Masterclass: Formalities Update in Japan

Masterclass: Formalities Update in Japan September 17, 2015 Miko Amiya Japanese Patent Attorney Keiichi Ikeda Japanese Patent Attorney NAGAI & ASSOCIATES Tokyo, JAPAN http://www.nagai-pat.com/english/ contact@nagai-pat.com

Contents 1. Overview of Japanese Patent Procedures 2. Requirements for Japanese Patent Application 3. Procedures after Filing 4. Post Grant Procedures 5. Opposition and Invalidation Appeal 6. Utility Model 7. Comparison between JP, EP and US 8. Upcoming Changes to Japanese Patent Act 2

After 18 months Priority Application Publication of Application Japanese Application Formality Examination Substantive Examination First-to-File Within 3 years NO Foreign Filing License Request for Examination Reasons for Refusal (Office Action) Response Within 30 days Payment of Registration Fee Decision of Grant Registration of Patent Decision of Refusal Appeal Against Decision Within 4 months Opposition Invalidation Appeal Publication of Patent Gazette Appeal Decision IP High Court Within 120 days 4

2. Requirements for Japanese Patent Application Priority Application Japanese Application Publication of Application Formality Examination Substantive Examination Reasons for Refusal (Office Action) Response Request for Examination Payment of Registration Fee Decision of Grant Registration of Patent Decision of Refusal Appeal Against Decision Opposition Invalidation Appeal Publication of Patent Gazette Appeal Decision IP High Court 6

2. Requirements for Japanese Patent Application (1) Direct Japanese Application (Convention Priority) Who: Applicant of Priority Application or Successor When: Within 12 months from Priority Date Documents: - Request - Description, Claims, Drawings (if any) and Abstract - Claim of Priority - Filing Fee NO Power of Attorney is required 7

2. Requirements for Japanese Patent Application (1) Direct Japanese Application (Convention Priority) Claim of Priority Date and Country of Priority Application in Request Priority Document Within 1 year 4 months from Priority Date If First Country is NL, Priority Document must be submitted If First Country is EP, Priority Document may be omitted In general, Claim of Priority will lose its effect if NO Priority Document is submitted 8

2. Requirements for Japanese Patent Application (1) Direct Japanese Application (Convention Priority) Foreign Language Application Description, Claims, Drawings and Abstract in English Submission of Japanese Translation within 1 year 2 months from Priority Date Application shall be deemed to be withdrawn if NO Japanese Translation is submitted 9

2. Requirements for Japanese Patent Application (1) Direct Japanese Application (Convention Priority) Inventor Applicant Agent Official Fee Patent Request Identification Number Priority Claim Attached Documents Description etc. 17.09.2015 Request in Japanese Names and Addresses of Inventor & Applicant are expressed by Japanese phonetic symbols Identification Number assigned to Applicant Year 2015 = 平成 (Heisei)27 年 10

2. Requirements for Japanese Patent Application (2) PCT National Phase Application Who: Applicant of PCT Application or Successor When: Within 30 months from Priority Date Filing Date in Japan: International Filing Date Documents: - Transmittal Form - National Fee - Japanese Translation of PCT Application NO Power of Attorney is required 11

2. Requirements for Japanese Patent Application (2) PCT National Phase Application Japanese Translation of PCT Application 0 m 28 m 30 m Special Time Limit Timeline Priority Application PCT Application Entry into JP National Phase Japanese Translation Special Time Limit for submitting Translation = 2 months from submission of Transmittal Form Application shall be deemed to be withdrawn if NO Japanese Translation is submitted 12

2. Requirements for Japanese Patent Application (2) PCT National Phase Application Translation of Amendment (i) under PCT Art. 19 under PCT Art. 34 Description Claims (ii) Art. 19 Amend Description Claims Art. 34 Amend Description Claims Art. 19 Amend NO Japanese Translation = NO Amendment under PCT Art. 19 and/or 34 13

2. Requirements for Japanese Patent Application (2) PCT National Phase Application Priority Document May be submitted to Japan Patent Office (JPO) if not submitted to RO or WIPO Within 32 months from Priority Date Claim of Priority will lose its effect if NO Priority Document is submitted 14

