JAPAN Law and Practice Contributed by: Yoshiyuki Inaba, Hiroshi Nemoto, Makoto Okada and Atsushi Sato, TMI Associates
1. Intellectual Property Rights and Granting Procedure 1.1 Types of Intellectual Property Rights The Japanese legal system covers two types of intellectual property rights in relation to the protection of inventions: patent rights and utility model rights. Both systems are based on statu- tory laws, namely the Patent Act and the Utility Model Act. 1.2 Grant Procedure Patents The Patent Act employs a substantive exami- nation principle for the patent grant procedure. A patent application must first be filed with the Japan Patent Office (JPO) to obtain a patent right for an invention. A request for examination must also be filed within three years from the date of filing the patent application, or the patent application will be deemed withdrawn. An examination will be carried out by an exam- iner of the JPO, who will decide whether the patent application fulfils all the requirements prescribed by the Patent Act. • If the examiner finds any reason for rejection, a notice of reason for rejection will be issued. An applicant who has received a notice of reason for rejection will be given the oppor- tunity to file a written argument and/or an amendment in response to that rejection. • If the examiner finds no reason for rejection in the patent application or finds that the rejection has been overcome, they will issue a decision to grant a patent for the patent application. A patent will be granted once the applicant pays the registration fees for the first three years.
Utility Models In contrast to patent applications, the Utility Model Act does not require a substantive exami- nation for applications for utility model registra- tion (ie, for all applications that have passed formal examinations); the utility model right will automatically be registered without going through a substantive examination. The regis- tration fees for the first three years must be paid at the time of filing the utility model application. 1.3 Timeline for Grant Procedure Patents According to statistics issued by the JPO, the average period from filing a request for examina- tion to issuing a final decision (either a decision to grant or a decision to reject) was 13.8 months in 2023. Also, the average grant rate was 76.0% in 2023. Domestic applicants do not need representa- tion in order to initiate grant proceedings, but foreign applicants do. The typical costs incurred from filing to grant are USD8,000, comprising official fees of USD1,500 and lawyers’ fees of USD6,500. The official fees vary depending on the number of claims. Also, additional fees for translating certain documents (eg, the specifica- tion and notice of the reason for rejection) may be incurred where necessary. Utility Models The typical costs incurred from filing to grant are USD2,000, comprising official fees of USD200 and lawyers’ fees of USD1,800. The official fees vary depending on the number of claims. Also, additional fees for translating certain documents (eg, the specification) may be incurred where necessary.
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