This section has been prepared by Sonoda & Kobayashi Intellectual Property Law. Last update: June 2024.
The information provided in this Q&A is intended for reference purposes only and does not constitute exhaustive or definitive information. The content may not cover every possible scenario or address all individual circumstances. Users are encouraged to seek professional advice or consult additional resources for specific and detailed guidance.
1) What is the procedure to file a patent in Japan?
In order to protect your invention in Japan, you must file a patent application in the Japan Patent Office ("JPO") through one of the two routes1 : via the Paris Route or via the Patent Cooperation Treaty (“PCT”). The Paris Route application means to file a Japanese application within one year from the filing date in its original country/region claiming that the Japanese application be treated as if it were filed on the same day as the original application2 . By filing a PCT application in its original country/region under PCT and taking necessary actions called national phase entry in the JPO within 30 months from the original filing date, the application filed under PCT is treated as if it were a Japanese application filed on the date of PCT filing3.
Your patent application must have at least a claim, meaning a definition of your invention, and a specification, which is a detailed description of your invention. The JPO will then perform a formality check and will publish the application in a digital form and in the Official Gazette soon after the passage of 18 months from the date of filing.
Within three years of the filing date, you must request examination and pay examination fees, or else the application will be regarded as withdrawn. The JPO will then decide whether the claimed invention should be patented based on the following criteria:
1. Whether the claimed invention is based on a technical idea which utilizes the law of nature,
2. Whether it has any industrial applicability,
3. Whether the technical idea was known to the public before the filing of the current application,
4. Whether the claimed invention could have been easily invented by a person skilled in the art,
5. Whether the claimed invention is described in the specification so that the people in the relevant technical field would understand that the invention would work and how to use the invention.
If the examiner finds that a patent cannot be granted, the examiner issues a communication to let you know the reason. In this case, you can counter-argue or amend the claims to resolve the reasons for rejection. If the reason for rejection is resolved or if there was no reason for rejection from the beginning, a decision to grant a patent is issued. Then, you must pay the patent fee to have the patent registered and take legal effects. Your patent will be published in a digital form and in the Patent Gazette.
Japanese patent system operates under the first-to-file system, meaning that if two parties seek a patent for the same invention, the one who files first receives the patent. Therefore, it is recommended to file a patent application promptly after invention. Additionally, it is wise not to disclose the invention publicly before submitting a patent application4.
Feel free to reach out to us for legal advice regarding your patent needs in Japan.
1It is possible, rare though, to file a Japanese patent application neither through neither Paris Route nor through PCT Route which is to file a Japanese application without a patent application in its country/region of origin.
2This backdate of filing date is called “priority” in the “Paris Convention for the Protection of Industrial Property.”
3The “priority” under the Paris Convention may be claimed in a PCT application also. If priority is claimed for a PCT application, the above-described 30 month is calculated from the filing date of the first application on which priority is claimed.
4If a patent application is filed in its country/region of origin, there is no need for the applicant to rush to file a Japanese application as long as it is filed through the Paris Route or the PCT Route within one year claiming priority.
2) How much does it cost to file a patent application in Japan?
There are official fees payable to the JPO5 mainly associated with three steps before obtaining a patent in Japan.
1. Filing Fee: The filing fee for a patent application in Japan is ¥14,000 (or ¥22,000 if a Paris Route application is filed in a foreign language)
2. Fees for the Request for Examination: There is a separate fee charged by the JPO which is ¥138,000 + ¥4,000 per each one of the claims. (If the application is filed in the JPO through the PCT Route, the fee may be deducted depending on the organization which established the international search report.)
3. Annual Fees: To register and maintain a patent, annual fees must be paid to keep the patent in force. The annual fees increase over the life of the patent as follows:
- 1-3rd year: annually, ¥4,300 + ¥300 per claim
- 4-6th year: annually, ¥10,300 + ¥800 per claim
- 7-9th year: annually, ¥24,800 + ¥1,900 per claim
- 10-25th year: annually, ¥59,400 + ¥4,600 per claim
There may be other fees payable to the JPO associated with occasional processes, such as opposition, appeal, or trial fees, or other administrative fees such as the fees for requesting expedited examination.
A full overview of the official JPO fees can be found here.
Finally, you may also need assistance from a patent attorney or a translator. These fees may vary depending on the complexity of the invention and the applicant's status (individual, small entity, or large entity). Feel free to consult with us for precise cost estimates and guidance through the patent application process in Japan.
5As per June 1st 2024
3) Does a grace period on patents exist in Japan?
