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PCT Support Station

Q&A


This Q&A relates to international application filing procedures under the PCT.

For more specific information, please contact us below:

    TEL: 06-6351-4384
    FAX: 06-6351-5664
    E-mail:
    PCT Support Station Manager/Filing Procedure Inquiries to: Takuya YUGUCHI


1. Questions about commissions to our firm
2. Questions related to claiming priority rights
3. Questions related to application filing procedures
4. Questions related to fees paid to the JPO
5. Questions related to International Search and International Preliminary Examination
6. Questions regarding intermediate procedures
7. Questions related to entering an international application into the national phase



1. Questions about commissions to our firm

  • 1. Are there any request forms for a request to file an international application?

    Yes.
    Please download the request forms from HERE ( WORD[55KB] )
    Please fill in the necessary information on the request form, affix a seal, and send it to our firm.
    Any unconfirmed or unsure items may be left blank.
    "HARAKENZO more " accept the request forms by any of mail, facsimile, and email.
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  • 2. What are the procedures taken after requesting to file an international application until the application is filed?

    The procedures vary depending on the case that you will entrust us for. Basically, however, the procedures will be as follows:

    (1) "HARAKENZO more " will study the details to include in the specifications etc. and any information to be written on the PCT request.
    (2) "HARAKENZO more " will draft application documents (specification, drawings, PCT request etc.) on our side.
    (3) "HARAKENZO more " will ask our client to review the application documents that we have drafted.
    (4) In the event that we receive any instructions to add a description to, correct a description in, or delete a description from the drafted documents, we will reflect them in the application documents.
    (5) "HARAKENZO more " will ask our client again to review the revised application documents. After the documents have been reviewed, we will ask for instructions to proceed with the filing of the application.
    (6) "HARAKENZO more " will file the application.
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2. Questions related to claiming priority rights

  • 3. Is it possible to file an international application claiming priority on a US provisional application?

    Yes.
    A US provisional application can be filed by submitting a Japanese-language academic paper or the like that discloses the details of the invention. It is not essential to file a formal set of claims, a declaration, an IDS and the like, and allows for securing an filing date extremely easily. For example, a provisional application can be filed as a relief measure in a case in which although a presentation date of an academic paper or the like is approaching so that it is impossible to prepare a patent application by that date.
    A PCT international application can then be filed within a year from the secured filing date of the US provisional application, by claiming priority on that US provisional application.
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  • 4. Is it possible to file an international application (1st country) without filing an earlier application?

    Yes.
    Directly filing an international application is the best measure to take in the case in which it is already decided that the use of the invention will be expanded overseas. This can save the trouble and costs required to file an application in Japan.
    Moreover, an international application receives an international search report and a written opinion. This allows for obtaining information of related documents and patentability of the invention at an early stage.
    Please note that it is also possible to file an international application claiming priority on another international application.
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  • 5. I was planning to file an international application claiming priority on a Japanese application, but 12 months have already passed from the filing date of the Japanese application (priority date). I still would like to file an international application claiming priority on the Japanese application. Is there any way to do so?

    There is a system called “restoring right of priority”.
    Please refer to the detailed description provided in “Other unique procedures” regarding this system.
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3. Questions related to application filing procedures

  • 6. How can an international application be filed to a patent office that serves as a receiving office?

    (1) Filing by paper
    You can file a PCT request, a specification, and like documents prepared in an international application format by mail or facsimile to the reception desk of the receiving office in International Application Division of Japan Patent Office (JPO).

    (2) Filing by paper with use of PCT-SAFE software (EASY mode)
    You can file a paper on which a PCT request prepared using the EASY mode of “PCT-SAFE software” (provided by World Intellectual Property Organization (WIPO)) is printed, a FD (flexible disc) that stores the data of the PCT request and the abstract, and a specification and the like prepared on paper.
    PCT-SAFE and other necessary software, and a user manual etc. of PCT-SAFE are available from the “PCT-RO Internet application filing support site”. Please note that as from April 1, 2012, the recording medium for storing the data of a PCT request and the abstract is a magnetic disc, and a CD-R is accepted as well as the FD.

