Japan Patent Office Guide
Japan Patent Office Guide
CONTENTS
ANNEXES
List of abbreviations:
Art.: Article
Required contents of the translation for                Under PCT Article 22: Description, claims (if amended, as
entry into the national phase:                          originally filed or as amended, or both as originally filed and as
                                                        amended, at applicant’s option3), any text matter of drawings,
                                                        abstract
                                                        Under PCT Article 39(1): Description, claims, any text matter of
                                                        drawings, abstract (if any of those parts has been amended, both as
                                                        originally filed and as amended by the annexes to the international
                                                        preliminary examination report3)
Exemptions, reductions or refunds of the                The fee for request for examination is reduced where an
national fees:                                          international search report has been established. Moreover,
                                                        reductions are available to individuals, small and medium-sized
                                                        enterprises, micro enterprises, academic institutions and certain
                                                        other entities (see Annex JP.I)
 ______________
1   The time limit for submission of the Japanese translation of the international application is 30 months from the priority date (under
    PCT Article 22(1) or 39(1)(a)). This time limit may be extended under certain circumstances (see paragraph JP.03).
2   Where the international application was filed in Japanese, a copy of any amendments under PCT Articles 19 and 34 may be
    required, if the communication under Article 20 has not taken place within the time limit applicable under Article 22(1) or 39(1)(a)
    or if an express request for early processing was filed under Article 23(2).
3   Where no translation of amendments is filed, the amendments are considered not to have been made. However, amendments may
    be made as specified in paragraph JP.13 of the JP national chapter.
4   If not already paid within the applicable time limit under PCT Article 22(1) or 39(1)(a), the Office will invite the applicant to pay
    the national fee within a time limit fixed in the invitation. Where the translation of the international application is submitted in
    paper form, a special fee for conversion into electronic format is required.
                                                                                                                         (1 April 2016)
JP
Page 4                        PCT Applicant’s Guide – National Phase – National Chapter – JP
Special requirements of the Office                      When the applicant is a legal entity, indication of the name of an
(PCT Rule 51bis):                                       officer representing that entity5 (the indication of such a name is not
                                                        required where the legal entity is represented by a patent attorney)
                                                        Appointment of an agent if the applicant is not resident in Japan6
                                                        Where the person, the name or the residence of the applicant is
                                                        changed during the international phase and the change has not been
                                                        reflected in the international publication or in a Notification of the
                                                        Recording of a Change (Form PCT/IB/306), a statement indicating
                                                        the change (preferably on a special request form) and, in case of a
                                                        change in the person of the applicant, a document evidencing the
                                                        change7
                                                        Where a change (addition and/or deletion) in the person of the
                                                        inventor during the international phase has not been reflected in the
                                                        international publication or in a Notification of the Recording of a
                                                        Change (Form PCT/IB/306), the correct indications relating to the
                                                        inventor (preferably on a special transmittal form (Form 53)), a
                                                        statement explaining the reasons for the change and a written oath of
                                                        all inventors7
                                                        Furnishing, where applicable, of a nucleotide and/or amino acid
                                                        sequence listing in electronic form
Who can act as agent?                                   Any patent attorney, attorney-at-law or other person resident in
                                                        Japan, or firm registered to practice before the Office
______________
5   If not already complied with, no later than the date on which the relevant time for national processing occurs (see paragraph JP.02
    of the JP national chapter), the Office will invite the applicant to comply with the requirement within a time limit fixed in the
    invitation.
6   Must be appointed within two months from the date of mailing of the invitation from the Office (see paragraph JP.08).
7   Must be furnished no later than the date on which the relevant time for national processing occurs (see paragraph JP.02 of the JP
    national chapter); if not furnished, the Office will invite the applicant to comply with the requirement within a time limit fixed in
    the invitation.
8   For international applications filed on or after 1 April 2015. For the relevant notification by the Office, see Official Notices
    (PCT Gazette) dated 12 March 2015, page 51.
