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Outline of Procedures for Obtaining Patents in Japan -A Guide for Foreign Applicants-
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KOGO INTERNATIONAL PATENT OFFICE
7-36-1-707, Kokuryo-cho, Chofu-shi, TOKYO 182-0022, JAPAN
Phone +81 042 420 7801
Facsimile +81 042 420 7803
Represented by Jun KOGO
Registered Patent Attorney
Having more than 20 years of experience in patent matters

Our office is good at the technical fields of machines, apparatuses, tools, electric equipment, medical devices, and others, and provides good quality services at competitive fees.

When e-mailing, please indicate your name, company name (if applicable), e-mail address, and country.
Our schedule of charges will be sent on request.

This website contains information on protection of IP rights including patents, utility models, designs, and trademarks in Japan. Information in English on protection of inventions, including filing patent applications in Japan, the grant procedure of a patent at the Japan Patent Office, and post-grant procedures is also provided.

An associated patent office is Kato & Associates Law Office with a website at http://kato-pat.com/.


Outline of Procedures for Obtaining Patents in Japan
-A Guide for Foreign Applicants-



By Jun KOGO


This guide is based on the latest revision of the Japanese Patent Law in April 2008, which fully entered into force on April 1, 2009.

This guide is originally intended for our foreign clients and our potential foreign clients. If your are neither of these, it would be suggested that you directly ask your representative in Japan for further information on the Japanese Patent Law and practice, including replies to your possible questions about the contents of this guide. Your questions will be better replied to in that way on a case-by-case basis of your applications for patents in Japan, in the light of the actual situation thereof. Moreover, it must be said that we are not responsible for any damages that might be caused by the use of this guide.


CONTENTS
1 Applications for patents
2 Documents required for filing applications for patents
2.1 Conventional applications
2.2 PCT national stage applications in Japan
3 Formalities examination
4 Publication of applications for patents
5 Request for examination
6 Substantive examination
7 Times when amendments can be made
8 Limits to amendments that can be made
8.1 Amendment before receipt of final official action
8.2 Amendment after receipt of final official action
9 Examiner's decision on applications for patents
10 Appeal against examiner's decision to refuse application for patent
11 Divisional applications
12 Post-grant procedures
Main patent-related official fees of the Japan Patent Office


1. Applications for patents

(1) Conventional applications for patents other than under the PCT (Patent Cooperation Treaty)
An application for a patent can be filed with or without claiming foreign priority under the Paris Convention (Paris Convention for the Protection of Industrial Property). To claim foreign priority, the patent application must be filed within 12 months from the date of priority (from the earliest priority date if two or more priorities are claimed) to secure the right of priority.

The languages in which an application for a patent can be filed are the Japanese language and a foreign language (limited at present only to English), in the latter case of which a translation of the application into Japanese must be submitted within 1 year and 2 months from the earliest priority date. Otherwise, the application will be deemed to have been withdrawn. A patent application in the foreign language (English) will herein be referred to as a "foreign language application".

(2) PCT national stage applications in Japan
In order for an international application filed in other than Japanese to enter the national stage in Japan, a translation into Japanese of the international application as filed (as of the international filing date) must be filed within, as a rule, 30 months from the international filing date or, if priority has been claimed, from the earliest priority date. However, if a national stage request in Japan, which sets out the name and address of the applicant, the international filing number, etc., is filed within 2 months prior to the expiry of the above 30-month period, a translation of the international application may be filed within 2 months from the date on which the national stage request was filed.
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2. Documents required for filing applications for patents
2.1. Conventional applications

(1) For an ordinary Japanese-language patent application, the following documents are usually required.

(a) Request
(b) Specification
(c) Claims
(d) Drawings (where applicable)
(e) Abstract
(f) Priority document if foreign priority is claimed.

To claim foreign priority, the country in which the regular first application was filed and its filing date must be indicated at the same time as filing the patent application in Japan, and the priority document must be submitted within 1 year and 4 months from the earliest priority date. The application number of the earlier application needs to be indicated together with the submission of the priority document. If the priority document is not filed within the above time limit, the right of priority will be lost.