    (3) Electronic filing via the Internet lines
    You can file a PCT request, specification and the like stored in XML format via the Internet lines, by use of the “Internet filing software” provided from the National Center for Industrial Property Information and Training (INPIT), or the “PCT-SAFE software” provided from the WIPO.
    Only international applications can be filed via the internet lines; any correspondence to be filed after the filing of an application (i.e. intermediate procedures), such as a demand for an international preliminary examination, cannot be filed online.

    * Please note that the fees for filing an international application are reduced in the case in which the filing method of (2) or (3) is used.
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  • 7. The title of the invention includes a subscript (e.g. CH13O4). Due to the capability of the internet filing software, the subscript does not seem to show up in the title of the invention in the PCT request. Is there any problem in filing an application without using the subscripts (e.g. CH13O4)?

    No.
    Although the title of the invention is required to be completely the same in the specification and in the PCT request, since the internet filing software is not capable of displaying superscripts or subscripts for the title of the invention in the PCT request, the application will be accepted even if the title of the invention is not displayed the same due to this reason.
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  • 8. The inventor has a middle name. How should the middle name be written in the inventor information on the PCT request for an international application?

    Please fill in the section for the name of the inventor in the order of (1) last name, (2) first name, and (3) middle name. For example, if the last name is アアア, the first name is イイイ, and the middle name is ウウウ, the Japanese name is to be written in as “アアア イイイ ウウウ”, and the English name is to be written in as “AAA, Iii Uuu”.
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  • 9. Is it possible to file an international application with colored drawings?

    Yes.
    However, the application documents are to be filed by paper. It is not possible to file colored drawings by online application filing procedures.
    It is necessary to file three original copies of colored drawings on paper (for original records, for the receiving office, and for the searching authority). More specifically, the Applicant prepares one regular set of application documents including colored drawings (that is, a PCT request, a specification, claims, an abstract, drawings, a priority certificate, etc.), and encloses two more copies of the colored drawings with the set of application documents when filing with the JPO.
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  • 10. Is it possible to include underlines in the specifications, claims, and/or abstract?

    No.
    An international application does not allow underlines to be included in in the specification, claims, and/or abstract.
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  • 11. Is it possible to omit the submission of a power of attorney at the time of filing an international application?

    Yes. No documentation proving the power of attorney is requested at the time of filing an international application.
    However, when an attorney or a common representative not displayed on the PCT request completed at the time of filing the application is newly appointed, a separate power of attorney or a copy of a general power of attorney must be filed.
    Please be aware that, due to the requirement under PCT rules 90.4(d), the submission requirement of a power of attorney will not be relinquished by (i) withdrawing the international application, (ii) withdrawing the designation, (iii) withdrawing claiming of priority rights, or (iv) withdrawing a demand for an international preliminary examination or withdrawing election.
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  • 12. If I mark, in the PCT request for electronic filing, a checkbox for requesting the receiving office to transmit the priority documents, how is the “priority certificate (PCT)” to be filed?

    Please file a “written supplementation” with a “priority right certification request (PCT)” attached thereto so that they arrive at the international application division of the receiving office within three days from the date of filing the international application. Moreover, if it is impossible to file these documents within 3 days from the filing of the application, do not request the priority documents to be sent at the time of filing the international application (do not mark the checkbox), and file a “priority document transmittal request” with a “priority right certification request (PCT)” attached thereto within 16 months from the priority date.
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4. Questions related to fees paid to the JPO

  • 13. "HARAKENZO more " are planning on filing an international application that includes new details not included in the earlier Japanese patent application.
    Assuming that we will be seeking a patent on an invention including the new details also in Japan, we understand the following application routes are available to take in order to do so. Which route would be lower in costs?
    (1) Claiming domestic priority by PCT self designation and seek a patent in Japan via the PCT route (entry into the national phase in Japan).
    (2) Do not claim domestic priority by PCT self designation but file a separate Japanese application claiming priority on the earlier Japanese patent application, and seek for the granting of a patent (exclude the designation of Japan in the PCT application at the time of filing the PCT application).



