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Patents & Utility Models

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1. Patent and utility model applications: From client's request to filing

(1) General matters

(2) PCT route

(3) Paris route

2. Patent application: After filing, examination and decision to grant patent

(1) Request for examination

(2) Notification of reasons for refusal/Decision of refusal

(3) Decision to grant patent

3. Utility model application: After filing to registration

4. Others (Patent and utility model)

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1. Patent and utility model applications: From client's request to filing

(1) General matters

QIs it possible to request Nagoya International Patent Firm to prepare Japanese translations of the specification in foreign languages?
AYes, it is possible. We prepare appropriate Japanese translations of the application documents filed in your country or under PCT as Japanese application documents with the cooperation among our patent and trademark attorneys, technical engineers and translators. At the same time, we offer suggestions with respect to amendments and corrections (e.g. correction of expression of the claims which could be considered unclear, modification of relations between independent and dependent claims, etc.) in order to make the application patentable and appropriately reduce the risk that the JPO examiner finds it inappropriate description, based on our high-level knowledge and experience with Japanese practices which have been ranked as the 2nd highest in Japan in consecutive years.

(2) PCT route

QWhat is the necessary document when requesting to take the procedures for entry into the Japanese national phase of the PCT application filed as a patent or utility model application?
A
  1. A copy of description, claims and drawings of the specification of the PCT application
    (Preparation and submission of drawings is not necessarily required with patent applications, but required with utility model applications. A utility model application without attached drawings shall be dismissed.)
  2. An application form, and a copy of the front page of the international publication (if it has been published)
  3. Amendment under PCT Article 19(1) and 34(2) (if any)
  4. A copy of international preliminary examination report (if any)
QIs it possible to file a foreign language specification (in English, for example) for entry into the national phase of the PCT application filed as a patent or utility model application?
ANational entry into Japan becomes possible by submitting Japanese translations of the documents (e.g. specification, etc.) filed as a PCT application. Specifically, Japanese translation of description, claims, drawings (text matter of drawings) and abstract should be submitted by the expiration date, which is after two years and six months from the priority date specified in PCT Article 2 (xi) ("time limit for the submission of national documents"). (If these are not submitted by the expiration date, the application for Japanese entry of the PCT application will be deemed withdrawn.) As an exception that the Japanese translation is allowed to be submitted after the time limit for the submission of national documents, if a document requesting the national entry (a document in which the name/address of an applicant, the name/address of an inventor, International Application No. and others are specified) is submitted during the period of two months prior to the expiration date, the Japanese translation can be submitted within two months from the date of submission of the document requesting the national entry.

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(3) Paris route

QWhat is the necessary document and information when requesting Nagoya International Patent Firm to file a patent or utility model application claiming the priority under Paris Convention as a patent or utility model application?
ARequired documents include:
  1. A copy of description, claims, drawings and abstract of the application (Preparation and submission of drawings is not necessarily required with patent applications, but required with utility model applications. A utility model application without attached drawings shall be dismissed.)
  2. Priority certificate(s) (The priority certificate(s) should be submitted within 16 months from the priority date in principle. However, if the basic application is filed with a foreign Patent Office which can provide the priority certificate(s) to the JPO, submission of the priority certificates can be unnecessary.)
Required information includes:
  1. Name(s) and address(es) of inventor(s), and name(s) and address(es) of applicant(s),
  2. Application date and Application No. of basic application.
QIs it possible to file a patent or utility model application by submitting foreign language documents (description, claims, drawings and abstract)?
AThe JPO accepts only English documents as foreign language documents in filing a patent application. (Foreign language documents other than those written in English are not acceptable to file an application before the JPO.) In principle, Japanese translations of description, claims, drawings (text matter on drawings) and abstract must be submitted within a year and two months from the priority date if the English documents are filed for a patent application. (A failure to do so will lead to a deemed withdrawal of the application.) With respect to utility model applications, only Japanese documents are acceptable for filing.

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2. Patent application: After filing, examination and decision to grant patent

(1) Request for examination

QWhen is the request for examination accepted?
AThe request for examination can be submitted within three years from the filing date before the JPO, or the international application date.

(2) Notification of reasons for refusal/Decision of refusal

QWhen should the notification of reasons for refusal or the decision of refusal be responded to?
AIn the case of an application from a foreign country to Japan, the notification of reasons for refusal should be responded to within three months from the mailing date of the notification, and during which written arguments/amendments can be submitted. (The period for responding to the notification of reasons for refusal can be extended by up to three months by filing a request for extension of time with the JPO within the period for responding. In this case, reasons for extension should be specified in the application form. The reasons for extension include, for example, "since the content of the notification of reasons for refusal needs to be translated, extension is requested," in the case of an application from a foreign country to Japan.) In response to the decision of refusal, an amendment can be submitted together with a request for appeal against decision of refusal within four months from the mailing date of the decision in the case of an application from a foreign country to Japan (This four-month period cannot be extended). With respect to response to the notification of reasons for refusal, since not only submission of a written argument/amendment but also interview with the Examiner via fax, phone and meeting can possibly be accepted and conducted, we can make a proposal on response suitable for each of our clients by trying to have an interview with the Examiner as much as possible.