However, where foreign priority is claimed from an earlier application filed with the European Patent Office or the Korean Patent Office, the priority document can be omitted provided that the application number of the earlier application is furnished to the Japan Patent Office within the time period of 1year and 4 months from the earliest priority date. This is because the priority document data is electronically transferable among these Patent Offices. The same also applies, under certain conditions, to the case of claiming priority of an earlier application filed with the USPTO.

(2) For a foreign language (English) patent application, the following documents are usually required.

(a) Request in Japanese
(b) Foreign language documents (i.e., foreign language specification, claims, and drawings (where applicable))
(c) Foreign language abstract
(d) Translation into Japanese of the foreign language documents
(e) Translation into Japanese of the foreign language abstract
(f) Priority document if foreign priority is claimed

Needless to say, if foreign priority is claimed, the foreign language application must be filed within 12 months from the date of priority to be entitled to the right of priority.

When the Request in Japanese and the foreign language documents have been filed, the application is accepted as a regular patent application and is accorded a date of filing. A foreign language application, however, is examined for the substantive requirements of the Japanese Patent Law based on the translation of the foreign language application, and a patent is granted based thereon.

The translation of the foreign language documents and the foreign language abstract must be filed no later than 1 year and 2 months from the earliest priority date. With regard to the drawings, the entire drawings must be submitted as a translation thereof irrespective of whether or not they contain text matter.

If a translation of the foreign language documents (excluding drawings) has not been filed within the above 1 year and 2 month period, the application is deemed to have been withdrawn. If a translation of the drawings is not filed, the drawings are deemed not to have been attached to the application. If a translation of the abstract is not filed, the applicant will be required to submit a translation thereof within a time period set by the Commissioner of the Patent Office, and the failure to comply with this requirement may result in the application dismissed.

For the procedure of claiming foreign priority, please see 2.(1) above.

As will be mentioned later, errors in translation may be corrected to conform the translation to the foreign language application as filed.
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2.2. PCT national stage applications in Japan

For a PCT national stage application in Japan from an international application filed in other than Japanese (hereinafter referred to as a PCT national stage application in Japan), the following documents are usually required.

(a) National stage request
(b) Translation into Japanese of the specification, claims, drawings (only of the text contained in the drawings, if any), and abstract as filed (as of the international filing date)
(c) Where applicable, translation into Japanese of the amendment under Article 19(1) PCT and/or the amendment under Article 34(2)(b) PCT
(A translation of the amendment under Article 19(1) PCT may be filed in lieu of that of the claims as filed, as well as in addition thereto.)

As a rule, a translation of the specification, claims, drawings, and abstract must be filed within 30 months from the international filing date or, if priority is claimed, the earliest priority date. The same also applies to a translation of the amendment under Article 19(1) and of the amendment under Article 34(2)(b) PCT. As mentioned earlier, however, if the national stage request is filed within a period of 2 months preceding the expiry of the 30-month period, a translation of these documents can be filed within 2 months from the date of filing the national stage request (This period is referred to as a "translation submission special period").

If a translation of the specification and the claims (as filed or as amended under 19(1) PCT) is not filed within the 30-month period or the translation submission special period, the national stage application in Japan is deemed to have been withdrawn. If a translation of the text contained in the drawings is not filed, the text is deemed not to have been included in the drawings. If a translation of the abstract is not filed, the applicant is required to submit it within a time period set by the Commissioner of the Patent Office, and the failure to comply with this requirement may result in the national stage application in Japan dismissed. If a translation of the amendment under Article 19(1) or 34(2)(b) PCT is not filed, the amendment is deemed not have been made.

No particular steps for claiming foreign priority are prescribed at the stage in Japan, as the provisions thereon of the PCT apply.

Errors in translation may be corrected to bring the translation into conformity with the international application as filed.
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3. Formalities examination

An application for a patent accorded a date of filing is subjected to formalities examination and checked for any deficiencies as to formal requirements, such as omission of the abstract or non-payment of the filing fee. If any correctable deficiencies have been found, the applicant is notified accordingly and required to correct them within a time period set by the Commissioner of the Patent Office. The failure to timely comply with this requirement may result in the application dismissed.
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4. Publication of applications for patents

Any pending application for a patent will be published after 18 months have elapsed from its filing date in Japan or, if priority is claimed, the earliest priority date, irrespective of the examination stage of the patent application. Provisional protection is afforded under certain conditions after such publication of a patent application. An earlier publication of a patent application before expiry of the 18 months may be requested by the applicant.
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5. Request for examination

A patent application is examined by a Japan Patent Office examiner only after a request for examination has been filed in the application. Therefore, without a request for examination, no examination for substantive requirements including patentability such as novelty, inventive step or non-obviousness, and industrial applicability is performed, and no patent is obtained.

