PCT Applications: Entering Into National Phase in Japan

October 30, 2003
Harakenzo World Patent & Trademark
Kenji TSUJI

Under certain conditions, an international application (hereinafter "PCT application") which is filed in accordance with the Patent Cooperation Treaty and which contains the designation of Japan as a designated State shall be considered to be a patent application or a utility model application (Patent Law, Section 184-3; Utility Model Law, Section 48-3).

However, filing a PCT application is not enough to obtain a patent or a utility model in Japan.
To give a PCT application the status of a national application, further procedures are required under the Patent Law and the Utility Model Law.

That is, it is necessary to take procedures for entering into national phase in Japan. The procedures must be taken within 30 months from the priority date.
The following summarizes the procedures for entering into national phase in the case of an international patent application.

(1) Foreign Language Patent Application
A foreign language patent application is an international application which is made in a foreign language (language other than Japanese) and which contains designation of Japan as a designated State. In the case of a foreign language patent application, documents to be submitted are: (1) a "national form paper" (the Official fee is 21,000 yen), with the attachment of (2) a Japanese translation of the description, the claims, the drawings (if any), and the abstract. If necessary, (3) a Japanese translation of an amendment made under Article 34 of the Treaty is also submitted. Since September 2002, an exception is permitted with respect to the time limit for the submission of (2) and (3). According to the exception, (2) and (3) may be submitted within 2 months from the submission of the national form paper. This law amendment is very important in practice, since we experienced many cases in which it was required to finish translations within a short period of time when clients decided to enter into national phase in Japan right before the time limit (within 30 months) for the submission of the national form paper.

Usually, clients abroad make orders to enter into the national phase in Japan via facsimile, mail, and e-mail.

Upon receiving an order for entering into national phase, documents to be confirmed are checked. Then, the specification, the claims, the drawings (if any, and text only), and the abstract are translated into Japanese. The national form paper is prepared with reference to an order letter, an International Publication, and the like.

When translation of the specification and the other documents are finished, they are combined with the "national form letter", so as to prepare a file to be submitted to the JPO. After careful review, the file is submitted online to the JPO.

Where an amendment under Article 19 was made, it is up to the applicant whether to submit a "translation of an amendment under Article 19 of the Patent Cooperation Treaty", or to attach a translation of the amended claims to the national form paper.

Where an amendment under Article 34 was made, a "translation of an amendment under Article 34 of the Patent Cooperation Treaty" is submitted. At this stage, the following problems may arise:

(A) The translation of the amendment under article 34 is prepared based on the Amendment attached to the International Preliminary Examination Report. In some cases, however, the International Preliminary Examination Report has not been issued by the International Preliminary Examining Authority (particularly USPTO and EPO) within the time limit for the submission of the national form paper. In such cases, we always contact our clients to confirm the date of amendment and other necessary information.

(B) In some cases, the International Preliminary Examination Report contains erroneous description (especially in the indication of the fields of search), and the JPO requests the International Preliminary Examining Authority to correct the error. This interrupts procedures at the JPO, thereby causing the delay of national publication and substantive examination.

(2) Japanese Language Patent Application
A Japanese language patent application is a PCT application which contains the designation of Japan as a designated State. In the case of a Japanese language patent application, it is necessary to submit (1) a "national form paper" (the Official fee is 21,000 yen). If applicable, (2) a copy of an amendment under Article 19, and/or (3) a copy of an amendment under Article 34 are also submitted.

When we are in charge of national phase procedures for Japanese language patent applications made by Japanese clients, we are engaged from the stage of their applications, in most cases. Accordingly, the confirmation of orders from the clients and the procedure for entering into national phase are carried out relatively smoothly, since we have all the application documents.

After a "national form paper" is prepared in the form of a file to be submitted to the JPO, the file is reviewed carefully. Then, the file is submitted online to the JPO.

Where an amendment under Article 19 of the Treaty was made, a "copy of an amendment under Article 19 of the Patent Cooperation Treaty" is submitted. This is in the form of an image file created by scanning a copy of the amendment under article 19.

Where an amendment under Article 34 of the Treaty was made, a "copy of an amendment under Article 34 of the Patent Cooperation Treaty" is submitted, as in the case of the amendment under Article 19.