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(3) Decision to grant patent

QIs there any matter to be noted when the decision to grant patent is issued?
AUpon issuance of the decision to grant patent, the patent fee for the first to third year should be paid within 30 days from the mailing date of the decision. (If the fee is not paid within 30 days from the mailing date of the decision, the patent application is dismissed. The fee cannot be paid for any reason after 30 days from the mailing date of the decision.) If the patent fee is paid, the establishment of patent right is registered and the patent gazette is published.

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3. Utility model application: After filing to registration

QIn the utility model system, are there systems including publication of unexamined applications, request for examination and notification of reasons for refusal/decision of refusal?
AIn the utility model system (the subject of protection of the utility model is a device that is related to the shape or structure of an article or combination of articles, and does not include a method or a program.), the system of publication of unexamined applications does not exist. Since substantial examination is not conducted under the utility model system, there is no request for examination, notification of reasons for refusal, decision of refusal, or decision of registration. In principle, the establishment of utility model right is registered except when the utility model application is abandoned, cancelled, or dismissed. (The registration fees for the first to third year have to be paid at the time of filing the utility model application.) Once the establishment of utility model right is registered, the utility model gazette is published.
QWhat is the request for utility model technical opinion in the utility model system?
AThe request for utility model technical opinion is to request technical evaluation (evaluation regarding novelty (Article 3(1)(iii)), inventive step (Article 3(2)), enlarged first-to-file rule (Article 3-2) and first-to-file rule (Article 7(1) to (3) and (7))) with respect to the idea according to the utility model application or the registered utility model. If such request is submitted, the "report of utility model technical opinion" is issued. This "report of utility model technical opinion" is required when enforcing utility model rights. In principle, the rights can be enforced only after the technical opinion is presented (for warning) to the other party to whom the right is enforced.

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QCan a utility model registration application based on a PCT application be changed to a patent application?
AA utility model registration application based on a PCT application can be changed to a patent application, if the following requirements are satisfied.
  1. Japanese translations of description, claims, drawings (text matter of drawings) and abstract have been submitted.
  2. The document requesting national entry into Japan has been properly submitted.
  3. The fee relating to the national entry has been paid.
  4. Three years have not lapsed after the date of filing of the international application.
QWhat is a patent application based on a utility model registration?
AA patent application based on a utility model registration is established as a possible procedure to solve applicants' inconvenience that the period from filing to registration of utility model is so short that a chance to change a utility model registration application to a patent application as described in the above is limited. In this system, even once the establishment of utility model is registered, the utility model registration can be changed to a patent application. (In this case, the utility model right has to be abandoned.) However, the patent application based on a utility model registration is not allowed if any of the following cases apply:
  1. Three years have lapsed after the date of filing of the utility model registration application.
  2. The applicant/the right holder of utility model has filed the request for utility model technical opinion.
  3. Thirty days have lapsed from the date of receipt of the first notice that the request for utility model technical opinion was filed by a person other than the applicant/the right holder of utility model.
  4. An invalidation trial is filed against the utility model registration, and the period during which the first written answer can be submitted has lapsed.
QWith respect to a registered utility model, is there any matter to be noted when making a correction of the description, claims and drawings?
AIn principle, a registered utility model, once registered, can be corrected only once for the purposes of restriction of claims, correction of errors and clarification of an ambiguous statement. It should be noted that there is the restriction that the corrections to the registered utility model can be made within two months plus 60 days from the date of receipt of a certified copy of the first report of utility model technical opinion with respect to the utility model (in the case of an application from a foreign country to Japan). For example, since a report of utility model technical opinion should be presented when considering enforcement of utility model rights, a request for utility model technical opinion has to be filed. In this case, in consideration of the period during which correction can be made, it is necessary to, if possible, file a request for utility model technical opinion after roughly reviewing a policy for correction, then to make a correction within the period during which correction of the utility model can be made. Other than the above correction, the registered utility model correction system includes another chance of correction for the purpose of deletion of some of the claims. In this case, in principle, the number of corrections which are allowed to be made is not limited. However, it should be noted that the corrections cannot be made after the notice of a final and binding decision in a trial for invalidation of the utility model registration has been served.

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4. Others (Patent and utility model)

QWhen should a Power of Attorney be submitted?
ASubmission of a Power of Attorney is not required at the time of filing of an application. However, if it is required by the JPO, it has to be submitted. For example, if a Power of Attorney is not submitted when the agent is entrusted with the disadvantageous action stipulated in the Japanese Patent Act Article 9, the JPO will order submission of a Power of Attorney later. If a Power of Attorney is not submitted in response to the order, the procedure is dismissed in principle.
QPlease explain about official fees.
APlease refer to the information described in the following link.

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