(1 April 2016)
                                                                                                                           JP
                               PCT Applicant’s Guide – National Phase – National Chapter – JP                           Page 5
PA Art.    184-5            JP.01      FORMS FOR ENTERING THE NATIONAL PHASE. The Office has
                            available a special transmittal form (Form No. 53) for entering the national phase (see
                            Annex JP.II). This form should preferably (but need not) be used when effecting the payment
                            of the national fee (see paragraph JP.06) and for furnishing the translation of the international
                            application into Japanese. Any document required for entry into the national phase may be
                            submitted in paper form or online in electronic format. However, any document submitted in
                            paper form will be converted by the Office into electronic format and subjected to the
                            payment of a special fee (see Annex JP.I).
PA Art.    184-4            JP.02      RELEVANT TIME FOR NATIONAL PROCESSING. The relevant time for
                            national processing occurs:
                                     (i) on the date of the expiration of 30 months from the priority date,
                                      (ii) at the time of filing of the request for examination, if filed on or before the date
                            of (i) (see also JP.10).
PCT Art.   22               JP.03     TRANSLATION (LATE FURNISHING OF). The time limit for filing the
           39(1)
PA Art.    184-4(1)         Japanese translation of the international application is 30 months from the priority date. Where
                            Form No. 53 (see Annex JP.II) is submitted within two months before the expiration of
                            30 months from the priority date, that is, during the period from the beginning of the 29th month
                            to the end of the 30th month from the priority date, the translations may be filed within
                            two months from the date of submission of Form No. 53.
PA Art.    17-2(2)          JP.04     TRANSLATION (CORRECTION). Errors in the translation of the international
           184-12(2)
                            application can be corrected with reference to the text of the international application as filed
                            (see National Phase, paragraphs 6.002 and 6.003).
                            JP.06     FEES (MANNER OF PAYMENT). The manner of payment of the fees indicated
                            in the Summary and in this Chapter is outlined in Annex JP.I.
PCT Rule 17.1(c)            JP.07      PRIORITY DOCUMENT. Where the priority document has not been furnished
PR Rule  38-14
                            in compliance with PCT Rule 17.1(a), (b) or (b-bis), the applicant in the national phase has an
                            opportunity to furnish the priority document to the Office within 32 months from the
                            priority date.
PCT Rule 90                JP.08      APPOINTMENT OF AGENT. A person who has neither his domicile nor
PA Art.  8
         184-11(1), (2),   residence in Japan may not proceed except through his representative with respect to his
         (3), (4), (5)     patent who has his domicile or residence in Japan. If the applicant is not resident in Japan,
PR Rule  2(2)              appointment of an agent and filing of a power of attorney is necessary. Where the applicant
                           filed any documents not through an agent, the Office sends to the applicant an invitation to
                           appoint one. If the applicant fails to appoint one within two months from the date of mailing
                           of the said invitation from the Office, the applications shall be deemed to have been
                           withdrawn. Where the power of attorney is in a language other than Japanese, a Japanese
                           translation is required. A model is given in Annex JP.VII (page 1 in English translation, page
                           2 in Japanese).
PA Art.    48-2            JP.09     REQUEST FOR EXAMINATION. Patentability will be examined only after
           48-4
                           request by the applicant or by a third party. The request for examination must be made in
                           Japanese on Form No. 44 (see Annex JP.V).
PA Art.    48-3            JP.10       TIME LIMIT FOR REQUESTING EXAMINATION. Examination must be
           184-17
                           requested within three years from the international filing date. Such request can only be made
                           once all requirements for entry into the national phase have been complied with. The request
                           for examination is considered by the Office as a request for early entry into the national phase
                           if it is made before the expiration of the time limit applicable under PCT Article 22 or 39(1).
PA Art.    48-3(5), (6),   Where the applicant failed to file a request for examination within three years from the
           (7), (8)
           184-11(1)       international filing date, in spite of due care required by the circumstances having been taken,
                           he may still do so within two months from the removal of the cause of the failure to observe
                           the time limit or 12 months from the date of expiration of the time limit, whichever time limit
                           expires earlier. The request must be made in writing and set out the reasons for the failure to
                           comply with the time limit. Applicants are to submit any documents to support their reasons.
