System for PCT Application-Supplementation

April 27, 2004
Harakenzo World Patent & Trademark
Ayako KAWANO

Four months are already passing since the new PCT application system has launched in January, 2004.
Few items have remained ambiguous last year, at the time of writing the previous column "New System for PCT Application". This column is to provide supplemental information regarding some of the items, which are now clarified.
The section numbers of the relevant items in the column "New System for PCT Application" are provided in "[ ]" for reference.

*Grant of patent in Japan [2 (1)]
There are four choices of a) through d) listed below, for filing a PCT application, claiming priority of the relevant Japanese application filed earlier.

a) Withdraw Japan from "designated state", and acquire the patent rights for the earlier Japanese application.
→ For example, in a case where (i) no new content is added to the earlier Japanese application, or (ii) a new content is added to the earlier Japanese application, but the applicant wishes no protection under the patent law for the additional content.
b) Acquiring patent rights through the PCT route (PCT national phase)
→ It is possible to acquire the patent rights in Japan, while the applicant enjoys merits of the international phase. For example, it is possible to amend the patent application, taking into account the international search report.
The earlier Japanese application is deemed to have been withdrawn, on the grounds that the designation of Japan is not withdrawn.
c) Acquiring patent rights by filing another Japanese application claiming domestic priority, apart from the PCT application.
→ The Japanese application claiming domestic priority, filed apart from the PCT application intending to be patented in another country, allows the respective claims to be separately drafted in the both applications. That is, the claims in the Japanese application can be so drafted suitably as to be patented in Japan, and the claims in the PCT application can be so drafted suitably as to be patented in the other country.
d) Withdraw from the domestic priority claim, and acquire the protection in Japan through (i) the PCT route (PCT national phase), and (ii) the earlier Japanese application.
→ It is possible to separately acquire the protection in Japan for an invention of the earlier Japanese application, and for a new feature added to the invention. In this case the protection will be provided for the feature in the earlier Japanese application, as well as the feature in the self-designated PCT application claiming no priority.
*Relaxed Requirements Regarding Authorization of Agent [2 (2)]
Japan Patent Office (JPO) has decided that no document attesting power of attorney is required after January, 2004, for filing an international application.
Namely, a power of attorney no longer needs to submit an authorization of agent furnished by an applicant, for a PCT application whose competent receiving office is JPO.
However, it is required that the authorization of agent furnished by any applicants, including an inventor for a case of an application filed in US, be submitted, in a case of (i) appointing power of attorney after the filing of an application, or (ii) any withdrawal, such as withdrawal from the application, withdrawal from state designation, and withdrawal from priority right claimed.

*JP Yen Setting of Fee, and Its Application [2(3)]
Listed below are JP yen setting of "International application fee", which are effective from January 1, 2004.
a) Up to 30 pages of international application sheets: 116,000 yen
b) Additional pages after 30 pages:1,200 yen/page
c) Discount for a case of filing an application, using EASY mode of PCT-SAFE software: 8,300 yen
d) Discount for a case of an on-line application: 24,900 yen
・One of above discounts listed c) and d) is applied to a case of an application filed by an applicant by using EASY mode of PCT-SAFE software, or a case of an on-line application filed by an applicant.
It should be noted that international applications in Japanese language, whose competent receiving office is Japan Patent Office can be filed on-line, from April 28, 2004.
*Countries Apply to Transitional Rules Regarding Lapse of Limit to Proceed National Phase [3(2)]
URL of the list of countries apply to transitional rules has been modified.
→ http://www.wipo.int/pct/en/texts/reservations/res_incomp.pdf
("OFFICES AND INTERGOVERNMENTAL ORGANIZATIONS, The Regulations Under the PCT: 49.6(f)" )

*Partial Reimbursement of International Search Fee [New]
There is a system in which a partial reimbursement is made to an applicant in a case where the international search report is based on a search (examination) result on the relevant domestic or international application on which priority right is based.
The followings describe a procedure of above described system.

1. Make a request, in the application form, to use the earlier search in the preparation of the international search report.
2. The best effort is put forth by an examiner from the competent international search authority, to prepare the international search report based on the earlier search (examination) result. The applicant will be then notified of whether or not the earlier search result is used, in a notice published and furnished by the international search authority, during the period when the international search report is sent.
3. In the case where earlier search result is used, submit a debit note for the partial reimbursement of the international search fee.
4. The applicant is reimbursed for a part of the international search fee paid at the time of filing the application (41,000 yen out of 97,000 yen, paid as the international search fee, is reimbursed with respect to the applications filed on or after January 1, 2004.).
Note that, in the case of requesting to use the earlier examination result on a domestic application, it is necessary to (i) make a request for the examination on the domestic application, and (ii) withdraw the self-designation of Japan from "designated state" in the international phase. The both (i) and (ii) shall be done as promptly as possible prior to the start of the international search.
Furthermore, in the case of requesting to use the earlier search result on an earlier international application, JPO must be the competent international search authority for the earlier international application.