Want to speed up your patent application in Japan? Here are several ways to expedite the examination process

Here are ways to expedite your patent application in Japan

Japan is the world’s third largest economy and is particularly developed in the fields of technology, especially in electronics and software. For companies expanding overseas, the Japanese market is a strategic location that cannot be ignored. For companies going global, applying for Japanese patents can better protect and support their businesses.

In a previous article, Xiaowei introduced the application system for some Japanese design patents (Can products also apply for patents? Learn about Japanese design patents!), and today Xiaowei will introduce several ways to accelerate the examination of Japanese patents.

Early examination system

According to the “Early Examination/Early Final Decision Guidelines for Patent Applications (August 2016)” published by the Japanese Patent Office, when a patent application meets any of the following conditions, JPO can be requested to conduct an early examination of the patent application:

1. The patented product has been actually manufactured and sold, or the product is planned to be produced within 2 years from the application date (including situations where the approval of agricultural pesticides or drugs has been applied for);

2. Foreign related applications (applications made in countries other than Japan, including Paris Convention or PCT applications, and for Chinese applications to Japan, if not applied in China and directly applied in Japan without PCT application, this condition cannot be used);

3. Applications from small and medium-sized enterprises, individuals, universities, public research institutions, etc. (Chinese applicants can also use this condition if they can provide proof. However, for Chinese applicants to use the above condition 2, the procedure is more complicated).

4. Patents related to green and environmental protection;

5. Applications from earthquake-stricken areas;

6. Applications from multinational corporations with affiliated companies in Asia.

For domestic applicants, the early examination request can usually be made based on the situation described in item 2 above. However, for applications from China to Japan, if there is no domestic application and the application is made directly to Japan without being a PCT application, this condition cannot be utilized.

The early examination procedure can greatly shorten the examination time and speed up the examination process. In general, the average time to receive the first examination opinion notice in the early examination procedure is 2-3 months, and the final examination result can usually be obtained within 6 months.

Super Early Examination

In addition to meeting the conditions of the early examination procedure mentioned above, the super early examination also requires the following conditions to be met: 1. Related patent applications can be implemented and have been filed abroad; 2. The application for super early examination has completed all application procedures online at least 4 weeks ago; 3. It is not in the situation of an international patent application entering the national stage in Japan.

The application procedure for super early examination is roughly the same as that for early examination, except that it is necessary to indicate in the “Statement of Reasons” that the application request is for super early examination. The super early examination can further accelerate the examination process, and the first examination opinion notice can be received in about one month on average.

Prioritized Examination System

If a third party is implementing the invention for production and business purposes after the publication but before the authorization of a case that has already undergone substantive examination, prioritized examination can be applied for. However, the applicant needs to submit materials to prove that “the third party is implementing the invention for production and business purposes”, and these proof materials include: 1. A description or diagram of the product or method implemented by the third party; 2. A warning letter issued by the applicant; 3. Materials such as product catalogs, samples, and photos; 4. Proof documents that can prove that the third party is implementing the invention. In addition, the applicant also needs to explain the necessity of “urgent examination”. With the increasing speed of JPO examination and authorization, the number of cases utilizing the prioritized examination system will gradually decrease. In fact, if the applicant obtains authorization quickly, they can warn or sue the third party who is implementing the invention for infringement, instead of just requesting compensation for the so-called “temporary protection” before publication and authorization.

Patent Prosecution Highway (PPH) speeds up examination

PPH refers to a program where an applicant, based on bilateral or multilateral agreements, can request accelerated examination of its subsequent applications at a second patent office after the first patent office has determined that at least one claim is allowable. PPH can help applicants obtain accelerated examination through a simple procedure.

As of June 2015, Japan Patent Office (JPO) has signed PPH agreements with all participating countries. Among them, 30 countries and regions cooperate with JPO through PPH-MOTTAINAI, and 5 countries and regions cooperate with JPO through regular PPH.

1. Eligibility

If the subsequent application is filed in Japan after the first application is submitted to a patent office that has signed a PPH agreement with JPO, the following conditions must be met in order to submit a PPH request to JPO:

· The subsequent application has a specific relationship with the first application, such as claiming priority to the first application under the Paris Convention;

· At least one claim in the prior examination has a prospect of being granted;

· All claims in the subsequent application correspond to claims that are allowable in the first application;

· The examination of the subsequent application has not yet begun.

2. How to apply for PPH

The following documents must be submitted to apply for PPH:

· A copy of all claims and their translations;

· A copy of the notice from the first patent office and its translation.

· Copies of all referenced files;

· Claims comparison table;

· PPH request form.

If PPH-MOTTAINAI is adopted, PPH can be requested regardless of whether the first application bureau gives an examination result. For global PPH and IP5 PPH, the independent claims shall not exceed three, and the total number of claims shall not exceed 20. The excess part needs to pay the corresponding fee, and there is no claim restriction for PCT PPH.

Accelerate overseas application examination

Accelerating overseas application examination mainly targets Paris Convention priority applications submitted after April 1, 2006 (excluding PCT applications). Specifically, if a Japanese application is used as the basis for Paris Convention priority, the applicant may request substantive examination of the application within two years from the date of application. Then, the Japanese Patent Office (JPO) will prioritize the examination of the application (compared to other ordinary applications that have not entered the accelerated program).

Generally, from the application examination date or the application publication date (whichever is earlier), the JPO will review such applications within six months. The latest date for starting the examination is 30 months from the application date.

The accelerated examination procedure does not require the applicant to actively propose, or to pay additional fees. It is initiated by the JPO itself. For Chinese applicants, since most first applications are submitted in China, it is rare to directly submit the first application to the JPO in China. Therefore, the accelerated examination procedure is basically not used.

The above is a brief introduction by Xiao Wei on the ways to accelerate the examination of Japanese patents. Patent applicants who intend to apply for Japanese patents and seek to accelerate the application can choose one of the above methods to achieve accelerated examination according to their own needs and patent characteristics, and obtain patent rights as soon as possible.

Zhongwei Intellectual Property has many years of experience in the international intellectual property industry and has a professional team overseas. We not only specialize in international patent, trademark, and copyright applications, but also provide solutions for overseas intellectual property disputes. If you have any needs related to overseas patent applications, please contact Zhongwei Intellectual Property. We are dedicated to providing you with professional and efficient international intellectual property application services!

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