                           Applicants domiciled overseas who wish to file a request for examination after the prescribed
                           period has expired must submit the request for examination (Form No. 44), together with a
                           document stating the reasons for the late submission and any other documents through an
                           agent domiciled or resident in Japan.
PA Art.    195(2)          JP.11     FEE FOR REQUESTING EXAMINATION. The request for examination is
                           only effective if the fee for requesting examination has been paid. The amount of the fee is
                           indicated in Annex JP.I.
PA Art.    107             JP.12      ANNUAL FEES. Annual fees for the first to the third year must all be paid at the
           108
           112             same time, within 30 days after receipt of the decision to grant a patent. The annual fees for
                           the fourth and subsequent years must be paid before the end of the previous year. Payment
                           can still be made, together with a 100% surcharge for late payment, before the expiration of
                           six months from the due date. The amounts of the annual fees are indicated in Annex JP.I.
PCT Art.   28              JP.13     AMENDMENT OF THE APPLICATION; TIME LIMITS. Amendments may
           41
PA Art.    184-12(1)       be made to the description, claims or drawings, after the relevant time for national processing
           17(2)           has occurred (see JP.02) and after Form No. 53 and any required translations of the
           17-2            international application have been filed and the national fee has been paid, within the
                           following period:
                                     (i) before the applicant receives either the decision to grant a patent or the first
                           notice of reasons for refusal;
                                    (ii) within a time limit designated in a non-final notice of reasons for refusal;
                                   (iii) within a time limit designated in a final notice of reasons for refusal; or
                                    (iv) where the applicant has filed an appeal against the examiner’s decision of
                           refusal, at the time of filing of the appeal.
                           Amendments shall not go beyond the extent of disclosure in the international application as
                           originally filed. In addition, within the period (iii) or (iv), above, claims may be amended only
                           to the extent that additional prior art search is not necessary.
PCT Art.   25           JP.14      REVIEW UNDER ARTICLE 25 OF THE PCT. The applicable procedure is
PCT Rule   51
PA Art.    184-20       outlined in paragraphs 6.018 to 6.021 of the National Phase. The request to the Office should
PR Rule    38-7         be filed with Form No. 55 (see Annex JP.VI). If, upon review under PCT Article 25, the
     to    38-9         Office denies an error or omission on the part of the receiving Office or the International
                        Bureau, an administrative appeal against this denial may be lodged within 60 days from the
                        receipt of the denial. The Commissioner of the Office will then decide on the appeal.
PCT Art.   4(3)         JP.15     UTILITY MODEL. Subject to what is said in paragraph JP.16, if the applicant
           43
PCT Rule   49bis.1(a)   wishes to obtain a utility model instead of a patent in Japan, on the basis of an international
           76.5         application, the applicant, on entry into the national phase, shall so indicate to the Office.
UMA Art.   48-5(1)
PCT Art.   7(2)(ii)     JP.16     Where, in the case referred to in paragraph JP.15, the international application does
PCT Rule   7.2
UMA Art.   48-7         not contain drawings, the applicant must furnish the drawing(s) no later than the date on
                        which the relevant time for national processing occurs (see paragraph JP.02). Where the
                        applicant does not furnish the drawing(s) within that time limit, the Office will invite him to
                        furnish the drawing(s) within a time limit fixed in the invitation. Where an international
                        application for a patent is converted into a utility model application (see paragraph JP.19), the
                        drawing(s) must be submitted with the request for conversion.
UMA Art.   14(2)        JP.17     Utility models are registered without any substantive examination thereof in the
           32
                        national phase.
