Contents and Reasons of Revision of the Time Limit for Submitting a Request for Examination October 3, 2001

HARAKENZO World Patent & Trademark
Patent Attorney Ichiro KANEKO

1. Contents of Revision of the Time Limit for Submitting a Request for Examination (effect from October 1, 2001)

(1) The time limit for submitting a Request for Examination
1) The time limit for submitting a Request for Examination has been changed from "within seven years" from the filing date to "within three years" from the filing date (Section 48(3) of the Japanese Patent Law). This revised time limit is applied for patent applications filed on or after October 1, 2001.
(Note) To the patent applications filed on or before September 30, 2001, the time limit of "seven years" from the filing date is applied as in the past.

(2) The filing date referred to determine the time limit
1) With regard to divisional or conversion applications, the filing date of the original application is referred to determine the time limit. However, a Request for examination may be submitted within 30 days from the filing of the divisional or conversion applications, even after the legal time limit (within seven years or three years from the filing date) of Request for Examination (Section 48(3-2) of the Japanese Patent Law).
2) To applications claiming an priority (internal priority right; Section 41 of the Japanese Patent Law) based on the previous domestic application, the actual filing date is referred to determine the time limit.
3) To patent applications claiming a priority filed under the Paris Convention (Section 4 of the Paris Convention), the actual filing date is referred to determine the time limit.
4) To the international applications deemed as patent applications under Section 184 of the Japanese Patent Law, the international filing date of the application is referred to determine the time limit.

2. Reason for the revision of the time limit for Submitting a Request for Examination

(1) The aim of introduction of the Request for Examination (1970)
Request for Examination was introduced for promotion of the whole examination by excluding applications not necessary to be examined, i.e., carrying out examinations only for the applications valuable to be examined. The time limit for Request for Examination was determined to be seven years considering of the applicants for taking a plenty of time to decide whether or not application is worth the examination and also referring the time limit of seven years for Request for Examination in Germany and Netherlands.

(2) A change in circumstance from the time of introduction of Request for Examination
1) Construction of the Patent electronic library in the Japanese Patent Office
It has become easier for the applicants to investigate the prior art, and make a selection which application is worth the examination.
2) Faster processing for the examination in the Patent Office Applications are now examined within a year after Request for Examination.
3) A change of recognition of obtaining a patent The purpose of obtaining a patent is now more for making the most of the right (recovery of the investment) rather than for security.

(3) Problems of providing the time limit of seven years
1) Resulting in an impediment in the promotion of intellectual creation activities and the creation of new industries, Since many of applicants make Request for Examination in the due year or the year before, it results in a large number of pending applications and an inconvenience to the third party for keeping up the business and developing the researches.
2) Hollowization of Japanese patent Since a patent is granted s few year faster in the Western countries compared to Japan, there was a possibility of establishment of the international patent market which is occupied with patents of the Western countries. *United States: No Request for Examination EPO (European Patent Office), Great Britain: about 2 years China, Russia: 3 years Korea, Canada: 5 years Germany: 7 years (adopting a fee system to hold a filing)
3) Trouble in cooperation for foreign examinations
There has been a problem in the case of the requirement for cooperation from a foreign country not capable of quick processing to help the processing of applications which are not yet requested for the examination and therefore having no examination results.

(4) The need for Request for Examination
There still are applications not necessary to proceed, such as applications only for a security purpose, or applications which are not worth the examination to obtain a patent right. These applications should be excluded for quick processing of the applications of major inventions. Therefore, Request for Examination must be maintained.

(5) Revision of the time limit for submitting a Request for Examination
Under the existing conditions, considering a suitable time limit for applicants to decide if the application is necessary to be examined, the time limit for submitting a Request fir Examination has been changed from "within seven years" from the filing date to "within three years" from the filing date under "Revision in 1999" in order to solve the foregoing problems.