As a rule, the request for examination must be filed within 3 years from the date of filing an application for a patent in Japan. It may thus be filed at the time of filing the patent application. In the case of a foreign language application, the 3-year period is counted from the date on which the foreign language application was filed rather than the date of filing a translation thereof. In the case of a PCT national stage application in Japan, the request for examination must be filed within 3 years from the international filing date of the international application. With a divisional application, examination can be requested within 30 days from the date of division even after expiry of 3 years from the date of filing the parent application. Where the request for examination is not filed in time, the application is deemed to have been withdrawn. Incidentally, the request for examination may also be filed by a third party such as a competitor.

A fee must be paid for requesting examination. The request for examination fee already paid may be refunded by 1/2 if the patent application is abandoned or withdrawn after filing the request for examination and before the commencement of substantive examination of the application by the Patent Office examiner, i.e., before receipt of a first notification of the results of substantive examination of the application, provided that the refund is requested within 6 months from the abandonment or withdrawal of the patent application.
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6. Substantive examination

(1) An application for a patent is examined by the Patent Office examiner for the substantive requirements for a patent, including first-to-file applicant, industrial applicability, novelty, inventive step or non-obviousness, enabling disclosure of the claimed inventions in the specification, clearness of the claimed inventions, etc., so as to determine whether a patent may be granted on the patent application. If any of these requirements is not satisfied, the examiner sends the applicant (the representative in Japan) an official action to notify thereof as a reason for refusing the patent application. The applicant can, in reply to the official action, submit a written opinion in support of his/her claimed inventions and, where appropriate, an amendment to the specification, claims and/or drawings, within a time period specified in the official action. Where the applicant is residing abroad, 3 months is usually set as the reply period and is extendable up to another 3 months.

(2) There are two types of official actions, one being a first official action and the other a final official action. The final official action is, in principle, the one that notifies only of the reason(s) for refusal necessitated to be notified by the amendment made in reply to a previous official action. Accordingly, unless it notifies only of such a reason for refusal, a second or third official action is a first official action. For example, if the examiner overlooked a reason for refusal when issuing a first official action, and he/she included the overlooked reason for refusal in the next official action, this next official action is made a first official action. As will be later mentioned, strict limits are imposed on amendment of the claims after the final official action has been received.

(3) First and final official actions are usually issued before the decision to refuse a patent application is taken by the examiner. However, if any reason for refusal notified in a first official action remains unremoved even by the applicant's reply thereto (written opinion and/or amendment), the decision to refuse the application may be made without the issuance of a final official action. Thus, a final official action is not necessarily issued.

(4) With respect to a divisional application and a parent application thereof, it may happen that a reason for refusal of one of these applications (e.g. divisional application) is the same as that already notified in the examination of the other (e.g. parent application) as a result of, for example, the same subject matter being claimed in these applications. In such a case, a later official action on the divisional application that notifies of the reason for refusal is accompanied with a notice that the reason for refusal is the same as that already notified in the parent application. When accompanied with such notice, even a first official action on the divisional application has the same legal effect as a final official action, imposing the same strict limits on amendments that can be made to the claims in reply to the first official action. The same also applies between patent applications divided from the same parent application.

(5) A requirement for the specification of a patent application is to include information on the sources of relevant prior art (names, etc. of printed publications) known to the applicant at the time of filing the application. If this requirement is not met, the examiner invites the applicant in writing, in most cases in advance of a first official action, to add such information in the specification by amendment or give a reasonable explanation of not having known such prior art at the time of filing, within a time period set by the examiner (usually 60 days for applicants abroad, not extendable). If the invitation is not appropriately replied to, a first official action will be issued which notifies of the non-compliance with this requirement as a reason for refusing the application.

