JAPAN Industrial-property-rights FAQ
- Q1-1 What type of intellectual property rights is the Japan Patent Office (JPO) responsible for?
- A1-1 The JPO is responsible for examining patents, utility models, industrial designs and trademarks; as well as conducting trials and appeals concerning these four kinds of rights.
- Q1-2 Do I need to appoint a representative/agent in Japan to represent me if I apply for patents, etc. to the JPO from outside Japan?
- A1-2 Yes. Only persons/entities who have residential or business addresses in Japan may apply directly (in-person) for patent, utility model, industrial design, or trademark rights.
- Q1-3 How can I search or obtain Japanese patent information?
- A1-3 You can search patent information on the website of the Japan Platform for Patent Information (J-PlatPat) .The J-PlatPat provides a database of publications of patents, utility models, industrial designs and trademarks. And you can also check the current legal status of each application through this service.
Machine translated publications are available in the J-PlatPat database free of charge.
- Q1-4 Which international treaties on industrial property rights is Japan a member of?
(In Japan “industrial property rights” means patents, utility models, industrial designs and trademarks rights.)
- A1-4 JAPAN is a member of the following international treaties:
- Convention Establishing WIPO
- Paris Convention for the Protection of Industrial Property
- Patent Cooperation Treaty
- Strasbourg Agreement Concerning the International Patent Classification
- Budapest Treaty on the International Recognition of the Deposit Microorganisms for the Purpose of Patent Procedure
- WTO Agreement of Trade Related Aspects of Intellectual Property Rights, including Trade in Counterfeit Goods
- Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of Registration of Marks
- Trademark Law Treaty
- Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks
- Q1-5 Can the JPO send me a notice informing me when my patent rights are about to expire?
(Or my utility model, design, or trademark rights?)
- A1-5 Unfortunately, the JPO doesn’t provide any notices about expiration dates.
- Q1-6 Is there any way to reduce or exempt my fees？
- A1-6 Yes, the JPO actually has two programs to either reduce or exempt fees for eligible applicants. One program is for national applications, and it either reduces or exempts the "annual patent fee", "examination request fee", and "utility model fee” (registration and registrability report). The other program is for international applications, and it either reduces or exempts the "search fee", "transmittal fee" and "preliminary examination fee". To be eligible for these programs, applicants must be individuals, companies, SMEs (Small and Medium Sized Enterprises), and SMEs engaged in R&D, and must meet certain requirements stipulated under Japanese law such as the Patent Act and the Industrial Technology Enhancement Act.
- Q1-7 I hope my application will be examined as quickly as possible. Is there any way to speed up the examination process?
- A1-7 Yes, there is. The JPO offers an accelerated examination program. Basically, when an application has been granted accelerated status under the accelerated examination program, the JPO will advance that application out of turn and examine it earlier and faster than it would for standard applications. However, in order to have your application undergo the accelerated examination process, you must first request for accelerated examination and also meet certain conditions*.
The average times for FAs (first office actions) in 2013 under the accelerated system are as follows.
- Patents:1.9 months
- Designs:1.8 months
- Trademarks:1.8 months
*Applications that meet the following requirements are eligible for accelerated examination.
- Q2-1 What is a patent?
- A2-1 A patent is property right, which has a limited duration, connected to an invention. Patent rights are given in exchange for the patent right holders’ disclosing the arts used in their inventions. A patent right is a right granted to a person or entity.
Anyone filing for a patent right must satisfy specific requirements stipulated in Japan’s Patent Act in order to obtain a patent right.
Under the Patent Act, an “invention” is defined as a “highly advanced creation of technical ideas by which the laws of nature are utilized”. In addition, the invention needs to meet the following requirements.
- Industrial applicability
- Inventive step
- Must be the first-filed application for the subject patent, i.e. meet the “first-to-file” requirement
- Complies with public order and morality
- Q2-2 How long does a patent right last?
- A2-2 A patent right lasts 20 years from date on which the application for the right was filed.
- Q2-3 How long is a waiting period for patent examinations?
- A2-3 The average time is 14.1 months, as of 2013*. This is the amount of time it takes from the time applicants request examination, up to the time the first office action, is given.
*Per the JPO’s 2014 Annual Report.
- Q2-4 Do I have to file a request for an examination after I have filed my application for a patent?
- A2-4 Yes. If you don’t request an examination within three years from the date on which you filed your patent application, your patent application will be deemed to have been withdrawn.
