Procedures for Obtaining a Patent Right

In order to obtain a patent right, you must apply to the Japan Patent Office and go through examinations to determine whether the application fulfills all the necessary requirements.
　The JPO, which examines all applications from around the world, takes precautionary measures before ultimately granting any patent right. These involve exchange of documents with the applicant to determine which claims, if any, are entitled to be patented. The whole procedure from filing to registration is shown in the flow chart below.

(1)

Application

No matter how good an invention may be, a patent right naturally cannot be obtained unless it is applied for. An application requires that one fills out the forms prescribed in the relevant ordinances and submit them to the JPO.
Japan has adopted the first-to-file system, i.e. the principle that where two parties apply for a patent for the same invention, the first party to file will be granted the patent. Accordingly, it is advisable to file as soon as possible after the invention. It is also advisable not to make the invention public before filing a patent application.

(2)

Formality Examination

An application document submitted to the JPO will be checked to see whether it fulfills the necessary procedural and formal requirements. An invitation to correct will be made where necessary documents are missing or required sections have not been filled in.

(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

Patent applications are not necessarily examined. An examination will be carried out only for the application for which the applicant or a third party has filed a request for examination and paid the examination fees.

(5)

Deemed Withdrawal (No Request for Examination)

Any application for which a request for examination has not been filed within a period of *three years from filing date will automatically be regarded as withdrawal and cannot be patented thereafter.

(6)

Substantive Examination

An examination will be carried out by an examiner of the JPO, who will decide whether or not the claimed invention should be patented. The examiner firstly checks whether the application fulfills requirements prescribed by law, i.e., whether or not there are any reasons for refusal. These requirements include the following:

(7)

Notification of Reasons for Refusal

If the examiner finds reasons for refusal, a notification to this result will be sent to the applicant.

(8)

Written Argument / Amendment

An applicant who has received the notification of reasons for refusal shall be given an opportunity to submit either a written argument claiming that the invention differs from the prior art to which the notification of reasons for refusal refers, or an amendment of the claims in the case that this would nullify the reasons for refusal.

(9)

Decision to Grant a Patent

As a result of the examination, the examiner will make a decision to grant a patent as the final assessment of the examination stage if no reasons for refusal have been found. The examiner will also make the same decision if the reasons for refusal have been eliminated by an argument or amendment.

(10)

Decision of Refusal

On the other hand, if the examiner judges that the reasons for refusal have not been eliminated, a decision of refusal (the final assessment of the examination stage) will be made.

(11)

Appeal against Decision of Refusal

When dissatisfaction is in the decision of refusal of the examiner, the applicant may appeal against the decision of refusal.

(12)

Appeal Examination (against Decision of Refusal)

The appeal examination against the decision of refusal is performed by a collegial body of three or five appeal examiners.
Decision of the appeal examiners is called an appeal decision.
When it is judged as a result of appeal examination that the reasons for refusal was solved, an appeal decision to grant a patent is performed, and when the appeal examiners judge that the reasons cannot be canceled and the patent cannot be registered, an appeal decision of refusal is performed.

(13)

Registration (Patent Fee Payment)

Provided that the applicant pays the patent fee, once the decision to grant a patent has been made the patent right will come into effect as it is entered in the Patent Register. At the same time, the invention acquires a patent number. After a patent is registered, a certificate of patent will be sent to the applicant.

(14)

Publication of Patent Gazette

The contents of the patent right entered in the Register will be published in the Patent Gazette.

(15)

Appeal for Invalidation

Even after a patent is registered, any person may appeal for invalidation of the patent if it has a flaw.

(16)

Appeal Examination (Invalidation)

An appeal examination of invalidation is carried out by a collegial body of three or five appeal examiners.
If the appeal examiners judge that there is no flaw in the decision to grant a patent, they will make a decision to maintain the patent. If however they judge that the decision to grant was flawed, they will make a decision to invalid the patent right.

(17)

Intellectual Property High Court

An applicant who is dissatisfied with an appeal decision of refusal of an appeal against decision of refusal, and an interested party who is dissatisfied with an appeal decision of invalidation or maintenance, may appeal to the Intellectual Property High Court.
 

（Note）