◎ Specification of the patent application

◎ Scanned copy of the power of attorney

◎ Scanned copy of the priority document or DAS code (only for direct filing), if available

◎ Scanned copy of deed of assignment, if available

◎ Related information of applicants and inventors

◎ File directly under the Paris Convention within 12 months from the earliest priority date;

◎ File via PCT national phase entry within 30 months from the earliest priority date.

◎ The official language for Japanese patents is Japanese. If the application is initially filed in a language other than Japanese, a translation into Japanese must be submitted within 16 months from the priority date for direct applications, and within 2 months from entry into the national phase for PCT applications.

Patent Prosecution Highway (PPH)

◎ When a corresponding application of a Japanese patent receives a favorable search report from a patent office recognized by JPO, and when the claims of the two applications fully correspond, applicants can request accelerated examination of their application by the JPO without the need to pay additional fees.

Based on our experience, the first office action is typically received within 2-3 months after filing a PPH request, and the overall process from PPH request to final disposition takes approximately 6-12 months.

Patent Prioritized Examination

◎ After a patent application is published in Japan, if a third party is engaging in activities that would require protection under the pending patent, or if there is a dispute between the applicant and the third party that needs swift resolution, a request for prioritized examination of the patent application can be filed accordingly. The request can be submitted by either the third party or the patent applicant.

◎ To file a request for prioritized examination, we will need the following supporting documents:

(1) A statement detailing the status of the third party's activities, along with descriptions of the products or methods involved in the third party's activities and necessary drawings.

(2) A copy of the warning letter sent to the third party.

(3) Product samples, promotional materials, samples, photographs, etc.

(4) Any relevant documents that can prove the third party's activities.

◎ Under the conditions outlined above, Japanese examiners will prioritize the examination of the patent application, potentially providing a final examination decision within 4 months.

Others

◎ For applications that do not meet the above conditions, we offer additional strategies to expedite the process for the clients, including requesting for substantive examination at the time of filing, early publication, internal acceleration for translation and office action responses. These measures are tailored to ensure the quickest processing time and to secure the maximum benefits for our clients.

◎ Typically, if an invention has been publicly disclosed before the patent application is filed, it may be deemed lacking in novelty and therefore ineligible for patenting.

◎ However, disclosures made by the inventor or related parties within one year prior to the filing of the Japanese patent application, whether through internet, newspapers, or other media, may not destroy the novelty of the patent. In such cases, we can file a written statement and along with proof of the disclosed facts within 30 days after the application date.

◎ Please note that in Japan, the one-year grace period is calculated from the actual filing date in Japan, not from the filing date of the priority application.

◎ Yes, a Japanese utility model application can be converted into a patent application within three years from the filing date of the utility model application. The resulting patent application will retain the filing date/priority date of the original utility model application. After the converted patent application passes the formal examination, the original utility model application will be deemed withdrawn automatically.

◎ It is legally impossible to obtain both a patent right and a utility model right for the same invention. If separate patent and utility model applications are filed for the same invention, the following possibilities exist:

◎ If the patent application was filed on an earlier date than the utility model application, a patent may be granted for the invention.

◎ If the utility model application was filed on an earlier date than the patent application, a utility model registration may be granted for the invention.

◎ If a patent application and a utility model application for the same invention are filed on the same date, only one of them, either a patent right or a utility model registration, can be obtained, but not both at the same time.

◎ Specification of the utility model application

◎ Scanned copy of the power of attorney

◎ Scanned copy of the priority document or DAS code (only for direct filing), if available

◎ Scanned copy of deed of assignment, if available

◎ Related information of applicants and inventors

◎ File directly under the Paris Convention within 12 months from the earliest priority date;

◎ File via PCT national phase entry within 30 months from the earliest priority date.

◎ The official language for Japanese patents is Japanese. If the application is initially filed in a language other than Japanese, a translation into Japanese must be submitted within 16 months from the priority date for direct applications, and within 2 months from entry into the national phase for PCT applications.

◎ Typically, if an invention has been publicly disclosed before the patent application is filed, it may be deemed lacking in novelty and therefore ineligible for patenting.

◎ However, disclosures made by the inventor or related parties within one year prior to the filing of the Japanese patent application, whether through internet, newspapers, or other media, may not destroy the novelty of the patent. In such cases, we can file a written statement and along with proof of the disclosed facts within 30 days after the application date.

◎ Please note that in Japan, the one-year grace period is calculated from the actual filing date in Japan, not from the filing date of the priority application.

◎ Yes, a Japanese utility model application can be converted into a patent application within three years from the filing date of the utility model application. The resulting patent application will retain the filing date/priority date of the original utility model application. After the converted patent application passes the formal examination, the original utility model application will be deemed withdrawn automatically.

◎ It is legally impossible to obtain both a patent right and a utility model right for the same invention. If separate patent and utility model applications are filed for the same invention, the following possibilities exist:

(1) If the patent application was filed on an earlier date than the utility model application, a patent may be granted for the invention.

(2) If the utility model application was filed on an earlier date than the patent application, a utility model registration may be granted for the invention.

(3) If a patent application and a utility model application for the same invention are filed on the same date, only one of them, either a patent right or a utility model registration, can be obtained, but not both at the same time.

◎ Drawings and specification of the design application

◎ Scanned copy of the power of attorney

◎ Scanned copy of the priority document or DAS code, if available

◎ Scanned copy of deed of assignment, if available

◎ Related information of applicants and inventors

◎ Entry is possible through the Paris Convention or the Hague Agreement extension. If priority is claimed, the application must be filed within 6 months from the earliest priority date.

◎ Drawings submitted for a Japanese design patent can be either photographs or line drawings.

◎ However, if priority is claimed, the submitted drawings must be identical to those of the priority application, without any shading, trademark symbols, text, or codes unrelated to the design features.

◎ Yes, and the grace period for novelty can be claimed at any time.

◎ In Korea, the grace period for novelty of a design application is 12 months from the initial public disclosure of the design. Compared with patent applications, the requirements for the grace period for novelty in Korean design patents are quite flexible, as it can be claimed during the entire prosecution period of the design application.

◎ Additionally, after the design has been granted, a request for the grace period for novelty can also be submitted in response to invalidation or opposition proceedings.