                        The other requirements for the national phase and the procedures thereafter are basically the
                        same as for patents except that the fees for utility models and registration fees from the first to
                        the third year must be paid instead of the fees for patents. If the applicant desires his utility
                        model to be registered earlier than the expiration of the time limit for entry into the national
                        phase, he may file an express request for an early commencement of the national procedures
                        under PCT Articles 23(2) and 40(2).
UMA Art.   48-8         JP.18     In addition to amendments under PCT Articles 19 and 34, amendments under
                        PCT Article 28 or 41 are allowed to an international application for a utility model. The
                        amendment in this case shall be made within the scope of the matter disclosed in the
                        international application as originally filed (or translated into Japanese, see also
                        paragraph JP.03).
PA Art.    46           JP.19    CONVERSION. An international application for a patent or utility model may be
           46-2
           184-16       converted into the other kind of application or a design application by filing a request for
UMA Art.   10           conversion once the applicant has complied with the requirements for entry into the national
           48-11        phase.
DA Art.    13
                        The conversion of a patent application into a utility model application may be requested
                        either:
                                 (i) within nine years and six months from the international filing date; or
                                 (ii) within three months from the transmittal of the first decision of the Office that
                        the patent application shall be refused.
                        The conversion of a utility model application into a patent application may be requested,
                        under certain circumstances, within three years from the international filing date.
                        The conversion of a patent application into a design application may be requested within
                        three months from the transmittal of the first decision of the Office that the patent application
                        shall be refused.
                        The conversion of a utility model application into a design application may be requested at
                        any time.
                        The conversion is subject to payment of a fee for conversion as indicated in Annex JP.I. The
                        original application for a patent or a utility model shall be deemed to have been withdrawn
                        after the conversion of the application.
PR Rule   38-13-2(2)      JP.20     NUCLEOTIDE AND/OR AMINO ACID SEQUENCES.                                  Where the
          27-5
                          international application contains the disclosure of a nucleotide and/or amino acid sequence, a
                          diskette or CD-R containing coded data of the sequence listing must be furnished together
                          with:
                                    (i) a document which identifies the international application concerned and the
                          diskette or CD-R furnished;
                                   (ii) a statement that the sequences recorded on the diskette or CD-R are identical to
                          those disclosed in the specification of the application as originally filed; and
                                  (iii) a document which describes the recording format of the diskette or CD-R.
                          However, where the diskette or CD-R containing the coded data has already been furnished to
                          the Office, the applicant is not required to submit it again.
PCT Rule 49ter.1          JP.21 RESTORATION OF THE RIGHT OF PRIORITY.                                      For international
         49ter.2
         76.5             applications filed on or after 1 April 2015, restoration of the right of priority may be requested
PA Art.  41(1)(i)         where the applicant, in spite of all due care required by the circumstances, failed to file the
         43-2(1), (2)     international application within the priority period, but within two months from the expiration
         184-11(1)
PR Rule  27-4-2(1), (2)   of the priority period.
         38-14(3), (4),
         (5), (6)         The request must be filed with the Office within one month from the expiration of the time
         38-14-2          limit to submit Form No. 53 (that is, the 30th month from the priority date, or if the
                          application has not been filed in Japanese and Form No. 53 was filed during the period from
                          the beginning of the 29th month to the end of the 30th month from the priority date, within
                          two months from the date of submission of Form No. 53). The request must be made in
                          writing and set out the reasons for the failure to file the international application within the
                          priority period. Applicants are to submit any documents to support their reasons. Where the
                          request for examination is made before the expiration of the time limit applicable under PCT
                          Article 22 or 39(1), the request for restoration of the right of priority accompanied with any
                          document to support their reasons must be filed within one month from the date of filing of
                          the request for examination.
                          Any decision on restoration of the right of priority by the receiving Office, which was based
                          on a finding by it that the failure to file the international application within the priority period
                          occurred in spite of due care required by the circumstances having been taken, will be
                          effective, unless the Office reasonably doubts that a requirement referred to in PCT
                          Rule 49ter. 1 (c) was complied with. In such an exceptional case, the Office shall notify the
                          applicant accordingly, indicating the reasons therefor and giving the applicant an opportunity
                          to make observations within a specified time limit.
