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Other unique procedures



Procedures for refund of a part of the international searching fee

In a case in which it was possible for the international searching authority to utilize, in preparation of the international search report, a considerable part of the results of examination of a national application on which the international application claims priority and/or the results of search of the international application, the Applicant may request a partial refund of the international search fees (Rule 16.3).


  • 1. Mark on the PCT request at the time of filing the application, “Use of results of earlier search, reference to that search”.
  • 2. In a case in which an Examiner of the international searching authority has determined that it is possible to use the earlier search results, the Examiner issues a Notification of Refund of Search Fee to the Applicant.
  • 3. The Applicant files a request for a partial refund of the international search fee with the JPO (international searching authority).
  • 4. A partial refund of the international search fee paid at the time of filing the international application (for applications filed on or after April 1, 2012, 28,000 JPY of the international search fee of 70,000 JPY) will be made to the Applicant.

Please note that when a request for use of the results of the earlier national application is to be made, it is necessary at an earliest possible stage before the international search is started, to (1) request for the examination of the earlier national application and (2) withdraw the designation of Japan in the international application.

Moreover, in a case in which the request for use of the search results of an earlier international application is to be made, the international searching authority that searches the earlier international application must be the JPO.

Please see the related webpage of the WIPO for the case in which the international search authority is the EPO.

http://www.wipo.int/pct/guide/ja/gdvol1/annexes/annexd/ax_d_ep.pdf

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Procedures for request for the recording of a change

Information related to the Applicant such as the name of the Applicant, the name of the inventor, and address thereof can be changed during the international phase by filing a request for the recording of a change (Rule 92bis.1).

The request for the recording of a change is to be filed with the JPO (receiving office) or the WIPO (International Bureau). In the case in which the request has been filed with the JPO, the request will be sent to the WIPO from the JPO.

Since the request for the recording of a change will be accepted by the WIPO at the end, it is possible to more quickly reflect the change in name by directly filing the request with the WIPO. In particular, in such cases as you would like information after the change in recording to be published on an international publication that is near issuance, we recommend directly filing the request with the WIPO.

By changing the recording during the international phase, the details that have been changed will be notified to each of the designated states just in one procedure, and there is no need to file a verification by a notary public or a power of attorney. Therefore, the procedures are simpler than changing the recording in each designated state.

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Offer of Information

After the international application has been published, information related to the novelty and inventive step of the invention according to the international application can be submitted via the electronic system provided by the WIPO, within 28 months from the priority date. Such offer of information, which is limited only to information related to the novelty and inventive step, is helpful in increasing the speed and eligibility of the examination.

The information offered is sent to each of the international authorities (international searching authority responsible for preparing the international search report prior to preparation thereof and the international preliminary examining authority responsible for preparing the international preliminary examination report prior to preparation thereof), and is then made available to the public for view.

Please note that the Applicant may file a comment on the offered information with the WIPO (International Bureau).

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Avoiding withdrawal deemed

An international application is deemed as designating all PCT contracting states in principle (all-states designation deemed). When an international application claiming priority on a Japanese national application is filed, this filing serves as claiming national priority, and the earlier national application will be deemed as withdrawn one year and three months after the filing date of the earlier application (Patent Law, Sections 41 and 42).

Hence, if you wish to obtain a patent on the earlier national application in Japan, it is necessary to avoid the withdrawal deemed of the earlier national application by taking either one of the following methods.


-- Method 1: Exclude the designation of Japan --

It is possible to exclude the designation of Japan by marking the checkbox next to Box No. V of the PCT request of the international application. As a result, the international application will not designate Japan, so hence the earlier national application serving as the basis of the national priority right will not be deemed as having been withdrawn.

However, please be aware that once this checkbox is marked to exclude the designation, it is not possible to later request the designation of that country again.


-- Method 2: Withdraw the designation of Japan --

It is possible to withdraw the designation of Japan by filing a “withdrawal of designation of designated states” with the receiving office before the elapse of one year and three months from the filing date of the earlier national application (after the elapse, the earlier national application is to be deemed to have been withdrawn). This disables the entry of that international application into the Japanese national phase. Accordingly, the earlier national application serving as the basis of the national priority will not be deemed as having been withdrawn.


-- Method 3: Withdrawal of claiming domestic priority --

It is possible to withdraw the claiming of national priority by filing a “written statement” with the receiving office before the elapse of one year and three months from the filing date of the earlier application (after the elapse, the earlier application is to be deemed to have been withdrawn). As a result, both the earlier national application on which the priority was claimed and the international application that has been entered into the national phase will be pending for domestic procedures in Japan regardless of the priority.

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Restoring right of priority

Even if an international application claiming priority has been filed on a date after the 12-month time limit of the period for claiming priority, this will not be rejected immediately if the international filing date is within two months from the end of the priority period, and its state of claiming priority will be maintained during the international phase (Rule 26bis.2).

However, in order to validate the maintained priority claim even after entry into the national phase, the Applicant needs to file a request for restoring the right of priority with the International Bureau or with each of the designated offices as the receiving office (Rule 49ter).