    The fees paid to the JPO are lower via route (1).
    The attorney fees differ among Intellectual Property Law Firm, so hence we cannot provide a general answer regarding that.
    The route of (1) allows for enjoying the merits achieved in the international phase (that it is possible to make amendments in consideration of the International search reports and the like) for the patenting of the invention in Japan as well.
    The route of (2) allows for separately preparing claims suitable for patenting in foreign countries for the PCT application and those suitable for patenting in Japan for the Japanese application.
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  • 14. Does the fee calculation for filing an international application differ between a case in which an international application including a sequence listing is filed online and a case in which such an application is filed by paper?

    Yes. The fee calculation for filing an international application differs between a case in which the international application including a sequence listing is filed online and a case in which that is filed by paper (including the case of the EASY mode application of PCT-SAFE). When electronically filed, all pages of the “sequence listing” are excluded from the calculation of the fees for filing the international application. That is to say, the number of pages of the sequence listing is not counted, and no fees will be incurred therefor. On the other hand, when the application is filed by paper (including the case of the EASY mode application), the “PCT request, specification, claims, abstract, and drawings” are not separated from the “sequence listing”, and the total number of pages is counted to calculate the fees for filing the international application.
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5. Questions related to International Search and International Preliminary Examination

  • •15. In the case in which an international application is filed with the JPO, is the JPO an only option for the international searching authority?

    If the application documents have been prepared in Japanese, the only international searching authority that can be selected is the JPO.
    Alternatively, if the application documents have been prepared in English, it is possible to select either the JPO or the European Patent Office (EPO).
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  • 17. What action can an Applicant take in response to a Written Opinion received together with an International Search Report?

    The Applicant can take either one of the following five actions:

    (1) File an argument against the Written Opinion as a “comment”, with the International Bureau. However, this “comment” is merely accepted so that the International Bureau can transfer it to the designated offices, and will be handled as an “informal comment” not stipulated under the PCT.

    Please note that in a case in which an informal comment is filed, an acknowledgement of receipt (IB/345) will be issued from the international bureau to the Applicant.

    Although there is no effect clearly stipulated in the PCT, this can provide opinions and arguments to the designated offices in a case in which no request for international preliminary examination is to be filed. However, whether or not that opinion and/or argument is taken into consideration in the substantive examination is at the discretion of the office(s) of the designated state(s).

    (2) File an amendment under Article 19 with the International Bureau.

    (3) Demand an international preliminary examination. This allows for formally rebutting and traversing the written opinion. "HARAKENZO more " recommend filing this demand within 22 months from the priority date. If no response is filed before the international preliminary examination authority starts the preliminary examination, the argument may not be taken into consideration during the preliminary examination.

    (4) Withdraw the international application.

    (5) Do nothing.

    Although the Applicant may desire to take any one of measures (1) to (4) above for any unfavorable written opinion, if the Applicant wishes to obtain a positive international preliminary examination report, it is necessary to file an amendment and a written reply under Article 34 by taking measure (3).
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  • 18. How can I request an international preliminary examination to start early?

    An early start of the preliminary examination can be requested by either of the following methods:

    1. Request an early start of an international preliminary examination when filing a demand for an international preliminary examination.
    Please file a demand for an international preliminary examination with the checkbox marked next to “4. The Applicant expressly wishes the international preliminary examination to start earlier than at the expiration of the applicable time limit under Rule 54bis.1(a).” of “Box. No. IV BASIS FOR INTERNATIONAL PRELIMINARY EXAMINATION”.

    2. Request an early start of an international preliminary examination after filing a demand for an international preliminary examination.
    Please file a “Request for Start of International Preliminary Examination Before the Applicable Time Limit” after filing a demand.

    However, even if a demand for the early start is filed by either of these methods, the preliminary examination authority will not start the preliminary examination unless the full fees for the preliminary examination have been paid.
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  • 19.What is the difference between IPRP (Chapter I) and IPRP (Chapter II)?

    The “International Preliminary Report on Patentability (Chapter I) (IPRP (Chapter I))” is a renamed document of the written opinion for the case where an international preliminary examination has not been demanded for the international application. The “International Preliminary Report on Patentability (Chapter II) (IPRP (Chapter II))” is prepared as a result of an international preliminary examination. These are different in terms of the basis of what invention its patentability is determined by the Examiner.
    IPRP (Chapter I) provides an opinion of an Examiner on the patentability of the “international application at the time of filing the international application”. On the other hand, IPRP (Chapter II) is a report prepared on the “reviewed international application that has been amended (Articles 19, 34) and has been provided with arguments and the like to the Examine from the Applicant”. As such, on the basis of what invention the report is prepared is different between the IPRP (Chapter I) and IPRP (Chapter II).
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  • 20. Is the “base date” for determining the patentability the same for both the IPRP (Chapter I) and IPRP (Chapter II)?