2. Requirements for Japanese Patent Application (3) Nucleotide and Amino Acid Sequence Listing Sequence Listing according to WIPO STANDARD ST.25 must be submitted to JPO How to submit Sequence Listing: (i) Text Data of Sequence Listing in Description, or (ii) Recording Medium storing Text Data Recording Medium may be submitted later (NO Official Fee) Sequence Listing is required even if it has been submitted to RO or WIPO 15

2. Requirements for Japanese Patent Application (4) Deposit of Microorganism Depository Institution and Accession Number must be described in Description as filed Copy of Receipt of Original Deposit is required Copy of Receipt of Original Deposit may be submitted later Microorganism must be deposited prior to filing Application will be refused if microorganism is not deposited 16

2. Requirements for Japanese Patent Application (5) Grace Period for Public Disclosure = 6 months (i) Direct Japanese Application Within 6 month Public Disclosure Priority Application (ii) PCT National Phase Within 6 month Public Disclosure Priority Application PCT Application Within 30 days Timeline Japanese Application Claim of Grace Period Statement When, Where, Who etc. Within 30 days Timeline Entry into JP National Phase End of 30 m from Priority Date or Request for Examination Statements Claim of Grace Period When, Where, Who 17 etc.

2. Requirements for Japanese Patent Application (6) Official Filing Fee Direct Japanese Application in Japanese JPY 15,000 Direct Japanese Application in English JPY 24,000 PCT National Phase Application JPY 15,000 NO Extra Claims Fee NO Extra Pages Fee NO Renewal Fees JPY 100 EUR 0.74 as of 10.09.2015 18

3. Procedures after Filing Priority Application Japanese Application Publication of Application Formality Examination Substantive Examination Reasons for Refusal (Office Action) Response Request for Examination Payment of Registration Fee Decision of Grant Registration of Patent Decision of Refusal Appeal Against Decision Opposition Invalidation Appeal Publication of Patent Gazette Appeal Decision IP High Court 20

3. Procedures after Filing (1) Request for Examination (i) Within 3 years (ii) Within 30 days Timeline JP Application or PCT Application Request for Examination Divisional Application Request for Examination Who: Anyone When: (i) Within 3 years from Filing Date, or (ii) Within 30 days from Divisional Application Filing Date if 3 year period has expired Application shall be deemed to be withdrawn if NO Request for Examination is filed 21

3. Procedures after Filing (1) Request for Examination Examination Request Fee Direct Japanese Application PCT National Phase Application (ISA = JPO) PCT National Phase Application (ISA JPO) JPY 118,000 + JPY 4,000 for Each Claim JPY 71,000 + JPY 2,400 for Each Claim JPY 106,000 + JPY 3,600 for Each Claim e.g. PCT National Phase Application (ISA = EPO) with 15 claims (JPY100 EUR 0.74) = JPY 160,000 EUR 1,180 22

3. Procedures after Filing (1) Request for Examination Fee based on claims at time of Request for Examination Discount available for Small/Micro Entities, etc. 23

3. Procedures after Filing (1) Request for Examination Refund on Examination Request Fee Request for Examination Withdrawal 50% of Examination Request Fee Within 6 months Before 1 st Office Action Request for Refund Examination Request Fee Refund Timeline 24

3. Procedures after Filing (2) Amendment Description, Claims and Drawings (i) Before 1 st Office Action (Voluntary) (ii) Period for Response (ii) Period for Response (iii) Same time as filing Appeal Timeline Japanese Application Non-Final Office Action Non-Final/Final Office Action Decision of Refusal Appeal against Decision of Refusal Request While Application is pending Abstract Within 1 year 4 months from Priority Date 25

3. Procedures after Filing (3) Office Action(OA)( 拒絶理由通知書 ) Within 3 months Extension Max. 3 m Within 3 months Extension Max. 3 m Timeline Non-Final Office Action Response Amendment Opinion Final Office Action Response Amendment Opinion May be more than one OA May not be issued Office Action (Reasons for Refusal) = Examination Report Extension available upon Request One Request for onemonth extension Official Fee for Extension: JPY 2,100 per month 26

3. Procedures after Filing (3) Office Action(OA)( 拒絶理由通知書 ) NO Search Report before Office Action NO Rule 62a, 64, 164 EPC Communications NO Ten-day rule from notification by post NO Oral Proceedings NO Further Processing Decision of Refusal will be issued if NO Response is filed 27