In order to restore the right of priority, the following conditions must be fulfilled (Rule 26bis3).


  • The international application is filed within two months from the end of the 12-month priority period.
  • The reason for having been unable to conform to the priority period fulfills the “criterion for restoration” employed by the individual designated office (e.g. it was “unintentional” or “unavoidable although a considerable amount of attention required was paid according to the situation”).

However, transitional measures apply to Japan since the regulations according to the restoration of priority rights do not conform to the domestic laws and orders. Hence, it is not possible to request the restoration of the right of priority with the receiving office and designated offices of Japan (Rule 26bis3, and Rule 49ter). Note that transitional measures apply also to South Korea, China, and the USA other than Japan. *1

For the latest information on states to which transitional measures apply, see the related webpage of the WIPO.

http://www.wipo.int/pct/en/texts/reservations/res_incomp.html


*1
  • States that have announced the application of the transitional measures at their receiving offices are the following 16 states: Belgium, Brazil, Colombia, Cuba, Czech, Germany, Algeria, Spain, Greece, Indonesia, India, Italy, Japan, South Korea, Norway, and the Philippines.
  • States that have announced the application of transitional measures in the designated offices are the following 19 states: Brazil, Canada, China, Colombia, Cuba, Czech, Germany, Algeria, Spain, Indonesia, India, Japan, South Korea, Lithuania, Mexico, Norway, the Philippines, Turkey, and the USA.
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Correction (furnishing) or addition of priority claim

It is possible to correct any priority claims that were claimed by mistake at the time of filing the international application or add any priority claims that were missing when claiming priority at the time of filing the international application (Rule 26bis).

In principle, it is possible to correct or add the priority claim within four months from the international filing date. However, if the earlier one of the following (A) or (B) ends later than the principle time limit (within four months from the international filing date), the principle does not apply, and the correction or addition is accepted until the earlier date of (A) or (B).


  • (A) 16 months from the priority date claimed in the PCT request
  • (B) 16 months from the new priority date upon correcting or adding the priority claim

The request is to be filed with the JPO (receiving office) or the WIPO (International Bureau). In the case of filing the request with the JPO, an “Amendment” is to be filed if the display of the priority claim is incorrect, and a request for adding a priority claim is to be filed to add the priority claim.

There is no prescribed document format for filing this request with the WIPO. Accordingly, the request is made by filing a letter.

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Withdrawal of priority claim

The Applicant can withdraw the priority claim during the period from the claimed priority date to the end of the 30-month period (Rule 90bis.3). In a case in which the application involves priority claims based on two or more applications, it is possible to withdraw a part or all of the priority claims.

The procedures can be taken with the JPO (receiving office) or the WIPO (International Bureau), or if Article 39(1) applies, with the JPO (preliminary examining authority) or EPO (preliminary examining authority). In the case in which the procedures are taken with the JPO, a request for withdrawing the priority claim is filed therewith.

Please note that in the case in which the procedures are taken with the WIPO or EPO, there is no prescribed document format. Accordingly, the request is made by filing a letter.


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Withdrawal of international application

The Applicant can withdraw the international application during the period from the priority date to the end of the 30-month period (Rule 90bis.1).

The request is to be made with the JPO (receiving office) or the WIPO (International Bureau), or if Article 39(1) applies, with the JPO (preliminary examining authority) or EPO (preliminary examining authority). In the case in which the procedures are taken with the JPO, a request for withdrawing an international application is to be filed.

In the case of filing the request with the WIPO or EPO, there is no prescribed document format. Accordingly, the request is made by filing a letter.

If the international application has been withdrawn, the effect of the international application ceases as with the withdrawal of the domestic application in a designated state (Article 24(1)(i)).

Note that by effectively utilizing the withdrawal of the international application, it is possible to obtain the results of the international search without having the details of the invention published. In order to do so, it is necessary to withdraw the international application within 16 months from the priority date (17 months in the case of filing the request with the WIPO).


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Furnishing specification and the like

For parts or elements missing in the international application and which the receiving office accepts as such, it is possible to include such parts by filing the missing parts at a later date even after an international application date has been issued (Rules 20.3 and 20.5).


  • Missing parts are parts that have been accepted as missing or which appear to be missing, in the specification, claims, and drawings of the international specification.
  • Missing elements are elements in the international application under PCT Article 11(1)(iii)(d) or (e).

In order to furnish the international application with the missing parts and/or elements, it is necessary to file a supplementary request with the receiving office within two months from the date on which the documents as the international application were first received by the receiving office.

It should be noted that as a result of filing the supplementary request, the international filing date will be reissued to the date on which the supplementary request was filed. If it is disadvantageous to the Applicant that the filing date slides to a later date, it is possible to request the receiving office to ignore the supplementary request (Rule 20.5).

In a case in which the receiving office accepts that the missing part or the missing element in an international application claiming priority on an earlier application is completely included in the earlier application, it is possible to furnish the international application with the missing part or element without the international filing date sliding to a later date (Rule 20.6). This is called “furnishing of incorporation by reference of element or part”.

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