Filing Tips

Utility patent applications can be filed in English, but need to be translated into Japanese to perfect the filing. There is a 35,000 yen penalty, and the Japanese translation must be filed within two months. Errors in the Japanese translation can be corrected later on. Utility model applications, however, must be filed in Japanese.

As with Chinese applications, the Japanese associates are perfectly willing to translate the application, and usually do a good job. But the cost is high. A better strategy is to have the translation done in the United States, send the Japanese translated claims to the foreign associate, and then have that associate translate the claims back into English. That strategy will usually identify critical errors, which are a lot easier to fix before the application is filed than several years later during prosecution or litigation.

There is a 6 month grace period for prior disclosure by a misappropriator.

Applicants can request expedited examination provided: (a) The applicant or a licensee is exploiting the invention on the date of the request; or (b) there is a corresponding patent application on file with another national patent office (e.g., United States). Request for examination must be filed within 3 years of filing (reduced in 199 from 7 years).

As with the EPO patent examiners, the Japanese patent examiners tend to be sticklers for insisting upon specific written support in the Specification for claim changes. Even after identifying supporting language on a page and line number basis, it can be almost impossible to convince the JPO to accept changes in scope that broaden or redirect the Claims. It thus behooves a patent attorney to figure out what the invention is before drafting and filing the application.

JPO is also extremely reluctant to allow the plethora of independent claims that is so common in U.S. patent practice. It is best to get it right before filing the application.