often the case that “power of attorney” is not required until (and even after) the patent is granted. However, in some limited situations, “power of attorney” becomes necessary.

An applicant is required to file “request for examination” to have his/her application examined. The due date for filing “request for examination” is 3 years from the filing date in Japan. In the case of national entry application into Japan, international filing date is deemed to be the filing date in Japan.

Unlike EPO, there is no maintenance fee for pending applications.

PARIS CONVENTION ROUTE (DIRECT FILING)

If one wishes to file a patent application claiming priority from an earlier application in other countries, such patent application needs to be filed in Japan within 1 year from the first priority date. A patent application can be filed in English (more precisely, claims, specification, drawings, abstract, etc can be filed in English however, “request for application” has to be prepared and filed in Japanese). This is useful to secure the filing date particularly when Japanese translation is not ready. A Japanese translation can be filed within one year and two months from the first priority date. Another benefit of filing a patent application in English is, if incorrect translation is found in a Japanese translation, you may correct such incorrect translation based on the patent application in English. This benefit is not available when you file a patent application in Japanese from the beginning whether or not such a patent application in Japanese has been prepared based on English originals.

No “power of attorney” is required for filing a patent application nor filing a “Japanese translation”. In fact, it is often the case that “power of attorney” is not required until (and even after) the patent is granted. However, in some limited situations, “power of attorney” becomes necessary.

An applicant is required to file “request for examination” to have his/her application examined. The due date for filing “request for examination” is 3 years from the filing date in Japan.

Unlike EPO, there is no maintenance fee for pending applications.

Multiple Dependent Claims

Like many other countries, both independent and dependent claims are allowed in Japan. Further, a “multiple dependent claim” is also allowed in Japan, which is a claim dependent from 2 or more claims. Yet further, a “multiple multiple dependent claim” is also allowed in Japan, which is a claim dependent from 2 or more claims at least one of which is a multiple dependent claim.

In addition, there is no additional charges for the use of “multiple dependent claims”, “multiple multiple dependent claims”, and further. Such claim is counted as a single claim for the purpose of calculating fees based on the number of claims. The use of such “multiple dependent claims” or further is sometimes helpful to reduce, for example, fee for requesting examination or annuity payment.