(6) The reasons for refusal based on which a patent application can be refused are provided in Article 49 of the Patent Law. Article 49 sets out, as reasons for refusal, not only non-compliances with the substantive requirements, but also unlawful amendments that are made to the specification, claims or drawings before receipt of a final official action, such as an amendment that adds new matter not disclosed in the application as filed. Thus, an unlawful amendment may be notified as a reason for refusal of the application in an official action, at which time the applicant needs to, for example, remove the added new matter in reply to the official action. Incidentally, if after receipt of a final official action, such an amendment is dismissed by the examiner rather than forming a reason for refusal of the application.
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7. Times when amendments can be made

Amendments to the specification, claims, or drawings can be made:
(1) At any time before a first official action is received. Accordingly, an amendment can be made, for example, at the same time as requesting examination for the patent application, or at the time when replying to the examiner's invitation under 6.(5) above to add information on the sources of relevant prior art.

Once a first official action has been received, the times when amendments can be made are limited to the following.

(2) Within a reply period to a first official action. As mentioned earlier, a time period of 3 months is usually set in the official action as the reply period thereto if the applicant is a resident abroad. This period is extendable by 3 months upon request before the expiry of the initial 3-month period.

(3) Within a reply period to the examiner's invitation under 6.(5) above if the invitation to add information on the sources of relevant prior art is notified after a first official action has been received. Thus, an opportunity is given to comply with this requirement on the sources of relevant prior art even after receipt of a first official action.

(4) Within a reply period to a final official action. As is the case with a first official action, a time period of 3 months is usually set as the reply period for applicants residing abroad, and is extendable by 3 months upon request before the expiry of the initial 3-month period.

(5) At the same time as appealing to the Board of Appeal in the Patent Office against the examiner's decision to refuse the patent application. Such an appeal can be filed within 3 months from the date of notification of the examiner's decision to refuse the application. Thus, a period of 3 months is available for preparing an amendment to the specification, claims, and/or drawings.

(6) Within a reply period to a first official action and, where applicable, to a final official action by the Board of Appeal, at the stage of proceedings of the appeal against the examiner's decision to refuse the patent application. During the appeal proceedings, a first official action and a final official action may be issued by the Board of Appeal, such as when the Board of Appeal holds the appeal to be well founded, but has found some other reason for refusal of the patent application. In such a case, an amendment can be made to the specification, claims, and/or drawings within the reply period specified in such official actions.

(7) With respect to a foreign language application or a PCT national stage application in Japan, errors in translation may also be corrected within the time limits mentioned above to conform the translation to the foreign language application or the international application as filed, by way of amendment for the purpose of correcting translational errors.
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8. Limits to amendments that can be made
8.1. Amendment before receipt of final official action

(1) Amendments to the specification, claims, or drawings must be made within the scope of original disclosure in the patent application as filed in Japan. No new matter may be introduced. The priority document cannot provide basis for deciding on new matter.

The original disclosure includes subject matter expressly present in the application as filed, as well as subject matter not expressly present but inherently present in the originally filed application. The subject matter inherently present is intended to mean the same subject matter as if contained in the application as filed, judging from the original disclosure therein in the light of common technical knowledge at the time of filing.

With respect to a foreign language (English) application or a PCT national stage application in Japan, such an amendment must be made within the scope of disclosure in the translation of the foreign language application or the international application, except when correcting translational errors in the translated specification, claims or drawings. In the latter case, the correction of errors in translation may of course be made based on the foreign language application or the international applications as filed. The correction of errors in translation must be made with submission of a translational error correction statement.

(2) When amending the claims of a patent application, unity of invention must be maintained between the inventions claimed before and after the amendment. More specifically, unity of invention must be maintained between the inventions which were examined for patentability by the examiner and for which the examination results were shown in a previous official action, and the inventions claimed after the amendment of the claims.

(3) If any of these limits under (1) and (2) above is not observed, the amendment constitutes a reason for refusal of the patent application, which will, in most cases, be notified to the applicant in the next official action.

Regarding a foreign language application or a PCT national stage application in Japan, and with respect to (1) above, if the application contains subject matter beyond the disclosure in the foreign language application or the international application as filed, which subject matter may be occasioned by the translation work at the time of filing or amendment thereafter, it makes a reason for refusal of the application, as well as, if a patent were granted, a ground of invalidation of the patent. (Such a ground of invalidation may be removed by correcting the errors in translation under certain conditions after the grant of a patent.) On the other hand, an amendment that is beyond the disclosure in the translation, but not in the foreign language application or the international application as filed, it becomes a reason for refusal of the application, but not, if a patent were granted, a ground of invalidation of the patent.

