However, explaining legal rules in simple language is not always easy.
This article provides a simple overview of the patent application process in Japan. It also explains the approximate time and costs required to obtain a Japanese patent.
The basic process has three main steps:
1. Filing a patent application
2. Filing a request for examination
3. Responding to a Notice of Reasons for Refusal, also called an Office Action
The applicant can control the timing of Steps 1 and 2 to some extent. However, the timing of Step 3 is mainly controlled by the Japan Patent Office (JPO).
There are also important deadlines for Steps 2 and 3.
Some patent applications receive no Office Action, while others receive more than one. In many cases, an application receives one Office Action.
Step 1: Filing a Patent Application in Japan
First, the inventor explains the invention to a patent attorney.
The inventor may provide screenshots, circuit diagrams, actual products, graphs, presentation materials, and other information. The most important point is to help the patent attorney properly understand the invention, especially its purpose and how it works.
Based on the information provided by the inventor, the patent attorney prepares the patent application documents. After the client reviews the draft, the patent application is formally filed.
In most cases, the patent firm electronically sends the application documents to the Japan Patent Office.
The total cost of preparing and filing a Japanese patent application is generally several hundred thousand yen, although the actual amount depends on the invention and the patent firm.
It usually takes about one or two months from receiving the instructions to completing the patent application.
If the application is urgent, it may be possible to complete it within one month or even one week. In an exceptional case, we interviewed the inventor in the morning and filed the patent application in the afternoon. However, this is very unusual.
Filing a patent application is similar to making a provisional reservation for patent examination.
The Japan Patent Office does not automatically examine the technical content of every patent application immediately after filing. A separate request for examination is required.
As a general rule, the contents of a Japanese patent application are published 18 months after the filing date.
Step 2: Filing a Request for Examination
In Japan, a request for examination must be filed within three years from the patent application filing date.
The request may be filed at the same time as the patent application or shortly before the three-year deadline. It can be filed at any time during this three-year period.
If no request for examination is filed within three years, the patent application is deemed withdrawn. In other words, the provisional reservation is canceled.
A patent firm will normally remind the client when the deadline for requesting examination is approaching.
The total cost of filing a request for examination is often around 200,000 yen, although the amount depends on the number of claims and other factors. Fee reductions may also be available to certain applicants.
The request for examination is similar to a formal entry into the patent examination process.
The Japan Patent Office generally examines patent applications in the order in which examination was requested.
If the applicant wants to obtain a patent quickly, it may be better to request examination at an early stage. If there is no need to obtain the patent quickly, the applicant may wait before requesting examination. In this way, the applicant can control the timing of patent prosecution and related costs to some extent.
Step 3: Responding to an Office Action
After the request for examination has been filed, a JPO examiner reviews the patent application.
The waiting time varies depending on the technical field and other circumstances. In many cases, the applicant receives the first examination result within several months to about one year.
There is a high probability that the examiner will issue a Notice of Reasons for Refusal. This document is commonly called an Office Action in international patent practice.
A Notice of Reasons for Refusal means that, at that stage, the examiner does not believe that the application can be granted as a patent.
However, receiving an Office Action is not necessarily a serious problem. It is often the beginning of discussions with the examiner.
The usual response is to file:
A written opinion explaining why the invention should be patented
An amendment changing the claims or other parts of the application
For an applicant residing in Japan, the standard response period is normally 60 days from the date of the Office Action.
The cost of responding to an Office Action varies considerably. In general, the professional fee depends on the amount of analysis and work required.
An Office Action is not simply a notice that the invention has failed. The response may greatly affect the final scope and value of the patent.
Decision to Grant a Patent
If the response to the Office Action is successful, the Japan Patent Office issues a Decision to Grant a Patent.
The applicant must then pay the patent registration fees. These fees are generally tens of thousands of yen, although the amount depends on the number of claims and other factors.
After the registration fees are paid and the patent is registered, the patent right comes into effect. The patent is recorded in the JPO Patent Register, which is similar to a public register for real estate.
A patent gazette is also published online. The gazette allows the public to see who owns the patent and what invention is protected.
The patent owner also receives a patent certificate, which looks somewhat like an award certificate.
Decision of Refusal
If the response to the Office Action is not successful and the examiner is not persuaded, the Japan Patent Office issues a Decision of Refusal.
Even after receiving a Decision of Refusal, the applicant may file an appeal against the examiner’s decision.
Another option is to file a divisional application after the Decision of Refusal. A divisional application may allow the applicant to change the direction of the patent strategy and make another attempt to obtain a patent.
The Japanese patent application process is therefore not a simple, automatic path from filing to registration.
A patent right is obtained only after completing several stages: filing the application, requesting examination, responding to any Office Action, receiving a Decision to Grant a Patent, paying the registration fees, and completing registration.