Patent, design, utility model and trademark applications are the backbone of our firm.
We believe we can provide faster, more efficient and better quality application services
for our international clients than most other firms because we do nearly all of our translations in-house.

Patent, Trademark Application and Registration Information

Necessary documents and information for filing

  • 1. Specification (and drawings if necessary, clear photocopies are acceptable).
  • 2. Applicant's address, name and nationality.
  • 3. Inventor's address and name.
  • 4. Power of Attorney (may also be filed at a later stage).
  • 5. Priority data (country, date and application number).
  • 6. Priority certificate must be filed within 16 months of the priority date. If submitted late, the priority will lapse, but the application will proceed under the actual Japanese application date.

Not necessary for filing

Evidence of assignment from the inventor to the applicant prior to application is not required.

PCT Japanese National Phase filing requirements

  • 1. Specification, claims, abstract (and drawings, if necessary).
  • 2. Applicant's address, name and nationality.
  • 3. Inventor's address and name.
  • 4. Power of Attorney (may be filed at a later stage)
  • 5. International filing date.

※General Information about Japanese Patent System

Filing and the First-to-File rule

The application request, specification (with claims), abstract and drawings should be submitted in Japanese. Recently, the J.P.O. has begun accepting applications with the specification and claims written in English. However, the request for application must be written in Japanese. Additionally, the entire application must be translated into Japanese within 2 months of the application date.
Japan applies a first-to-file rule. The first person to file an application for a patent in Japan will be given priority over all subsequent applicants. The search for prior art in Japan includes a search of both patent applications and registrations, and utility model applications and registrations.

Publication of the applications

18 months from the application date, Japanese patent applications are published. This is referred to in Japanese law as "laying open the application."

Patentablility and Novelty

Under Section 29 of the Patent Act, inventions that were publicly known in Japan prior to filing shall not be granted patents (see See Section 29(i)). Similarly, inventions which were publicly used in Japan prior to filing, and inventions which were described in a publication distributed in Japan or elsewhere prior to filing will also not be granted patents (see See Sections 29(ii) and (iii)).

Examination

A request for substantial examination of an application should be filed within 3 years from the application date.(For PCT applications, the international application date is used.) If no request is filed, the application is regarded as withdrawn. If the examiner issues an office action, the applicant can respond by submitting an Argument and/or an Amendment to the J.P.O. During examination, any amendment must be within the scope of the original application or it will be refused.
There are no maintenance fees for patent applications.
After the application is allowed, the applicant must pay a patent annuity fee for the first 3 years of the patent. For the next 4 - 20 years, the patentee can pay the fee annually in a lump sum for the full period, or a portion thereof.

Patent term

A patent may remain in force for 20 years from the application date. However, for pharmaceutical patents, a maximum of a 5- year extension on the patent term is available under certain conditions. Please contact us if you have any questions about this specific issue.

Conversion

Patent applications may be converted to utility model applications or design applications.

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Prosecution

Our ability to quickly translate our foreign clients' amendments into Japanese, as well as our ability to translate office actions from Japanese quickly and concisely allows us to deal with prosecution matters better than most Japanese firms.

Annuity payments

Our firm is also equipped to make the annuity payments on patents, utility models and designs. We routinely notify our foreign clients well before payment deadlines, and send reminders as necessary to avoid oversights.

Renewals

Similarly, for trademark registrations we notify our clients before the renewal period begins, and send reminders to ensure that a registration does not unintentionally lapse.

Searches

Virtually all of our searches are handled in-house, to insure client confidentiality. We employ state-of-the-art computers that link our office to the patent and trademark data distribution system, which provides quick and reliable access to documents published by the government. Our firm has access to the PATOLIS, DIALOG, G-Search, JOIS and BRANDY search databases. Certified professional searchers handle all searches for our foreign clients.

Applications

Patent, design, utility model and trademark applications are the backbone of our firm. We believe we can provide faster, more efficient and better quality application services for our international clients than most other firms because we do nearly all of our translations in-house.

Electronic Applications

Our office is also equipped to file our applications electronically via the Japanese Patent Office's electronic filing system. This allows us to complete the application process instantaneously and immediately report back to our clients with application numbers.

Prosecution

Our ability to quickly translate our foreign clients' amendments into Japanese, as well as our ability to translate office actions into English quickly and concisely, allow us to deal with prosecution matters better than most Japanese firms.

Annuity payments

Our firm is equipped to make annuity payments on patents, utility models and designs. We routinely notify our foreign clients well before payment deadline dates, and send reminders to avoid delinquency, if necessary.

Renewals

For trademark registrations we notify our clients before the renewal period begins, and send reminders to ensure that a registration does not unintentionally lapse.

Searches

Virtually all of our searches are handled in-house, to ensure client confidentiality. Our office is linked to the patent and trademark data distribution system, which provides quick and reliable access to documents published by the government. Our firm has access to professional patent search databases. Certified professional searchers handle all searches for our foreign clients.

Fees

FeesWe offer standard flat rate fees for services, allowing our clients to plan their budgets for intellectual property protection. Our location in Gifu, one of the main industrial corridors of Japan, allows our firm to offer reasonable fees.

Communication

We believe our firm is unparalleled in response time to our clients' inquiries. Typically, we respond within one day of receiving an inquiry from our clients.
In some parts of Asia and Oceania we customarily respond to the morning's correspondence before our business closes on the same day. You can reach us by post, facsimile or e-mail. If our usual working hours (8:30 a.m. to 5:00 p.m. Monday through Friday) suit your convenience, we welcome you to call us. Our receptionist will happily field your calls in English and direct you to the proper staff member.

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