28 Oct
2021

Japan

How do you get a patent in your jurisdiction?

Q: What types of patent are granted in your jurisdiction, and what rights do they confer on owners?

The Japan Patent Office (JPO) grants patents, utility models, designs and trademarks. These rights are similar to those found in other countries. Patent rights under Japanese law are similar to most other patent systems.

Q: What inventions are eligible for patent protection in your jurisdiction?

Filed inventions must be new (have novelty), inventive (have inventive step) and useable for industries (have industrial applicability). This is similar to other countries (eg, Part 1, Article I(i)(1) of the UK Patent Act 1977; and Section 1(1) of the Germany Patent Act).

Q: Are there any specific exemptions to patent eligibility?

Yes, the non-patentable invention exemption to patent eligibility under Japanese law is similar to that found in most other countries. In the emerging technologies space (eg, AI and machine learning), business rules, mathematical expressions and coding for computer programs are excluded from patentable inventions. The list of exclusions is very similar to that of other patent offices (eg, the EPO (Article 53(2) and (3) of the European Patent Convention) and the USPTO (judicial exception)).

Q: Are there technology-specific eligibility issues that applicants must navigate (eg, in software, business methods, AI, medical diagnostics, pharmaceuticals, medical procedures, etc)?

The EPO, the USPTO and the JPO have different eligibility requirements for computer-implemented inventions (CIIs). The JPO has granted about 80% of AI patent applications filed from 2010 to 2017 (JPO AI survey (statistics), 31 August 2021, page 6: www.jpo.go.jp/system/patent/gaiyo/sesaku/ai/document/ai_shutsugan_chosa/hokoku.pdf (available in Japanese)). Inventions filed after 2018 may remain in the pipelines as many applicants defer examination. The granting rate by ‘filing years’ after 2018 has not yet been generated. The JPO’s Patent Examination Handbook (available in English) helps to clarify the JPO’s criteria of eligibility for CIIs, including AI technologies, added in 2019 with 22 hypothetical case examples (Annex B, Chapter I ‘Software-Related Inventions’: www.jpo.go.jp/e/system/laws/rule/guideline/patent/handbook_shinsa/document/index/app_b1_e.pdf).

Q: What are the time and costs involved in securing a granted patent? Is expedited examination available? Are reduced fees available for certain applicants?

Once a patent is granted, the owner must pay an annual registration fee. An accumulated fee for an application of 20 claims, maintained for 15 years, is approximately Y1 million ($9,000). The patent term is standardised at 20 years from the filing date. Before grant, no annuity (eg, the maintenance fee in the European patent system) is required by the JPO.

Payment scheme

Applicants must pay for the first three years of annual patent fees at the same time as the patent is registered. Starting from the fourth year, and each subsequent year thereafter, the payment form and annual patent fee must be submitted by the deadline stated in the documents enclosed with the registration certificate that was sent when the patent right was registered. Applicants or rights holders outside Japan can remit their annual patent-renewal fees directly from abroad (JPO guidelines on the patent annual fee payment for non-residents:

www.jpo.go.jp/e/system/process/tesuryo/160401_renewing_outside.html (available in English)).

Expedited examination

There are three fast tracks:

Accelerated examination system

The accelerated examination system can be applied to the following six types of application and appeals against an examiner’s refusal of the applications

(www.jpo.go.jp/e/system/patent/shinsa/jp-soki/index.html (available in English)):

  • work-related applications;
  • internationally filed applications;
  • applications filed by SMEs, individuals, universities and public research institutes, among others;
  • green-technology related applications;
  • earthquake disaster recovery support-related applications; and
  • the Asian Business Location Law-related applications.

Patent prosecution highway

If an invention is granted by the EPO or other patent office faster than by the JPO, the patent prosecution highway shortcut may be used to secure a corresponding patent in Japan. The patent prosecution highway is becoming a common system with 47 patent offices involved – it is a bundle of bilateral agreements between two offices that was created by the alliance of the EPO, the USPTO and the JPO. These key patent offices grappled with redundancy and duplication of examinations on the same inventions (ie, corresponding applications of the same patent family) in early 2000. Applicants may make use of the patent prosecution highway to reduce duplication of the workload of inventor companies and patent offices. Patent offices can expedite examination processes under the patent prosecution highway by referring (reusing) records and granted claims that other offices have granted first.

Reduced fees

The JPO offers discounted fees of up to 50% (eg, for patent registration) for vulnerable applicants, SMEs and start-ups. Applicants or patent owners outside Japan are also eligible to apply for the discount under the same conditions (eg, number of employees) as domestic applicants.

Q: What are any specific requirements that a patent specification must meet in your jurisdiction?

Requirements for patent specification in Japan are similar to those in place in many other countries.

The filing language must be Japanese. There is one exception; applicants may submit an application in English to tentatively secure a filing date followed by the submission of a Japanese-language application.

Q: What rules govern the filing of provisional applications, continuations or continuations-in-part, divisionals or any other special type of application?

There is a divisional applications system in Japan but no system for provisional applications, continuations or continuations-in-part. Applicants may file divisional applications only when responding to an office action (including reasons for rejection and final rejection) from a patent examiner or before an examiner takes up the file.

Q: What do applicants need to know about office actions and patent examiner interviews?

The techniques to respond to the office actions are similar to those available in many other countries.

There are time limits and deadlines in place to respond to office actions from patent examiners. Applicants may request an extension to due dates in some cases; however, if the final deadline is missed a further extension is rarely granted. Petitions for exemption are rarely granted by the JPO.

Examiner interviews are an effective measure to overcome negative office actions. Interviews often reveal more information than office actions.

Q: Are there any recent examination trends that patent applicants need to be aware of?