    Yes. The priority date serves as the base date for both reports.
    The IPRP, whether it is Chapter I or Chapter II, is a decision by the Examiner on the patentability of the invention. Hence, it is necessary to have the same base date. Accordingly, the “priority date (date of filing the earlier application if claiming priority thereon, if not then the international application filing date)” that serves as the base date for determining the patentability in the current international preliminary examination serves as the common base date for the IPRP.
    Although the preparation of an international search written opinion that constitutes the IPRP (Chapter I) is carried out at the same time as the preparation of an international search report, the former has the priority date to serve as the base date for the determination of the patentability, whereas the latter has the international application filing date to serve as the base date of the prior art determination. This is because the search of prior art is performed in a broader range so as not to reduce the value of the invention even if, depending on the designated state, the priority was not accepted as claimable based on the determination of prior art.
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  • 21. When will an English translation of the IPRP (Chapter I) and IPRP (Chapter II) be prepared? Will this be sent to the Applicant?

    The IPRP (Chapter I) will be issued from the International Bureau to the designated states after 30 months have elapsed from the priority date. Upon request of the designated state, an English translation is prepared by the International Bureau and is sent to the designated office and to the Applicant. The IPRP (Chapter II) and its predetermined English translation (however excluding attached documents) will be prepared by the International Bureau and will be sent to each of the selected countries.
    Please note that an English translation will be sent to the Applicant at the same time as those being sent to the selected countries.
    Upon request of the selected countries, the International Bureau will send these documents after 30 months have elapsed from the priority date.
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6. Questions regarding intermediate procedures

  • 22. How are substitute pages of an international application that are to be attached to the amendments and the request for correcting evident mistakes to be prepared in the case of electronic filing?

    Substitute pages for the amendments or mistakes are prepared in units of pages displayed as pdf images with the software used for filing the application. That is to say, the pages are prepared in units of pages as actually printed out.

    (1) In the case of amending or correcting the specification, claims, and/or drawings by requesting an amendment or correction of a clear typographical error under Section 6 of the International Applications Law (Section 77 of the Enforcement Rules for the International Applications Law), only the sheet in which the change is included by the amendment or the like is prepared as a substitute sheet and is filed.

    (2) The same applies in the case of an amendment to the specification and drawings under PCT Article 34 (Amendment under requirements of Section 11). However, in the case of amending the claims, the entire set (all sheets) is to be prepared as substitute sheets and filed.
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  • 23. An invitation for payment of additional fees was issued, but we did not pay that additional fee. It is possible to request the claims not having been internationally searched to be searched at a later date by filing a demand for an international preliminary examination or like request?

    No.
    A search of any claims that were not internationally searched without paying the additional fees cannot be requested in the international phase thereafter.
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  • 24. Is it possible to file a demand for an international preliminary examination, an amendment under PCT Article 34, and/or a written argument with the JPO (international preliminary examination authority) by facsimile?

    No.
    By facsimile, the JPO accepts only the filing of application documents.
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  • 25. The time limit of requesting an international preliminary examination (22 months from the priority date) is approaching. However the preparation of a written argument is unlikely to be ready on time. Is it possible to file only a demand for an international preliminary examination and an amendment under PCT Article 34 first, and file a written argument later, after the time limit for a demand for an international preliminary examination?