Yes, there is a grace period in Japan. The grace period allows for filing a patent application within one year after disclosing the invention to the public. But you must actively claim "exceptions to loss of novelty" when you file a patent application and supporting evidence must be submitted within 30 days after filing. Any disclosure to the public is eligible, including the publication in printing or in a digital way, presentations, displays, and sales. Multiple disclosures must be identified if that is the case. Failure to comply with the requirements will lead to the loss of novelty of the invention by the publication.
4) How can trademarks be protected in Japan?
Trademarks in Japan can be protected by registering them with the Japan Patent Office (JPO). Under trademark law, you can secure the exclusive use of the trademark, demand injunction and/or damages against infringers. The process involves submitting an application specifying the details such as the mark itself, the goods or services the trademark will be used for. Japan adopts the first-to-file system in which the registration is granted to the applicant who first filed an application. When applications for similar or identical trademarks are filed for similar or identical goods and services, only the applicant who filed the application first will be entitled to register it, regardless of whether the trademark has been used.
The JPO examines the application to ensure it meets all legal requirements, including distinctiveness, designation of goods/services, and non-similarity with existing trademarks. Once the fees have been paid and the trademark is registered, the owner has the exclusive right to use the trademark in Japan for the designated goods and services for ten years, with the possibility of renewal for additional ten-years as many times as necessary. When filing a trademark application directly in Japan, all procedures must be conducted in Japanese through a patent attorney domiciled in Japan. Alternatively, it is also possible to make an international trademark application through the Madrid system. The Madrid system allows trademark applicants to file a trademark application in the country/region of domicile which will be deemed to be a trademark application filed in the JPO.
5) What happens if a trademark in Japan is not used?
If a trademark registered in Japan is not used for a continuous period of three years or more, it may be subject to a cancellation action upon request by a third party. The cancellation action for the reason of non-use ensures that the trademarks in the registry are actively used and not merely hoarded. To avoid cancellation, trademark owners must use their trademarks for the designated goods or services. In a cancellation action for non-use, the trademark owner must prove the use to avoid cancellation.
6) What can be protected by a utility model in Japan?
A utility model in Japan can protect inventions that are novel and industrially applicable, particularly those that relate to the shape or structure of articles or a combination of articles (methods are not eligible for utility model registration). While the patent system is designed to protect an invention which involves highly advanced and sophisticated technologies, the utility model system is, on the other hand, designed to protect devices with smaller inventive steps. The words "invention" (i.e., reflecting "high creativity") and "device" (i.e., reflecting "creativity") are used for ideas involving different levels of creativity. Examples include mechanical devices, tools, and consumer products with improved functional features. The protection for utility models is granted for a shorter duration (up to 10 years) compared to patents and requires a simpler and faster examination process before registration. Unlike patents, utility models are not substantively examined before registration, which means they can be registered more quickly. However, this also means that their validity might be challenged later. Utility model rights provide a cost-effective way for inventors to protect incremental improvements to existing products.
7) Can a patent application be converted into a utility model application?
Yes, in Japan, a patent application can be converted into a utility model application. This can be done at any time before the patent right is granted, provided that the subject matter meets the requirements for utility model protection. The conversion process involves filing a Utility Model application claiming that the application is a conversion from a Patent application and paying the necessary fees. This flexibility allows applicants to adjust their strategy based on the specific attributes and potential market for their invention.
Converting a patent application to a utility model application might be beneficial when faster protection is needed, or when the invention is better suited to the shorter protection period and less stringent examination of a utility model. Conversely, a utility model application or a registered utility model can also be converted into a patent application within three years of the filing date of the utility model application.
8) How can one protect designs in Japan?
In Japan, designs can be protected through "Design Registration." To be eligible for design protection in Japan, a design must be new and possess individual character. This means it should not be identical to any existing design and should not be an easy modification of known designs.
The first step is to file an application for design registration at the JPO. The application should include a drawings of the design and goods to which the design is to be applied along with the information identifying the applicant and any priority claims if applicable. The JPO will examine the application to ensure that the design meets the requirements of novelty and individual character. If the application meets these criteria, the design will be registered. Once registered, the design will be published on the website as well as in the Official Gazette of the JPO. A certificate of registration will be issued.
The term of protection for a registered design is 25 years from the filing date. With a registered design, you have the exclusive right to use the design for the designated goods and can take legal action against anyone who infringes your rights. This may involve seeking damages, injunctions, or other remedies through the Japanese legal system. Parties can file an invalidation action if they believe the design should not have been registered.
Japan participates in the Hague System for the International Registration of Industrial Designs, which allows applicants to seek design protection in multiple countries through a single international application filed with the World Intellectual Property Organization.