                          Applicants domiciled overseas who wish to request restoration of the right of priority must
                          submit a document stating the reasons for the request and any other documents through an
                          agent domiciled or resident in Japan.
PCT Art. 48(2)            JP.22     REINSTATEMENT OF RIGHTS. Reinstatement of rights may be requested
PCT Rule 49.6
PA Art.  184-4(3), (4),   either where the applicant failed to furnish a translation of the international application into
         (5)              Japanese within 30 months from the priority date or where the applicant failed to appoint the
         184-11(4), (5)   agent within two months from the date of mailing of the invitation from the Office in spite of
PR Rule  38-2
                          due care required by the circumstances having been taken. A request for reinstatement must
                          be made to the Office within two months from the removal of the cause of the failure to
                          observe the time limit or twelve months from the date of expiration of the time limit,
                          whichever time limit expires earlier. The request must be made in writing and set out the
                          reasons for the failure to comply with the time limit. Within the said time limit, the omitted
                          action must be completed. Applicants are to submit any documents to support their reasons.
                          Applicants domiciled overseas who intend to request reinstatement of rights must submit the
                          translation and other documents through an agent domiciled or resident in Japan.
                          Even if the application is reinstated by the Office, the time limit for requesting examination
                          remains three years from the international filling date (see paragraph JP.10).
FEES
1    Fee reductions may apply for certain applicants such as small and medium-sized enterprises, micro enterprises, and academic
     institutions. For further details on the eligibility, see
     https://www.jpo.go.jp/system/process/tesuryo/genmen/genmen20190401/document/index/leaflet_e.pdf
2    Hereinafter referred to as “per claim”.
3    The patent term, which is 20 years from the filing date, may be extended by up to five years where there is a period during which
     patent owners have been unable to work their inventions due to the regulations under the laws (where the subject matter of the
     inventions relates to human or animal drugs or to agricultural chemicals), provided that the application for registration of
     extension of the term of the patent right is filed.
                                                                                                                        (11 July 2019)
JP
Annex JP.I, page 2              PCT Applicant’s Guide – National Phase – National Chapter – JP
Utility models
National fee . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .    14,000
National fee for request for review . . . . . . . . . . . . . . . . . . . . . . . . . . .           14,000
Fee for conversion of documents into electronic format . . . . . . . . . . . . . .                   1,200 plus     700 per sheet
Fee for conversion . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .      15,000 of a patent application
                                                                                                    16,000 of a design application
Fee for technical opinion
(a) where no international search report has been established . . . . . . . . . .                   42,000 plus 1,000 per claim
(b) where the international search report has been established by the
