The Japan Patent System

Japanese IP Office

The governmental agency in charge of handling intellectual property rights in Japan is the Japan Patent Office (JPO) located in Kasumigaseki, Chiyoda, Tokyo. This office is part of the “IP5 Offices” group, which includes the JPO, the EPO, the KIPO, the SIPO and the USPTO, in which a combined total of approximately 80% of all patent applications worldwide are filed.

Over the course of the last few decades, the JPO has earned a reputation of inefficient patent examination procedures. In Japan, patent attorneys receive the first examination letter approximately 30 months after filing. In addition, office actions by the JPO have been known to lack particularity with respect to reasons of refusal.

The JPO has attempted to address these concerns, in part through the creation of Patent Prosecution Highways between Japan and the following countries and unions: U.S., China, South Korea, EPO, U.K., Germany, Russia, Austria, Singapore, Hungary, Canada, Spain, the Nordic Patent Institute, Denmark, Finland, Sweden, Norway, and Iceland. The main goal of these patent highways is to increase the expediency of examination and to enhance the quality of application examination worldwide.

Japan is a member of both the Paris Convention and the Patent Cooperation Treaty (PCT).

Filing Patents in Japan

A Japanese patent application must contain the name and address of the applicant and the inventor, as well as the citizenship of the inventor and the place of incorporation of the applicant. The necessary elements of an application include: a title, a summary of the invention, a specification, a set of claims, and any necessary drawings. In addition, any portion of the specifications not in Japanese must be accompanied by a Japanese translation.

The term of a Japanese patent is 20 years, with the option of a 5-year extension for pharmaceutical products and agricultural chemicals. For design patents, the patent term is 15 years.

PCT National Stage in Japan

When an application is filed as a PCT National Stage application, the national stage entry deadline is 30 months from the PCT application’s priority date. Filing power of attorney at this stage is not mandatory, and the national stage application cannot be assigned. There are no fees for excess claims, and translation extensions are available.

Recent IP Legal Trends in Japan

According to Japanese patent lawyers, one of the key objections to Japanese examination procedures has been an overly broad application of the obvious-to-try rule when issuing rejections due to a lack of inventive step. Recently, however, the IP High Court has ruled that such rejections need to be accompanied by a clearly observable finding of obviousness. This position of the IP High Court has encouraged infringement lawsuits, which patentees concerned with obviousness invalidation otherwise would not have filed.