The Japanese Patent Application Process: A Step-by-Step Guide for U.S. Applicants

Japanese Attorney at Law - Bengoshi L.L.

• 8 min read

Securing patent protection in Japan is a crucial step for U.S. companies looking to safeguard their innovations in one of the world's leading technology markets. While international treaties like the Patent Cooperation Treaty (PCT) streamline certain aspects of global patent filing, navigating the national stage in Japan involves specific procedures, deadlines, and strategic considerations. This guide provides a step-by-step overview of the Japanese patent application process, from initial filing to the grant of a patent.

Step 1: Filing the Patent Application (特許出願 - Tokkyo Shutsugan)

The journey to obtaining a Japanese patent begins with filing a patent application with the Japan Patent Office (JPO).

  • Required Documentation (Article 36, Japanese Patent Act): A complete application package typically includes:
    • A Request for a Patent (特許願 - tokkyogan): This is the main application form containing applicant details, inventor details, etc.
    • A Description (明細書 - meisaisho): This document must disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. It typically includes sections such as "Technical Field," "Background Art," "Summary of Invention" (including the problem to be solved and the solution), "Brief Description of Drawings," and "Detailed Description of Embodiments."
    • Patent Claims (特許請求の範囲 - tokkyo seikyū no han'i): This section defines the scope of the invention for which protection is sought. Each claim should be clear, concise, and supported by the description.
    • Drawings (図面 - zumen): Necessary drawings to illustrate the invention must be included if they are essential for understanding the invention.
    • An Abstract (要約書 - yōyakusho): A brief summary of the disclosure, primarily for technical information retrieval purposes.
  • Language: All application documents must be filed in Japanese. For applications entering the Japanese national phase from a PCT application filed in another language (e.g., English), or for Paris Convention applications claiming priority from a foreign filing, a Japanese translation must be submitted within the prescribed deadlines. Accuracy in translation is paramount, as the Japanese text will form the basis of examination and any resulting patent.
  • Key Considerations at Filing:
    • First-to-File Principle: Japan operates on a first-to-file system. The first applicant to file for a given invention is generally entitled to the patent.
    • Co-ownership (Article 38): If an invention is made jointly by multiple inventors, all co-owners of the right to obtain a patent must file the application jointly.
    • Provisional Exclusive License (Article 38-5): If a provisional exclusive license based on the right to obtain a patent has been registered, the applicant cannot subsequently abandon or withdraw the application without the consent of that provisional exclusive licensee.

Step 2: Formality Examination (方式審査 - Hōshiki Shinsa)

Once the application is filed, the JPO conducts a formality examination to ensure that all procedural requirements have been met. This includes checking for:

  • Correctness of applicant and inventor details.
  • Presence of all necessary documents.
  • Payment of official fees.
  • Compliance with prescribed document formats.
  • Proper representation (e.g., if a patent attorney is appointed, or if the applicant is a minor requiring legal representation).

If the JPO identifies curable defects in formalities, it will issue a Correction Order (補正命令 - hosei meirei) (Article 17(3)), specifying a period within which the applicant must rectify the issues. Failure to comply with a correction order can lead to the Dismissal of the Application (手続の却下 - tetsuzuki no kyakka) (Article 18).

If an application has defects that cannot be corrected (e.g., a patent application filed without any accompanying description), the JPO may dismiss the entire procedure (Article 18-2). This is a significant action, as a dismissed application is treated as if it had never been filed, resulting in the loss of the filing date. The applicant is typically given an opportunity to submit arguments before such a dismissal is finalized. An applicant dissatisfied with a JPO decision to dismiss their application or procedure can seek judicial review by filing a lawsuit to cancel the JPO's decision.

Step 3: Application Publication (出願公開 - Shutsugan Kōkai)

Unless withdrawn or abandoned earlier, patent applications in Japan are automatically laid open to public inspection (published) 18 months after the Japanese filing date or, if priority is claimed under the Paris Convention or PCT, 18 months from the earliest priority date (Article 64). This publication is made in the official Patent Gazette (出願公開公報 - shutsugan kōkai kōhō).