    No. The time limit for filing a written argument is set as within 22 months from the priority date.
    Assume that the demand under PCT Article 34 for an international preliminary examination were filed within 22 months from the priority date but intentionally did not enclose therein an amendment under PCT Article 34 or a written argument. In this case, the receiving office will issue an invitation to file an amendment under PCT Article 34. Would it be possible to file an amendment and written argument under PCT Article 34 in response to this invitation?
    The answer to this question is that it is not impossible. However, we advise avoiding such action.
    It is a dominant principle that the time limit for filing a written argument is within 22 months from the priority date. Therefore, depending on the contents of the written argument, there is the possibility that the receiving office may reject the written argument during a formality examination. More specifically, although a written argument that discloses details related to the enclosed amendment under PCT Article 34 would likely pass the formality examination, if the written argument only includes an argument against the Written Opinion and nothing related to any amendments, there is the possibility that the written argument may not be acceptable in terms of formality. Moreover, even if the written argument passes the formality examination, it is at the Examiner’s discretion as to how the written argument is handled.
    Therefore, we recommend preparing a written argument within the time limit. Alternatively, please consider contacting the Examiner in advance to ask for a chance for an interview, and argue to the Examiner during that interview of your argument against the Written Opinion (the details that are usually written in a written argument).
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  • 26. What are the points to consider in amending the claims under PCT Article 19 and PCT Article 34?

    According to the modifications to the PCT rule dated July 1, 2009, when the claims are amended under PCT Article 19 and PCT Article 34, the entire set of claims is to be filed as substitute sheets (until this modification came into effect, just the pages including the changes caused by the amendment were filed as substitute sheets).

    1. File the entire set of claims (all sheets including those in which no changes have been made after making the amendment) as the substitute sheets.

    2. When the specification and the drawings are to be amended, as to cases in which formality defects of the claims are supplemented (Section 6 of International Applications Law) and cases in which clear typographical errors are corrected (Section 77 of the Enforcement Rules for the International Applications Law), substitute sheets of only those in which changes have been made by the amendment are filed.

    3. Regardless of the international filing date, the foregoing applies to all cases in which the claims are amended on or after July 1, 2009.
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  • 27. How can I cancel a claim? For example, if there are four claims, and claim 2 is to be canceled, it is possible to move claims 3 and 4 up and make those serve as new claims 2 and 3?

    Usually, cancelation of claims would be rendered as follows:

    Claim 1
    Claim 2 (Canceled)
    Claim 3
    Claim 4

    However, it is not prohibited to renumber the claims when amending them.
    Therefore, the following amendment, in which the claim numbers are moved up, may also be accepted.

    Claim 1
    Claim 2 (Amended) (previous claim 3)
    Claim 3 (Amended) (previous claim 4)
    Claim 4 (Canceled)
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  • 28. Is it possible to amend the abstract by the amendment under Article 34?

    No.
    The Applicant can request the international search authority within one month from the issued date of the international search report to do one of the following:
    (i) Correction of the abstract accepted in the international search report
    (ii) (In the case where the international search authority prepared the abstract) Correction of the abstract or opinion on the abstract, or both of the correction and opinion of the abstract
    The Examiner determines whether or not to correct the abstract in accordance with the request (form PCT/ISA/205).
    There is no other way to amend the abstract.
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7. Questions related to entering an international application into the national phase

  • 29. In what countries or regions can a PCT international application NOT be entered into the national phase (PCT non-contracting states)?

    For example, Taiwan, Argentina, Venezuela, Pakistan, and Iran.
    Please see the following WIPO webpage for the most recent information of the PCT contracting states:
    http://www.wipo.int/pct/en/pct_contracting_states.html
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  • • 30. Is it possible to enter an international application into the national phase in Japan on the same date as the international filing date?

    Theoretically, it is possible. However, it is considered that such a measure would only be taken under special circumstances; for instance, in the case where the Applicant would like a patent to be granted on an invention extremely early.
    The international application has several advantages. For example, there is a grace period of 30 months from the priority date for entering an international application into the national phase. Moreover, an international search report and a written opinion are provided before the application is internationally published. This allows for judging patentability thereof (it is also possible to optionally receive an international preliminary report related to the patentability).
    These advantages are relinquished if an international application is entered into the national phase in Japan on the same date as the international application.
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  • 31. When is the time limit to enter an international application into a national phase (Article 22)?

    The time limit for entering an international application into the national phase in Japan as a designated state is 30 months from the priority date (PCT Article 22). An international application claiming no priority rights has a time limit of 30 months from the international filing date.
    Please refer to the following WIPO webpage for information on the time limit for entering an international application into the national phase of the individual designated states.
    http://www.wipo.int/pct/en/texts/time_limits.html

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