The JPO has reduced pendency time in patent examination. The first office action from the substantive examiner is issued in 9.5 months, on average, from a request of examination (JPO Status Report 2021, page 51:
www.jpo.go.jp/e/resources/report/statusreport/2021/document/index/0201.pdf (available in English)). A final office action (grant or rejection) is sent in 14.3 months, on average, from the request of substantive examination in 2019.

The JPO’s granting rate was approximately 75% from 2016 to 2020, compared to 63% at the EPO in 2019 (JPO Annual Report 2021, page 10:

www.jpo.go.jp/resources/report/nenji/2021/document/index/honpen0101.pdf (available in Japanese)).

Q: Is there anything else about the patent filing process that applicants should know?

In Germany, applicants must make a request for examination within seven years of the filing date, while in Japan, applicants file their requests within three years. Without requests, examination of the application is not considered to have been conducted. Where applicants miss the due date, applications are deemed to be withdrawn.

Q: Is utility model or petty patent protection or an equivalent available in your jurisdiction? If so, how does the system work and under what circumstances would you advise using it?

Yes, utility model protection in Japan is similar to that in most other countries, including Germany.

The claimed invention is limited to the shape or structure of goods (eg, masks, bicycles and toys). Chemical compounds and processes are not subject to utility model protection. After filing a utility model, it is registered without substantive examination. The effective term is 10 years, while the patent term is 20 years from the filing date.

There was a 10% increase in utility model filings before the JPO in 2020 – the first increase of its kind in 10 years. The JPO Annual Report 2021 analyses how covid-19 has contributed to the rise. This surge in filings shows the features of the utility model system. A utility model invention can rapidly become an effective right once it is filed, skipping the substantive examinations that are necessary in the patent system. It also costs less than obtaining a patent. Where applicants estimate that their products may sell in a short timeframe (ie, under 10 years), they may use utility model system.

What are the major administrative procedures in your jurisdiction?

How can applicants appeal patent office decision?

The appeal procedure under Japanese law is similar to that in most other patent systems. Applicants or representatives submit a written appeal to the JPO within four months (foreign applicants) of the date that a decision was rejected.

Q: Are oppositions available pre-grant or post-grant? What rules govern standing to oppose a patent and the opposition process?

Yes, anyone can make an opposition for a granted patent within six months of the patent’s publication (Handbook for Trial and Appeal System in Japan, page 8:

www.jpo.go.jp/resources/report/sonota-info/document/panhu/shinpan_gaiyo_e.pdf (available in English)).

Q: What are the processes for re-examination of a patent?

There is no re-examination system in Japan.

Q: What is the process for invalidation or revocation of a patent? Who has standing to request invalidation? How long do inter partes invalidation cases take?

The appeal procedure for invalidation under Japanese law is similar to that in most other patent systems. An interested party may file a request for a trial for invalidation. The system involves court-style oral proceedings, giving both parties the opportunity to fully allege their case in addition to document submissions. The JPO’s Annual Report 2021 shows that, in 2020, 115 patent invalidation cases were settled within, on average, 12.5 months (Handbook for Trial and Appeal System in Japan, page 10).

Q: How can opposition, re-examination or invalidation decisions be appealed?

Both the decisions of opposition and the trial for invalidation can be appealed to the IP High Court in Tokyo.

Q: Is administrative enforcement of patents possible?

Customs offices (eg, the Yokohama port customs branch), detect and seize infringing goods by enforcing patent rights on requests by patent owners. Customs suspends imported articles infringing designs, utility models, trademarks, copyrights and plants breeder’s rights, as well as patents (www.customs.go.jp/mizugiwa/chiteki/index_e.htm (available in English)).

Q: Does your jurisdiction grant patent-term extensions?

Yes, the extension of up to five years is permitted only when the patent right concerns medical drugs or agricultural chemicals and there have been unexploitable periods as a result of the Pharmaceutical Affairs Act and the Agricultural Chemicals Regulation Act.

Q: Is there anything else about patent administrative procedures that patent owners and challengers should know?

The bill to amend the IP laws was passed by the Japan Diet on 21 May 2021.

Online oral proceedings

The EPO has been moving away from in-person meetings at their premises to web-based oral proceedings (ie, videoconferences). On 1 October 2021, the JPO implemented online oral proceedings as a result of covid-19.

Recovery from delay

There is good news for applicants, representatives and patent owners. The bill to amend the IP law includes user-friendly revisions.

If applicants fail to meet deadlines (eg, a failure to submit priority documents or to pay renewal fees) there is only a slim chance of recovery. The JPO rarely grants requests for recovery (ie, restoration and revival) (JPO Survey, slide 10: www.jpo.go.jp/resources/shingikai/sangyo-kouzou/shousai/chizai_bunkakai/document/15-shiryou/04.pdf (available in Japanese)). Its grant rate for recovery requests is 10% to 20%, while the EPO is 60% to 70% and the USPTO is 90% to 95%. The new revised laws will relax 18 due dates, hopefully reaching the level of the USPTO where the petition’s requirement is ‘unintentional delay’. Japan’s current patent, utility, design and trademark laws require applicants to have ‘reasonable grounds for failing’, but the scope is narrow (eg, natural disaster). Applicants may make a request within one year, which is similar to the EPO but shorter than the USPTO system (which allows requests at any time). When the revised law will enter into effect has, at the time of writing, not been announced, but it is expected to be 1 April 2023.

JPO fees

The JPO is going to raise some of its patent fees to ensure that it meets its bottom line. The JPO website suggests that Patent Cooperation Treaty fees and the annual registration fee for a patent will be raised. Details of the new fees, including amount have yet to be announced. However, it is  announced that the new fees will commence on 1 April 2022 .