  • Content of Publication: The published application includes the application number, filing date, publication date, names of the applicant and inventor(s), the abstract, description, claims, and drawings as filed.
  • Purpose of Publication:
    • Early Public Disclosure: It informs the public about the technology for which patent protection is being sought, preventing redundant research and allowing competitors to assess the potential scope of rights.
    • Provisional Protection: It serves as the basis for the applicant to claim provisional protection.
    • Prior Art Effect: A published application can have prior art effect against later-filed applications, including under the "expanded prior art" provisions (Article 29-2).

Provisional Protection (補償金請求権 - Hoshōkin Seikyūken) (Article 65)

After an application is published, the applicant gains a conditional right to demand compensation from any third party who commercially works the claimed invention. This right to compensation (hoshōkin seikyūken), which is for an amount equivalent to a reasonable royalty, can only be enforced after the patent is eventually granted.

To activate this right, the applicant generally must first send a written warning to the alleged infringer, including a copy of the published patent application describing the invention. However, if the third party was already working the invention with knowledge of the published application, a formal warning may not be a prerequisite for claiming compensation for acts done after they gained such knowledge. Several provisions of the Patent Act concerning infringement, such as those for indirect infringement (Article 101) and the invalidity defense (Article 104-3), are applied mutatis mutandis to claims for this provisional compensation.

Request for Early Publication (早期出願公開制度 - Sōki Shutsugan Kōkai Seido) (Article 64-2)

An applicant who wishes to have their application published sooner than the standard 18 months (e.g., if they are already working the invention or aware of potential infringement and wish to establish provisional protection rights earlier) can file a request for early publication. This system was introduced in 1999.

Step 4: Request for Substantive Examination (審査請求 - Shinsa Seikyū)

Unlike in some jurisdictions where examination is automatic, a Japanese patent application will not undergo substantive examination unless a Request for Examination is filed with the JPO (Article 48-3).

  • Deadline: This request must be filed within three years from the Japanese filing date. It is crucial for PCT national phase applications to note that this deadline is calculated from the international filing date, which is generally treated as the Japanese filing date for this purpose. Failure to file a request for examination within this three-year period results in the application being deemed withdrawn (Article 48-3(4)). A withdrawn application loses its filing date and any potential prior art effect.
  • Who Can Request: The request can be filed by the applicant or, notably, by any third party. A third party might request examination if they wish to obtain clarity on the patentability of a competitor's application.
  • Fees: A significant official fee is payable upon requesting examination. Part of this fee may be refunded if the application is subsequently withdrawn or abandoned before certain examination stages.
  • Accelerated Examination / Preferential Examination (優先審査制度 - Yūsen Shinsa Seido) (Article 48-6): Applicants can request accelerated or preferential examination under certain conditions. These include situations where a third party is commercially working the invention after its publication, or for specific types of applications such as "green" technology-related inventions, applications by small and medium-sized enterprises, or applications filed under the Patent Prosecution Highway (PPH) program (e.g., based on a corresponding U.S. application found allowable). The decision to grant accelerated examination is at the discretion of the JPO Director General.
  • A 2014 amendment introduced a provision (Article 48-3(5)) allowing for a grace period for filing the request for examination if the deadline was missed due to legitimate reasons such as natural disasters, with a corresponding statutory license for third parties who may have started working the invention during the lapse.

Step 5: Substantive Examination (実体審査 - Jittai Shinsa)

Once a request for examination is duly filed and fees are paid, the application proceeds to substantive examination, conducted by a JPO examiner assigned to the relevant technical field (Article 47).