If (2) above is not complied with, of all the inventions claimed after the amendment of the claims, those that satisfy the unity of invention requirement are made the subject of further examination by the examiner, while those not satisfying the requirement are put aside from the examination and give rise to a reason for refusal of the patent application.
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8.2. Amendment after receipt of final official action

Stricter limits are imposed on amending the claims of a patent application in reply to a final official action, as well as at the time of appealing to the Board of Appeal against the examiner's decision to refuse a patent application.

Furthermore, in the case of divisional applications and a parent application, these limitations also apply when amending in reply to a first official action on one of these applications, if the first official action is accompanied with the notice that the reason for refusal (any of the reasons for refusal) being notified is the same as that already conveyed in another of the applications (vid. 6.(4) above).

(1) The same limits as before receipt of final official action

(a) No new matter may be introduced by amendments to the specification, claims or drawings.

In the case of a foreign language application or a PCT national stage application in Japan, an amendment other than for the purpose of correcting errors in translation may not extend beyond the disclosure in the translation of the foreign language application or the international application. Correction of errors in translation may not extend beyond the disclosure in the foreign language application or the international application as filed.

(b) With respect to amending the claims of a patent application, unity of invention must be maintained between the inventions which were examined for patentability by the examiner and for which the examination results were shown in a previous official action, and the inventions claimed after the amendment of the claims.

(2) Furthermore, amendments to the claims of a patent application are limited to those for the following purposes.

(a) Cancellation of a claim or claims
Naturally, redrafting of a claim from dependent form to independent form, or renumbering of the claims with cancellation of a claim or claims is permissible.

(b) Narrowing of the claims by limiting one or more of the elements of the invention defined in a claim while maintaining the same problem to be solved and the same technical field of use of the invention. Accordingly, limiting a claim to, for example, include an additional element does not comply with this requirement. The "same" problem to be solved includes the case where the problems to be solved before and after the amendment are technically closely related to each other, if not completely the same. Thus, for example, the problems to be solved of "improvement in strength" and "improvement in tensile strength" are generally construed as the same problem to be solved. Likewise, the "same" technical field of use includes the case where the technical fields of use before and after the amendment are closely related to each other. Thus, for example, the technical fields of use of "clutch" and "clutch for an automatic transmission" are generally construed as the same technical field of use. (These examples are from the Examination Guidelines for Patent and Utility Model by the Japan Patent Office.)

(c) In connection with (b) above, it is further required that the limitation of a claim must be such as to make the invention claimed patentable. In other words, the limiting amendment of a claim is accepted only if it makes the claimed invention patentable in the light of requirements for a patent such as novelty, inventive step or non-obviousness, support of the claimed invention in the specification, clearness of the claimed invention, etc. The reason for this is to avoid another reason for refusal of the application arising from such amendment, requiring to be separately notified to the applicant.

(d) Correction of typographical errors
Typographical errors in the claims may be corrected.

(e) Clarification of ambiguities in the claims (limited to clarification of matters pointed out in final official action)
An ambiguity in a claim may be clarified if the clarification is on a matter pointed out by the examiner in a final official action. "Clarification" means amending to remove ambiguities of wording or a phrase in a claim and make the original intended meaning of the wording clear. Examples of ambiguities include where the wording itself is unclear in meaning, is inconsistent with the description in other parts of the patent application, etc.

(3) Amendment for the purpose of correcting errors in translation may also be made within the limitations mentioned above.

(4) If any of these limitations on amendment after final is not met, the amendment is dismissed by the examiner. Accordingly, if an amendment, for example, replying to a final official action does not comply with these limitations, the patent application, on dismissal of the amendment, is brought back into the previous state without the amendment. As a result, the decision to refuse the application will usually be taken by the examiner.