     Office . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .      8,400 plus     200 per claim
(c) where the international search report has been established by an
     International Searching Authority other than the Office . . . . . . . . . . . .                33,600 plus     800 per claim
Annual fees (per year):                                                                            International applications filed on or
                                                                                                             after 1 April 2005
    — for the 1st to the 3rd years . . . . . . . . . . . . . . . . . . . . . . . . . . .            2,100 plus 100 per claim
    — for the 4th to the 6th years . . . . . . . . . . . . . . . . . . . . . . . . . . .            6,100 plus 300 per claim
    — for the 7th to the 10th years . . . . . . . . . . . . . . . . . . . . . . . . . .            18,100 plus 900 per claim
【書類名】 国内書面
(
【提出日】 令和 年 月         日)
【あて先】 特許庁長官 殿
【出願の表示】
  【国際出願番号】
  【出願の区分】
【発明者】
  【住所又は居所】
  【氏名】
【特許出願人】
  【住所又は居所】
  【氏名又は名称】
  (【国籍・地域】
         )
【代理人】
  【識別番号】
  【弁理士】
  【氏名又は名称】
(【手数料の表示】)
  (【予納台帳番号】)
(【納付金額】)
【提出物件の目録】
  【物件名】      明細書の翻訳文                    1
  【物件名】      請求の範囲の翻訳文                  1
  【物件名】      要約書の翻訳文                    1
  【物件名】      図面の翻訳文                     1
【書類名】 特許協力条約第19条補正の翻訳文提出書
(
【提出日】 令和 年 月         日)
【あて先】 特許庁長官 殿
【出願の表示】
【国際出願番号】
【出願の区分】
【特許出願人】
【住所又は居所】
【氏名又は名称】
【代理人】
【識別番号】
【弁理士】
【氏名又は名称】
【補正書の提出年月日】
【手続補正1】
【補正対象書類名】 特許請求の範囲
【補正対象項目名】 全文
【補正の方法】 変更
【補正の内容】
【その他】
【書類名】 特許協力条約第34条補正の翻訳文提出書
(【提出日】 令和 年 月 日)
【あて先】 特許庁長官 殿
【出願の表示】
【国際出願番号】
【出願の区分】
【特許出願人】
【住所又は居所】
【氏名又は名称】
【代理人】
【識別番号】
【弁理士】
【氏名又は名称】
【補正書の提出年月日】
【手続補正1】
【補正対象書類名】
【補正対象項目名】
【補正の方法】
【補正の内容】
【その他】
【書類名】 出願審査請求書
(
【提出日】 令和 年 月        日)
【あて先】 特許庁長官 殿
【出願の表示】
【出願番号】
【請求項の数】
【請求人】
【住所又は居所】
【氏名又は名称】
  (【国籍・地域】
         )
【代理人】
【識別番号】
【弁理士】
【氏名又は名称】
(【手数料の表示】)
(【予納台帳番号】)
(【納付金額】)
【書類名】 特許協力条約第25条の規定による検査の申出書
(【提出日】 令和 年 月        日)
【あて先】 特許庁長官 殿
【国際出願番号】
【発明者】
  【住所又は居所】
  【氏名】
【申出人】
  (【識別番号】)
  【住所又は居所】
  【氏名又は名称】
  (【国籍・地域】
         )
【代理人】
  (【識別番号】)
  【住所又は居所】
  【氏名又は名称】
【拒否(宣言、認定)の通知を受けた日】
【申出の趣旨】
【申出の理由】
【提出物件の目録】
【物件名】 国際出願の翻訳文               1
【物件名】 (               )
Power of attorney
                                       POWER OF ATTORNEY
I/We (i)
of
my/our lawful representative(s) pursuant to the provisions of Art. 8 of the Patent Act, Art. 2-5
of the Utility Model Act and Art. 68 of the Design Act of Japan (“patent administrator”), to
make on my/our behalf proceedings for making
           a (iii)            application based on PCT application
           No. PCT (iv)
to the Japan Patent Office, and to perform all other formalities and acts under the provisions
concerned of the Patent, Utility Model and Design Acts of Japan or any orders issued on the
basis thereof.
By
(i) Insert the name and address of the applicant(s) (individual or legal entity) appointing the
      representative(s).
(ii) Insert the name of the representative(s).
(iii) State the particular kind of protection (patent or utility model) pursuant to the provisions of
      Art.43 of the PCT.
(iv) State the international application number for which the representative(s) are appointed.
                                                                                              (7 April 2016)
JP
Annex JP.VII, page 2   PCT Applicant’s Guide – National Phase – National Chapter – JP
委 任 状 (訳 文)
私(等) (氏名又は名称)
所在 (住所又は居所)
は、ここに (委任された者の氏名)
            を特許法第8条、実用新案法第2条の5及び意匠法第68条の規定による代理人
            (特許管理人)に選任し、私(等)の為に、
            国際出願番号PCT/××○○○○/○○○○○○に基づく(特許)出願の
            手続を日本国特許庁に対してなし、また日本国特許法、実用新案法若しくは
            意匠法又はこれらの法律に基づく命令に規定する一切の手続及び行為をなす
            権限を与えます。
年 月 日
署 名 a
(7 April 2016)