3. Procedures after Filing (4) Decision of Grant( 特許査定 ) Payment of Registration Fee Within 30 days from Decision of Grant Extension by 30 days on Request Official Fee for Extension: JPY 2,100 29

3. Procedures after Filing (4) Decision of Grant( 特許査定 ) Registration Fee Lump Sum of Annual Fees of 1 st to 3 rd years = 3 (JPY 2,300 + JPY 200 for Each Claim) e.g. Registration Fee with 15 claims = JPY 15,900 EUR 118 1 st year is the year when Decision of Grant is issued Discount available for Small/Micro Entities, etc. Application shall be dismissed if NO Registration Fee is paid 30

3. Procedures after Filing (5) Registration of Establishment of Patent Right Patent Right Japanese Application Decision of Grant Payment of Registration Fee Patent Term expires 20 years from Filing Date NO Patent Term Adjustment like in US Patent Right Effective 20 years Timeline Registration of Patent Patent Registry Certificate of Patent Patent Gazette 31

3. Procedures after Filing (5) Registration of Establishment of Patent Right (i) Patent Registry (ii) Certificate of Patent Patent Number Filing Date Application Number Registration Date Patent Number Patentee Patentee Application Number Filing Date Registration Date 32

3. Procedures after Filing (6) Decision of Refusal( 拒絶査定 ) If dissatisfied with Decision (i) Appeal against Decision (ii) Divisional Application If not filing Appeal against Decision Decision of Refusal becomes final and conclusive 34

3. Procedures after Filing (7) Appeal against Decision Who: Applicant When: Within 4 months from Decision of Refusal NO Extension of period Amendment: Same time as filing Appeal Official Fee: JPY 49,500 + JPY 5,500 for Each Claim (JPY 100 EUR 0.74) Appeal Decision of Refusal Lawsuit against Decision may be filed with IP High Court Within 120 days from Decision 35

3. Procedures after Filing (8) How to Expedite Examination Accelerated Examination Super Accelerated Examination Patent Prosecution Highway (PPH) * See APPENDIX for details 36

3. Procedures after Filing Period for Response Period for Response Within 4 months (9) Divisional Application Timeline Japanese Application Non-Final Office Action Non-Final/Final Office Action Decision of Refusal Appeal against Decision Divisional Application may be filed in time periods indicated by Within 30 days Extension by 30 days Timeline Japanese Application Decision of Grant Extension available only if period for payment of Registration fee is extended Registration of Patent NO Divisional after Registration 37

3. Procedures after Filing (9) Divisional Application Official Filing Fee: JPY 15,000 JPY 24,000 for Foreign Language Application NO Extra Official Fee for Divisional Application of 2 nd or any subsequent generation Request for Examination: Within 3 years from Filing Date of Earliest Parent Application, or 30 days from Filing Date of Divisional Application, whichever is later 38

3. Procedures after Filing (10) Relief Measures Remedies for missing deadlines are available BUT Due Care Submission of Translation of Foreign Language Application Request for Examination Late Payment of Annual Fee and Patent Surcharge Submission of Translation of PCT Application Claim of Internal Priority Claim of Convention Priority Circumstances beyond Applicant s control Submission of Statement for Grace Period Submission of Priority Document Divisional after Decision of Grant/Refusal Conversion from Utility Model Application to Patent Application Patent Application based on Utility Model Registration Statement for Application to register Patent Term Extension Payment of Registration Fee Refund of Excess Annual Fee Appeal against Decision of Refusal Time Limit for Request for Retrial Refund of Examination Fee and Extension Fee 39

4. Post Grant Procedures Priority Application Japanese Application Publication of Application Formality Examination Substantive Examination Reasons for Refusal (Office Action) Response Request for Examination Payment of Registration Fee Decision of Grant Registration of Patent Decision of Refusal Appeal Against Decision Opposition Invalidation Appeal Publication of Patent Gazette Post Grant Appeal Decision IP High Court 41

4. Post Grant Procedures (1) Payment of Annual Fee Time Limit for Payment 17.09.2015 Original Term 17.09.2018 6 months 17.03.2019 Annual Fee for 4 th year Timeline Registration of Patent Payment for 4 th year Annual Fee Late Payment Annual Fee + Surcharge NO Reminder from JPO If NO Annual Fee is paid within the time limit of Late Payment, Patent Right shall be deemed to be extinguished retroactively from expiration of original term 42