Non-compliance with the limitation under (1)(a) above (introduction of new matter) is, if overlooked and a patent were granted, a ground of invalidation of the patent. For the criteria in this respect for a foreign language application or a PCT national stage application in Japan, please see 8.1.(3) above. The other limitations (1)(b) to (2)(e) are not a ground of invalidation of a patent if overlooked, these limitations directed to serving to secure a prompt granting procedure of a patent.
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9. Examiner's decision on applications for patents

(1) Decision to grant patent
When no reasons for refusal are found with respect to an application for a patent as filed, or as a result of the applicant's reply to an official action (written opinion and/or amendment), the examiner makes the decision to grant a patent on the patent application. Only a few patent applications are allowed as filed. The opposition procedure which allows a third party to file opposition to granting a patent before the examiner's decision to grant a patent is made has been abolished. (The post-grant opposition procedure has also been abolished.)

Upon payment of a patent registration fee (patent fees for the 1st through 3rd years) within 30 days from the date of notification of the examiner's decision to grant a patent, the patent is registered in the Patent Office and comes into force. A certificate of registration of the patent is issued, and an official gazette including its specification, claims and drawings is published.

The term of a patent is 20 years from the date on which the patent application was filed in Japan, subject to payment of patent fees (annual fees) for the subsequent 4th through 20th years. The patent fee for the 4th year and each subsequent year is due no later than the end of the year preceding the relevant year. A grace period is available in which the patent fee may be paid with a surcharge. The patent term may be extended under certain conditions up to the maximum of 25 years for inventions relating to pharmaceuticals and agricultural chemicals.

If a patent is infringed, a civil action (patent infringement suit) may be filed in the court asking for an injunction to stop the infringement, compensation for the damages caused by the infringement, etc. An infringer would also be subject to criminal penalties.

(2) Decision to refuse application for patent
If any of the reasons for refusal notified in an official action is not met by a reply (written opinion and/or amendment) by the applicant, the examiner takes the decision to refuse the patent application.
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10. Appeal against examiner's decision to refuse application for patent

(1) The examiner's decision to refuse a patent application may be appealed to the Board of Appeal in the Japan Patent Office within 3 months from the date of notification of the examiner's decision to the applicant. The Board of Appeal consists of three or five appeal examiners. The reasons why the examiner's decision should be rescinded must be stated in such an appeal. An amendment may be made to the specification, claims and/or drawings within the limitations under 8.2. above, at the same time as filing the appeal to the Board of Appeal.

(2) Reexamination before remit to Board of Appeal
Where an amendment is made to the specification, claims or drawings at the same time as filing the appeal, the case is reexamined, before remitted to the Board of Appeal, by the examiner (in principle, the same examiner who made the decision to refuse the application) so that a quick determination can be made as to whether the reasons for the examiner's refusal decision have been removed by the amendment. If the reasons for the examiner's refusal decision have been cured, and there are no other reasons found for refusing the application, the examiner cancels his/her previous refusal decision and takes the decision to grant a patent on the application. If the reasons for the examiner's refusal decision have been cured, but there are some other reasons found for refusing the application, the examiner notifies the applicant thereof in an official action to give the applicant an opportunity to submit a reply thereto (written opinion and/or amendment) within a time period set in the official action. If the newly found reasons for refusal of the application are cured as well, the examiner takes the decision to grant a patent, cancelling his/her previous refusal decision. On the other hand, if the original reasons for the examiner's refusal decision or the newly found reasons for refusal are not removed, i.e., when the examiner's refusal decision is eventually to be maintained, the case is remitted to the Board of Appeal for examination by the appeal examiners.

(3) The Board of Appeal examines whether the examiner's refusal decision of a patent application is well-founded and may be maintained. If it is held to be so, the Board of Appeal dismisses the appeal. If it is held not to be maintainable, the Board of Appeal either revokes the appealed decision and remits the case back to the examiner for further processing at the examination stage, or proceeds itself with examination on whether a patent may be granted on the patent application to make a decision thereon. In the latter case, if any new reasons for refusal other than those relied upon by the examiner have been found, the Board of Appeal issues an official action to give the applicant an opportunity to file a reply (written opinion and/or amendment) within a time period set in the official action. Where the final decision of the Board of Appeal is against the applicant, it may be appealed to the Tokyo High Court for revocation thereof, and ultimately to the Supreme Court.
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11. Divisional applications

A divisional application may be filed when amendments can be made to the specification, claims or drawings of a parent application, i.e., within the periods of time when such amendments are allowed and at the same time as appealing to the Board of Appeal against the examiner's decision to refuse the parent application (please see 7. above). Therefore, in the latter case, a divisional application may be filed on the condition of appeal to the Board of Appeal.

