1.1)Formal Requirements The minimum requirements for the documents and information that must be submitted before the Patent Office to obtain the filing date are; Petition with name of applicant (assignee), Specification with claims, Drawings, if any, Priority claiming with name of country and priority date, if any, Attorney’s name, if any (mandatory for foreign applicants). The mailed documents are regarded as being submitted on the date of dispatch. Most applications filed nowadays are filed electronically. All the documents are required to be in the Japanese language. The following documents and information may be supplemented later, but are normally submitted along with the minimum requirements. Abstract, Address of applicant, Name of representative (signatory) of applicant, Name and address of inventor, Application number of priority-claimed application, The Certified copy of priority documents must be filed within 16 months from the priority date. The following documents or information are not usually necessary, but are required only in special cases. Power of attorney, (General power of attorney) Assignment, Certificate of Nationality (in the case of an individual), Certificate of Corporation (in the case of a corporation). As of April 1998, the Power of Attorney became no longer needed when filing a patent application. 1.2) Disclosure Requirements As of July 1, 1995, the requirements for disclosure of a specification calling for a description of the object, constitution and advantages of the invention were relaxed to require only a clear and sufficient disclosure of the invention. 1.3) National Phase Entry of PCT Applications In order to enter the national phase of a PCT application in Japan, a full Japanese translation of the PCT application must be filed within the term of 20 months (or 30 months in case of Chapter II) from the priority date. There is no way to defer the filing of the translation, for example, by filing a petition within the term and filing the translation later. Since introduction of new matter is strictly prohibited by the Patent Law revised in 1993, it is not recommended, at the time of entering the national phase, to automatically file a translation of amendments to the specification or claims which were made in the international phase. 1.4) Filing Application in English The Japanese Patent Law was revised, effective as of July 1, 1995, to allow filing of a patent application in English. This applies to all patent applications, except PCT-route applications, filed on or after July 1, 1995 regardless of its priority date. When an application is filed in English, a Japanese translation must be filed within two months from the filing date. If the translation is not timely filed, the application will be deemed withdrawn. 1.5) Claim Drafting There is no particular requirement or recommendation as to the format of claims in Japan. Any format of claim may be used in drafting claims in the Japanese patent application. Claims may be in the format of a combination claim, Jepson or continental type two-part claim or Markush type claim. Further, any number of independent claims or dependent claims can be filed. Multi-dependent claims can also be filed, which is useful to decrease the number of dependent claims and thus save cost. Means-plus-function claims are useful in Japan to broadly define an invention. There is no legislation or case law which will cause such a claim to be interpreted narrowly, as in the U.S. Fees do not change according to the type of claims. Only the number of claims influences the cost. The cost is not affected by the number of claims when filing an application. The fees that are calculated in terms of the number of claims are the examination fees and the patent annuities. |
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