4. Post Grant Procedures (1) Payment of Annual Fee Annual Fee Each of 4 th to 6 th year JPY 7,100 + JPY 500 for Each Claim Each of 7 th to 9 th year JPY 21,400 + JPY 1,700 for Each Claim Each of 10 th and subsequent years JPY 61,600 + JPY 4,800 for Each Claim e.g. Annual Fee of 4 th year with 15 claims = JPY 14,600 EUR 108 (JPY 100 EUR 0.74) Discount available for Small/Micro Entities, etc. 43

4. Post Grant Procedures (2) Application to register Patent Term Extension Extendable Period Up to 5 years Eligible Patent Patent Right with unexploitable period due to obtaining Regulatory Approval Agricultural Chemicals, Drug Products, In Vitro Diagnostics and Regenerative Medicine Products NO Medical Devices 44

4. Post Grant Procedures (2) Application to register Patent Term Extension Eligible Applicant Patentee Regulatory Approval Obtained by Patentee or Licensee Official Filing Fee: JPY 74,000 Multiple Applications possible 45

4. Post Grant Procedures (2) Application to register Patent Term Extension When to File (i) Example 1 (ii) Example 2 Original Patent Term Within 3 months Expiry Timeline Registration of Patent Regulatory Approval Application for Patent Term Extension Regulatory Approval Application for Patent Term Extension Original Patent Term 6 months to Expiry Within 3 months Expiry Registration of Patent Regulatory Approval Application for Patent Term Extension Timeline Statement Application may be filed within 3 months from Regulatory Approval AND before Expiry of Original Patent Term 46

4. Post Grant Procedures (2) Application to register Patent Term Extension Procedures Application for Patent Term Extension - Request - Materials specifying Reasons for Extension Within 3 months Extension Max. 3 m Office Action Response Decision of Grant or Decision of Refusal Amendment may be made while pending - Opinion Timeline 47

5. Opposition and Invalidation Appeal Priority Application Japanese Application Publication of Application Formality Examination Substantive Examination Reasons for Refusal (Office Action) Response Request for Examination Payment of Registration Fee Decision of Grant Registration of Patent Decision of Refusal Appeal Against Decision Opposition Invalidation Appeal Publication of Patent Gazette Appeal Decision IP High Court 49

5. Opposition and Invalidation Appeal Comparison Opposition Invalidation Appeal Purpose - Review of Patent Examination - Settlement of Dispute Who - Anyone (NOT Anonymous) - Interested Party only When Grounds Proceedings - Within 6 months from Publication of Patent Gazette - Lack of Novelty or Inventive Step etc. - Documentary Examination - No Oral Proceedings Official Fee JPY 16,500 + JPY 2,400 for Each Claim Appeal to IP High Court - Possible if Patent Cancelled - Impossible if Dismissed - Anytime after Registration of Patent - Lack of Novelty or Inventive Step etc. - Patent granted for Non-Entitled Person etc. - Oral Proceedings - Documentary may be possible JPY 49,500 + JPY 5,500 for Each Claim - Possible if Dismissed - Possible if Patent Invalidated 50

6. Utility Model (1) Overview Subject to Protection Shape, Structure or Combination of Articles NO Substantive Examination Term of Utility Model Right 10 years from Filing Date Utility Model Technical Opinion 52

6. Utility Model (2) Utility Model Application Documents Request Description, Claims, Drawings, Abstract NO Foreign Language Application Official Fee Filing Fee: JPY 14,000 Registration Fee: Lump Sum of Annual Fees of 1 st to 3 rd years = 3 (JPY 2,100 + JPY 100 for Each Claim) Registration Fee is required when filing 53

6. Utility Model (3) Procedures Within 1 month Examination on Formal & Basic Requirements UM Right Effective Utility Model (UM) Application Payment of Registration Fee Amendment Registration of Utility Model Certificate of UM UM Gazette Conversion to/from Patent Application: (i) Conversion between UM Application and Patent Application (ii) Patent Application based on UM Registration Timeline 54