- Q2-5 Can I file a patent application that is not in Japanese?
- A2-5 Yes, the JPO accepts patent applications in English via the non-PCT route.
According to a regulation stipulated by the METI (Ministry of Economy, Trade and Industry), a patent application that contains a request written in Japanese, and which is accompanied by the description, claims and drawings stating the items to be described written in English, will be acceptable.
- Q3-1 What is a utility model?
- A3-1 A utility model is a device relating to the shape or construction of articles or a combination of articles, (which is industrial applicable) and is characterized by creative technological concepts based on natural laws and rules. Methods such as manufacturing methods or processes are not protected under the Utility Model Act.
- Q3-2 What is the difference between a patent and a utility model?
- A3-2 The main difference is whether the invention undergoes substantive examination or not. Though substantive examination is necessary to determine the existence of novelty, inventive step, etc. when it comes to obtaining a patent right, a utility model is registered without undergoing any substantive examination, as long as it meets the formal and basic requirements that are stipulated under Article 6-2 of the Utility Model Act.
As a result, the validity of a utility model right is actually uncertain since it does not undergo substantive examination. Even if someone infringes on the utility model right, the proper rights holder cannot immediately take action to demand a stop to infringements or to claim damage. In order to take action to demand a stop to an infringement or to claim damage, the rights holder must request a “registrability report” that the JPO provides. This report contains an expert opinion on aspects such as the novelty and inventive step of the utility model.
- Q3-3 How long does a utility model right last?
- A3-3 The term of protection for a utility model right is 10 years from the filing date.
- Q3-4 How long does it take to be granted a utility model right?
- A3-4 The average time, from filing up to registration, is about 2 months, as long as there are no issues or omissions.
- Q3-5 What is a Utility Model Technical Opinion (registrability report)?
- A3-5 A Utility Model Technical Opinion (registrability report) is a report, which is issued by the JPO, that supports examiners in making objective evaluations as to the registrability of utility models, in respect to prior art documents.
- Q4-1 What is an Industrial design?
- A4-1 An industrial design is a creative design indicating the shape, pattern, color, etc. of an article or a part of an article.
- Q4-2 How long does an industrial design right last?
- A4-2 The term of an industrial design right is 20 years from the registration date.
- Q4-3 How long is a waiting period for industrial design examinations?
- A4-3 The average time from filing date to the first office action stands at 6.3 months, as of 2013, according to the JPO’s 2014 Annual Report.
- Q4-4 Does Japan conduct substantive examination on designs?
- A4-4 In Japan, examination is conducted on all applications that are filed. It is not necessary to request for examination, like when filing for a patent.
- Q5-1 What is a trademark?
- A5-1 A trademark is a mark that indicates goods or services and which enables one person’s goods or services to be distinguished from another’s by means of such marks.
- Q5-2 How long does a trademark right last?
- A5-2 The term of a trademark right is 10 years from the registration date.
The term of a trademark right may be renewed when the rights holders request that their trademarks be renewed.
Trademark rights can be renewed every 10 years.
- Q5-3 How long is a waiting period for trademark examinations?
- A5-3 The average time, from the filing date up to the first office action, is around 4.2 months, as of 2013, according to the JPO’s 2014 Annual Report.
- Q5-4 How can I renew my trademark registration?
- A5-4 By submitting a “request to renew a registration” within six months prior to the time your trademark is going to expire, you can renew your trademark right. You need to pay the renewal fee at the same time you request to renew your trademark right.
- Q5-5 What are “regional collective trademarks”?
- A5-5 Regional collective trademarks are trademarks that are derived from the names of regions and the goods or services rooted in those regions, i.e., they are trademarks containing the names of regions and the good and/or services associated with those regions.
Trademarks can be registered as regional collective trademarks under the regional collective trademark system, provided they meet the requirements listed below, even if their names are not well known throughout the country: (1) the specific goods and/or services must be closely associated with their respective regions, and (2) the specific goods and/or services must be well known in their respective specific geographical areas as a result of their being used by the applicants, i.e., local business cooperatives, agricultural cooperatives, and other collective groups and organizations.
- Q5-6 Can I amend my trademark after I have already filed my application? In other words, can I change the trademark or add more designated goods or services?
- A5-6 Unfortunately, that will not be possible. You will need to file a new application because changing your trademark or adding more goods or services in essence changes the nature of your initial application.