Apart from the time limits associated with the amendment of the specification, claims or drawings of a parent application, a divisional application may also be filed within 3 months from the date on which the applicant is notified of the examiner's decision to refuse the parent application. In this case, no appeal to the Board of Appeal is needed for filing a divisional application. By filing a divisional application without filing an appeal to the Board of Appeal, an effect similar to that of a Request for Continued Examination (RCE) in the United States patent law could be obtained. It is to be noted, however, that the examiner's refusal decision of the parent application that allows a divisional application is limited to the examiner's first refusal decision of the parent application, and does not include a possible refusal decision after appeal to the Board of Appeal and remit of the case back to the examiner. Even after appeal to the Board of Appeal, however, a divisional application may still be filed within the time periods when the specification, claims or drawings of the parent application may be amended, such as within a reply period to an official action that may be issued by the Board of Appeal during the appeal procedure (vid. 7.(6) above).

A divisional application may also be filed even after the examiner's decision to grant a patent on the parent application. Specifically, a divisional application may be filed within 30 days from the date on which the applicant is notified of the examiner's decision to grant a patent on the parent application. An opportunity is thus available to seek a patent for other inventions contained in the patent application after the grant thereof. As is the case with the examiner's refusal decision, however, the examiner's grant decision that allows a divisional application is limited to that obtained without appeal to the Board of Appeal against the examiner's refusal decision of the parent application, and does not include any possible grant decision after the appeal to the Board of Appeal .
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12. Post-grant procedures

(1) After a patent has been granted, a trial for invalidating the patent may be requested by a third party. The trial for invalidation of a patent is conducted by three or five trial examiners and, in principle, by oral proceeding. The grounds on which such a trial may be based are limited to those provided in Article 123 of the Patent Law. This trial can be requested at any time after grant of a patent and even after the expiry of the patent.

(2) After a patent has been granted, the patentee may request a trial for limiting the patent. This trial is often used as a countermeasure when a trial for invalidation of the patent is requested. The trial for limiting a patent is conducted by three or five trial examiners and, in principle, by written procedure, although may be conducted in oral proceedings at the patentee's request or at the initiative of the chief trial examiner. This trial may only be requested when the trial for invalidation of the patent is not pending, since limitation of the patent may also be requested in the procedure of the invalidation trial of the patent. In the case of a patent granted on a foreign language application or a PCT national stage application in Japan, correction of errors in translation may also be requested.

(3) Extension of a patent term granted on a patent relating to pharmaceuticals or agricultural chemicals may be invalidated by a trial for invalidation of extension of a patent term requested by a third party.

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References:
(1) Examination Guidelines for Patent and Utility Model by the Japan Patent Office
(2) Manual of Patent Examining Procedure (USPTO)
(3) Guidelines for Examination in the European Patent Office
(4) Others

jk
Main patent-related official fees of the Japan Patent Office (last updated April 1, 2009)
1. Application for patent
(1) Ordinary (Japanese-language) application \15,000
(2) Foreign language (English) application \24,000
(3) PCT national stage application in Japan \15,000
2. Request for examination
(1) For ordinary and foreign language applications \168,600 + (\4,000 x claims number)
(2) For PCT national stage application in Japan \151,700 + (\3,600 x claims number)
3. Request for trial
(1) Appeal against examiner's decision to refuse application \49,500 + (\5,500 x claims number)
(2) Trial for invalidation of patent \49,500 + (\5,500 x claims number)
(3) Trial for limitation of patent \49,500 + (\5,500 x claims number)
(4) Request for limitation of patent in patent invalidation trial \49,500 + (\5,500 x claims number)
(5) Trial for invalidation of extension of patent term \55,000
4. Patent fees
(1) Patent registration fee (annuities for 1st to 3rd years) (\2,300 + (\200 x claims number)) x 3
(2) annuities for 4th to 6th years \7,100 + (\500 x claims number), per year
(3) annuities for 7th to 9th years \21,400 + (\1,700 x claims number), per year
(4) annuities for 10th to 25th years \61,600 + (\4,800 x claims number), per year
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