6. Utility Model (4) Utility Model Technical Opinion Expert Opinion on Novelty and Inventive Step of Utility Model Assessment Report provided by Examiner on request Official Fee: JPY 42,000 + JPY 1,000 for Each Claim Reduction available for PCT National Phase Application Owner of Utility Model Right must present Utility Model Technical Opinion with Warning before enforcing Utility Model Right 55

7. Comparison between JP, EP and US JP EP US System First-to File First-to-File First-Inventor-to-File Foreign Filing License Grace Period for public disclosure Foreign Language Application Time Limit for entry into national phase Request for Examination N/A Depending on States YES 6 months to Filing Date - English - JP translation required 6 months to Filing Date (Int l Exhibition only) - Any language - EN, DE or FR translation required 12 months to Priority Date - Any language - EN translation required 30 months 31 months 30 months Within 3 years from Filing Date Within 6 months from Publication of ESR N/A 57

7. Comparison between JP, EP and US Opportunity to elect Invention Final Office Action Oral Proceedings JP EP US N/A Rule 64, 164 communications YES (Final OA may not be issued) N/A Restriction/Election of Species Requirements YES N/A YES N/A Ten-day rule N/A YES (Rule 126(2)) N/A Renewal Fees for Application N/A YES N/A IDS N/A YES (Rule 141) YES Extra Fee for 2 nd or subsequent Divisional N/A YES N/A Utility Model YES N/A N/A 58

8. Upcoming Changes to Japanese Patent Act (1) Reduction in Official Fees Current Fees New Fees Filing Fee JPY 15,000 JPY 14,000 (Proposed) Registration Fee (Sum of Annul Fees of 1 st to 3 rd years) Annual Fee for Each of 4 th to 6 th year Annual Fee for Each of 7 th to 9 th year 3 (JPY 2,300 + JPY 200 for Each Claim) JPY 7,100 + JPY 500 for Each Claim JPY 21,400 + JPY 1,700 for Each Claim 3 (JPY 2,100 + JPY 200 for Each Claim) JPY 6,400 + JPY 500 for Each Claim JPY 19,300 + JPY 1,500 for Each Claim Annual Fee for Each of 10 th and any subsequent year JPY 61,600 + JPY 4,800 for Each Claim JPY 55,400 + JPY 4,300 for Each Claim Changes will come into effect no later than July, 2016 60

8. Upcoming Changes to Japanese Patent Act (2) Relief in Extension of Time Limit Period for Response Expiry Prescribed Period Timeline Office Action Request for Extension Response Request for Extension of Time Limit may be filed even after expiration of Time Limit, and within Prescribed Period Official Fee for Extension required 61

8. Upcoming Changes to Japanese Patent Act (3) Notification to submit missing document 1 year 4 months* Prescribed Period e.g. Translation not submitted Priority Application Foreign Language Application Japanese Translation Notification Japanese Translation JPO will issue Notification Missing document submitted within Prescribed Period NO Official Fee Missing document = Japanese Translation of Foreign Language Application or Priority Document Timeline *Time Limit for submitting JP Translation will be 1 year 4 months (Now, 1 year 2 months) 62

Thank you! NAGAI & ASSOCIATES Tokyo, JAPAN http://www.nagai-pat.com/english/ contact@nagai-pat.com 63

APPENDIX 64

How to Expedite Examination (1/2) Eligible Application Time to Request Requirements Accelerated Examination - e.g. Application with counterpart foreign application - Same time as or after request for examination - Prior art search* - Comparison with prior art* Super Accelerated Examination - e.g. Application with counterpart foreign application related to commercialized invention - On-line procedures - Same time as or after request for examination - Before 1 st OA - Prior art search* - Comparison with prior art* PPH (Patent Prosecution Highway) - One or more allowed claims in counterpart foreign application - Same time as or after request for examination - Before 1 st OA - Claim correspondence table - Copy and translation of OA, allowed claims and cited documents* * May be omitted under certain conditions 65

How to Expedite Examination (2/2) Accelerated Examination Super Accelerated Examination PPH Official Fee Free Free Free First Action 2.1 months *2 0.8 month *2 2.1 months *2 Pendency *1 Period for Response to OA 3 months Extension possible *1 First Action Pendency of regular examination is 9.6 months in 2014 *2 Data of 2014 2 months 3 months Extension possible 66