Patent right is a right to practice a granted invention on business repeatedly and exclusively.
The term “practice” means that products of the invention are produced, assigned, leased, imported and the like.
The range to be protected depends on the claim(s) in the specification accompanied with the application.
| Subject to be protected: | Highly advanced creation technical idea by which a law of nature is utilized |
| Period of protection: | 20 years from the application date |
| Requirement for protection: | Industrial applicability, novelty, unobviousness |
The patenting process in Japan is depicted in the following.
(1) Research & Development
Contents of research
Technical trend in the art.
Business trend of competitors.
Information on patent rights of competitors.
Source of information
PAJ (Patent Abstract of Japan) by J-PlatPat database below at JPO or other databases (USPTO, Espacenet).
(2) Completion of invention
Drafting a patent proposal
Evaluation of the invention and establishment of the strategy for patent application.
| Type of invention | Strategy |
| Basic invention | Multiple applications to monopolize market, i.e., a basic patent and its peripheral patents. |
| Invention of improvement | Defensive application |
| Others | Suspending a patent application as technical know-how |
(3) Preparation of a patent specification
Preparation of a specification according to requirements for written description in the Patent Law
Confirmation of a claim which is distinguished from the prior art.
Novelty check prior to the application by JPlat-Pat at JPO.
(4) Application
A patent application claiming priority based on Paris Convention should be filed within 12 months from the priority date.
A national entry pf PCT application into Japan should be filed within 30 months from the priority date.
Filing documents for a patent application from foreign countries including PCT or Paris Convention route
1. Application or National form paper
Applicant’s address, name and nationality
Inventor’s address and name
Priority data (country, filing date, and application number)
2. Specification, abstract and necessary drawings in Japanese
*DAS code is applicable on behalf of submission of priority certificate.
*Evidence of an assignment from the inventor to the applicant is not required in the Japanese Patent Law (the Patent Law).
On-line application through electronic terminal.
The documents Nos. 1 and 2 is submitted in Japanese within 1 year from the priority date.
If the Japanese specification of PCT application is not in time for the date of national entry, the translation may be submitted within 2 months from the national entry date (the Patent Law, Art. 184quarter).
(5) Publication of unexamined application
The application is automatically laid open after 18 months from the priority date.
Reviewing accelerated publication before 18 months from the filing date to entitle a right to demand compensation in consequence of the publication (Patent Law, Art. 64bis).
If prevent the invention from publication, withdraw the application within 15 months from the filing date.
(6) Request for examination
A request for substantial examination should be filed within 3 years from the filing date (the Patent Law, Art. 48ter).
Reviewing whether the application is preserved or not.
In the important case, reviewing an accelerated examination or preferential examination.
If no request is filed, the application is regarded as abandon.
(7) Substantial examination
The examiner of the JPO examines requirements for patentability such as industrial applicability, novelty and unobviousness (the Patent Law, Art. 36, 29(1), 29(2) etc.).
Examination guideline
(8) Notice of rejection
Notice of rejection is dispatched to the applicant, if the application lacks the requirements for patentability.
Measures to notice of rejection:
Submission of a written opinion and/or a written amendment to overcome the rejection.
Consideration of divisional or converted application.
Consideration of withdrawal or abandon.
(9) Decision to grant a patent
If the reason for rejection is resolved, the applicant receives a decision to grant a patent.
On the other hand, the reason for rejection is not resolved, the applicant receives a decision of rejection. In such a case, the applicant can demand an appeal against examiner’s decision of rejection.
(10) Payment of annual fee
The applicant must pay patent fees for 1st to 3rd year in a lump sum, as registration fee.
(11) Registration
A patent right comes into exist upon registration which is effective in the period between the registration and twenty years after the filing date.
Certificate of patent
Patentee acquired an exclusive right to commercially work of the patented invention (Patent Law, Art. 68).
In addition, certain acts of indirect infringement are deemed to be infringement of a patent right (Patent Law, Art. 101).
On the other hand, certain specific acts such as for experiment or research are not deemed to be acts of infringement if they would otherwise be patent infringement (Patent Law, Art. 69).
(12) Publication of Gazette containing the Patent and Opposition
Patent is published in the Patent Gazette.
The third party can demand an opposition to the grant of a patent right within 6 months from the publication of Gazette containing the Patent.
Depending on the result of opposition, the patent may be revoked.
(13) Retainment of patent right
The patentee must pay annuity for 4th year onwards annually or in a lump sum.
Efficient use of a patent right
1) Licensing out
Recovering of development cost by a high license fee
Defacto standrization by a low license fee (for example, electronics, communication, or business method invention)
Cross license
2) Monopolization
Securing one’s own market share by excluding competitors.
Considering a financial institution making a collateral loan using a patent right Protection of a patent right .
Obtaining information on products of the third party which is considered to fall in the scope of the patented invention from magazine, newspaper, catalogue, product, wholesaler, retailer, consumer and the like.
Expert opinion by patent attorney or advisory opinion by the JPO on the technical scope of a patented invention.
Warning letter to the infringer.
3) Patent suit
Right to require an injunction (Patent Law, Art. 100).
Right to demand competition for a damage (Civil Law, Art. 709).
Compensation for unfair profits gained by the infringer (Civil Law, Art. 703 and 704).
Measures for recovery of reputation (Patent Law, Arti. 106).
Right to demand compensation (Patent Law, Art. 65).
4) Patent marking
Patent marking on a patented product is not mandatory but recommended (Patent Law 187).
for example, Pat No.*******
(14) Lapse of patent right
Patent right lapses 20 years after the filing date.
Registration of an extension of term of patent regarding pharmaceuticals and agricultural chemicals (Patent Law 67).