  • Examiner's Role: The examiner conducts prior art searches (including Japanese and foreign patent documents and non-patent literature) and assesses whether the claimed invention meets all statutory requirements for patentability. These include industrial applicability, novelty, inventive step (non-obviousness), enablement and support by the description, clarity of claims, and other formal and substantive requirements.
  • Timeline: The JPO has made significant efforts to reduce examination pendency. In 2016, the average time from the request for examination to the issuance of the first office action was approximately 9.5 months, a substantial reduction from previous years.
  • Office Actions (Notification of Reasons for Refusal - 拒絶理由の通知 Kyozetsu Riyū no Tsūchi) (Article 50): If the examiner finds any reasons why the application cannot be granted a patent (as listed in Article 49, e.g., lack of novelty, inventive step, insufficient disclosure), they will issue a "Notification of Reasons for Refusal." This official communication details the objections and cites the relevant prior art or legal provisions.
  • Applicant's Response: The applicant is given a specific period (typically 60 days for domestic applicants, often 3 months for foreign applicants, extendable upon request) to respond to the office action. The response can include:
    • Written Arguments (意見書 - ikensho): Contesting the examiner's objections, explaining why the invention is patentable over the cited art, or clarifying points of misunderstanding.
    • Amendments (補正書 - hoseisho): Modifying the description, claims, or drawings to overcome the rejections. Amendments are subject to strict limitations, primarily that they must not introduce "new matter" beyond the scope of the disclosure as originally filed (Article 17-2(3)).
  • Interviews with Examiner: Applicants (or their Japanese patent attorneys) can request interviews with the examiner, often conducted by phone or video conference, to discuss the objections and potential paths to allowance. These can be very effective in resolving issues.

Step 6: Examiner's Decision (査定 - Satei)

After considering the applicant's response (if any) to the office action(s), the examiner will issue a final decision, which is an administrative disposition.

  • Decision to Grant a Patent (特許査定 - Tokkyo Satei) (Article 51): If the examiner finds that all reasons for refusal have been overcome or no reasons for refusal exist, a decision to grant a patent is issued. The burden is generally on the examiner to establish the existence of reasons for refusal.
  • Decision of Refusal (拒絶査定 - Kyozetsu Satei): If the examiner concludes that reasons for refusal persist despite the applicant's arguments or amendments, a final decision of refusal is issued.

Both decisions are made in writing and include the reasons for the judgment (Article 52).

Step 7: Post-Decision Procedures

If a Patent is Granted (特許査定 - Tokkyo Satei)

  1. Payment of Registration Fees: Upon receiving the Decision to Grant, the applicant must pay the patent registration fees (also known as issue fees or initial annuities) within 30 days. These typically cover the first to third years of the patent term (Article 107, 108).
  2. Patent Registration (特許登録 - Tokkyo Tōroku): Once the fees are paid, the patent is registered in the official Patent Register at the JPO (Article 66(2)).
  3. Issuance of Patent Certificate and Effect of Patent Right: The patent right formally comes into effect upon registration (Article 66(1)). A patent certificate is subsequently issued to the patentee. The patent is then published in the Patent Gazette as a granted patent (特許公報 - tokkyo kōhō).

If the Application is Refused (拒絶査定 - Kyozetsu Satei)

If the applicant is dissatisfied with the Decision of Refusal, they have recourse:

  • Appeal to the JPO Trial and Appeal Department: The applicant can file an appeal against the examiner's decision of refusal (拒絶査定不服審判 - Kyozetsu Satei Fufuku Shinpan) within a specified period (typically three months from the date of receiving the decision, extendable for foreign residents). This initiates an appellate proceeding within the JPO before a panel of appeal examiners. Further details on such administrative appeals are beyond the scope of this article.

Conclusion

The Japanese patent application process involves several distinct stages, each with its own requirements, deadlines, and strategic considerations. From the initial filing and formality checks through publication, the crucial step of requesting examination, substantive review by JPO examiners, and ultimately to a decision on patentability, applicants must navigate these procedures diligently. For U.S. applicants, working closely with experienced Japanese patent attorneys is essential to ensure compliance with local practices, effectively respond to office actions, and maximize the chances of obtaining robust patent protection in this important jurisdiction. Timely actions, particularly regarding translations and the three-year deadline for requesting examination, are critical to preserving rights.