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Tips for foreign applicants:

Here are some tips for the foreign applicant who is preparing to file an application for patent, design or trademark in Japan. For further information, please contact us.


1. Patent Applications
  1. A patent application must be filed in the Japanese language. However, it is possible to file the specification in English, in cases in which the specification cannnot be obtained in time. If the patent application is filed in English, Japanese translation should be filed within two months from the filing date. In this case, errors in the translation can be amended based on the original English specification.
  2. To file a national phase application based on a PCT application, a document containing minimum information such as applicant(s), inventor(s) and the international filing number needs to be filed within 30 months from the priority date. A Japanese language translation of the specification needs to be filed within two months from the above filing date.
  3. A six-month grace period for filing a patent application is applied to inventions that are disclosed at certain academic societis or in publications. The academic societies that qualify for the grace period are designated by the JPO. No academic societies outside Japan have been designated by the JPO.
  4. A patent application in Japan will not be examined unless a request of examination is filed within 3 years from the filing date. This rule applies only to patent applications filed after October 1, 2001.
  5. The specification of the patent application is published in 18 months after filing date. It is possible to request an early publication.
2. Design Applications
  1. An orthographic projection, isomeric drawing or homolographic projection can be used to prepare drawings. When using an orthographic projection, the scale must be the same for all drawings.
  2. If the client has several similar designs that need to be filed, it is advisable to file them all on the same day. Once a design is filed, similar designs that are subsequently file will be rejected. In cases of doubt, the safe course is to file them all on the same day.
  3. When similar design applications are filed in Japan with a claim of priority under the Paris Convention, the priority applications must also have been filed on the same day. So, if you are planning a global filing for application on similar design, it is advisable to file the priority applications on the same day, too.
  4. It is possible to file an application on a portion of a complete design. However, to claim priority under the Paris Convention, the priority application must also be filed for the same portion of the design. So, if the clients intend to file an application for a portion of a design, as well as an application for the entire design, we recommend that the client file an applications for both in their home country, at the same time. Under the Paris Convention, this allows the international filing date to be the same in each country for both applications.
3. Trademark Applications
  1. Investigation for suitable goods and services is recommended before filing in Japan to be safely registered.
  2. International registration based on "Protocol relating the Madrid Agreement" is applicable
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