If you are looking to file your patent in Japan, then you should know there are a couple challenges to take into consideration when doing so. In recent years, Japan has become the third country for patent application around the globe, right after China and United States. As a matter of fact, only in 2018 were presented over 300,000 applications to the Japan Patent Office. Now, what you must pay close attention to is that 19% of those applications were filed by non-residents, meaning that applicants from other countries will have a hard time dealing with high filing costs and patent translations. Today’s post aims to help you overcome these challenges if it’s your first time filing in Japan, or if you work for a company that often files there. Let’s see 11 things you must be aware of:
When filing directly, you may fill the application in English, but then you will have a 14 month deadline from the priority date to file the Japanese translation of the description, drawings, abstracts and claims. For PCT national phase entry, you’re given a 30 month deadline after filing to submit the translation, but there is also a translation extension you may ask for up to two months from the filing date. The best part is that you won’t have to pay any additional fees.
Did you know Japanese writing system has four different alphabets? They are Kanji, Hiragana, Katakana and Rōmaji. Yes and each one of them is used for a different purpose. If you think that sounds complicated, you’re right. That’s why Japan has an insanely high translation error rate and you may frequently find inaccuracies in their IP translations. In order to file your patent with the correct writing system, make sure you hire the services of a translation agency with expertise in patent translation. Not doing so can lead you to have language mistakes and ambiguities that eventually will make you spend more in office formalities and revisions.
We know you’re probably a very sociable person and that’s fine. But the Japanese law sticks to the first-to-file principle, meaning that they will award IP rights to the person who files the patent first, whoever that is. Therefore, it’s vital to keep your idea or cutting-edge invention quiet even to your friends or neighbors. If you feel the urge to discuss your idea with anyone, ask them to sign a NDA first. It’s simple and crystal clear. You may see a patent NDA sample here.
Now, non-resident applicants will most likely find themselves in a dead end alley when searching for prior art. That is because all previous patents are filed in Japanese. Nevertheless, if you access the Japan Platform for Patent Information database (J-PlatPlat), you may find machine translations of previous publications for free.
WIPO has an electronic system called Digital Access Service or DAS that will automatically take good care of the transfer of priority documents between patent offices. What does that mean? That you don’t have to go through the same road again and submit a priority document in Japan if you already did at the EPO or any of the patent offices listed here. JPO has been a participating member of this Digital Access Service since April 2009.
What’s a Patent Administrator? That will be a representative you will appoint in order to file your patent if you are a non-resident. If you do not live in Japan or have at least a business address, you may still proceed to file your patent application at the JPO and establish your filing date. But, in order to follow through with subsequent procedures, you will need to have a local address or, failing that, a local representative whose address will do. There are a few exceptions you may find listed here. This role can be performed by any patent attorney, attorney-in-law or firm previously registered to practice before the JPO.
You do not need a power of attorney form for filing a patent or appointing a representative. This power will be required if your local representative needs to respond to a rejection or if the granted patent is opposed. Now, if you included information about your representative in your filing application, you won’t need to submit any power of attorney.
Although you are free to choose wether to submit your application form in the traditional paper form or electronically, you should know the JPO will charge a significant fee for converting applications in paper to digital applications. Our advice? Go electronic, save money, time, paper and maybe also a tree.
That means you need to add as many finishing touches to the specification of your application as needed. Go through it over and over and make sure you’re no leaving anything out. The patent office is usually lenient on details in the specification, but they will rarely allow you to add any claims. The specification must describe the invention with enough details for a skilled person to be able to complete it.
There is no doubt Japan is one of the most expensive countries in which you can file your patent. The number of claims you add to your application won’t increase the initial filing fee you have to pay, but for each claim you add, you will be increasing examination and annuities fees. That’s why if you want to reduce your costs, you have to reduce the number of claims before the request for examination.
You must submit the request for examination within three years after filing your patent. If, passed this period, you do not file your request for examination, then it will be considered that you withdrew your patent application.
At Translation-Services-USA.com we can help you lower your patent translations and filing in Japan while ensuring top quality. Please contact us for more information.