Procedure for a patent registration in Japan:
(1) Application filed at JPO
(2) Formality Examination
(3) Publication of Unexamined Application
The JPO will publish the content of an application in the Official Gazette after 18 months have elapsed from the date of filing.
(4) Request for Examination
(6) Substantive Examination
(7) Notification of Reasons for Refusal / Written Argument- Amendment or Decision to Grant a Patent
(8) Decision of Refusal
(9) Registration (Patent Fee Payment)
As to a patent application: (Paris Convention route)
*Filing an application: should be done within one year from the priority date.
*Filing a Request for Examination: should be done within three years from the filing date.
*Entering the national phase: should be done within two and a half years from the priority date.
*Filing a Request for Examination: should be done within three years from the International Filing Date.
In both cases, in our experience the first Office Action (OA) will issue around a year after filing the Request for Examination. During the time during which an application is pending, on average two or three Office Actions issue.
Request for examination must be filed within 3 years from filing date.
You can use an accelerate examination system if you wish to accelerate the substantive examination.
Responding to a Notice of Reason (Official Action) for Refusal:
* Response due: 3 months from the issue date of the Office Action
Responding to a Decision of Refusal
* Response due: 4 months from the issue date of the Office Action
Depending on the case, it takes several years before an application is granted, approximately from 2 to 3 years.
Once the patent application has been approved for registration, 1-3 years annuities fees must be paid.
For normal cases the life of a patent is 20 years from the filing date, and an exception, an extension, is allowed for pharmaceutical cases.
Patent Applications in Japan
Acceptance of Foreign-Language Patent Applications in Japan
Foreign-language patent applications have been accepted by the Japan Patent Office (JPO) with effect from July 1995. It should be noted, however, that foreign-language applications are limited solely to English for the present and that no similar arrangement is currently available for utility model applications.
A patent application including an English language specification which contains one or more claims and is accompanied by a petition for patent prepared in Japanese will be accepted by the JPO, provided that a Japanese translation of the specification filed in English follows within one year and two months from the priority date of the patent application including the English specification.
Advantage of Filing English-language Application in Japan
Filing of an English-language application is advantageous in terms of making corrections to incorrect translation and avoiding a fatal loss of patent right.
In principle, amendments to the description, claims and drawings need to be made within the scope of matters described in the Japanese- language description, claims, and drawings as originally filed.
If the application is filed in English, amendments can be made within the scope of matters contained in the English version of specification. This is possible by submitting a statement of correction of an incorrect translation.
Trademark Law in Japan
Legal basis is the Trademark Act of 1959, last amendment in force since April 1, 2018.
Japan is a member of the Madrid Protocol.
The trademark law has been revised to permit registration of marks for retail or wholesale services (Law No. 55 of 2006, passed in the Diet in June of 2006 and effective as of April 1st, 2007).
Trademark protection is obtained by registration. It can also be acquired by sufficient public recognition pursuant to Section 2, Paragraph 1 (i) and (ii) of the Unfair Competition Prevention Law.
Japan follows the first-to-file system.
Nice classification, 11th edition. Multiple-class applications are possible.
Trademark Registration Procedure in Japan
The application is filed at the JPO.
The application process includes a formal examination and a substantial examination which includes an examination of distinctiveness and a search for prior trademarks. Signs not deemed distinctive in the examination can be registered if distinctiveness has been acquired by use.
The trademark application is published in the Trademark Gazette (Shohyou Koukai Kouhou) before substantive examination, approximately one month after the filing date of the application. After registration, the trademark is again published in the Trademark Gazette (Shohyou Kouhou) approximately one month after issuance of the trademark registration certificate.
The applicants expect to receive a first office action/acceptance of a trademark registration about 4 to 10 months following the filing date.
National Opposition Period
The opposition period is 2 months from publication date of the registration.
A trademark registration is valid for 10 years from the date of registration. The registration is renewable for periods of 10 years.
Filing an application: it should be done within six months from the priority date.
If no Official action (OA) issues, it will take 10 to 14 months from filing the application to get the registration. In most cases, an applicant receives one or more OAs, in which event the pending time in the Patent Office takes three to six months per case.
Information require to file a trademark application in Japan:
(a) The applicant's name, address and nationality
(b) The goods and/or services and Class or Classes of goods or services to be covered by the application
(c) Simply signed Power of Attorney
(d) Specimens of Trademark
(i) Trademark of Not-New Type
Please send us, by email, a specimen of the trademark as a JPEG attachment. If the JPEG attachment cannot be prepared, please send us six (6) specimen copies by mail, courier, etc. If the trademark to be applied for is merely standard characters, you do not have to send us the specimen.
(ii) New type trademarks such as “color mark”, “position mark”, “motion mark”
* Please send, by email, a specimen of the trademark as a JPEG attachment. If the JPEG attachment cannot be prepared, please send us six (6) original copies of the specimen by mail or courier.
* Could you please let us have any explanatory document? We need to make a summary explanation of the trademark in the application document. In this regard, if you have already applied for a trademark registration for the same trademark in the US before applying in Japan, we would like to have copies of the application, the publication copy, etc. The “Description of Mark” that must be included in the application for the US trademark would help greatly.
* In the case of “color mark”, we also need to describe, in the application document, the internationally recognized color code (such as PANTON) of your trademark so that please let us know the color code.
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(iii) Trademarks of “sound mark”
* Please send us a digital MP3 file recording the sound mark
* “Sound mark” is not required to be included in the application document but if you have any item that facilitates the examiner’s understanding of your trademark such as a brief explanation or a music score, etc., it would be quite useful.