2003/10/30
HARAKENZO WORLD PATENT & TRADEMARK
A street
International applications based on the Patent Cooperation Treaty (referred to as PCT applications) that include Japan as a designated country are considered to be patent applications or utility model registration applications filed in Japan under certain conditions. (Article 184-3 of the Patent Law, Article 48-3 of the Utility Model Law).
However, simply filing a PCT application does not allow you to obtain rights as a patent or utility model in Japan.
To make a PCT application similar to a national application, further procedures are required under the Patent Law or Utility Model Law.
In other words, migration procedures within Japan are required, and the migration deadline is 30 months from the priority date.
Here, we have summarized the transition procedures for international patent applications.
table of contents
Foreign language patent application
A foreign language patent application refers to a PCT application filed in a foreign country other than Japanese, which includes Japan as a designated country. In the case of this foreign language patent application, the documents to be submitted to the Japan Patent Office are: (21,000) "Domestic document" (domestic fee is 34 yen) as attached documents, and (2002) Japanese version of the specification, scope of claims, necessary drawings, and abstract. Translation is required. If necessary, we will also submit a translation of ③ the amendment to Article 9 of the treaty. As of September 2, translations of items ② and ③ must be submitted within two months from the date on which the domestic documents were submitted. This amendment is very welcome in practice. This is because in the past, some clients decided to move to Japan just before the expiration of the domestic document submission period (30 months mentioned above), and the translation work was often extremely difficult. .
In fact, requests for migration to Japan from foreign clients are made by fax, mail, email, etc.
After checking the documents that need to be confirmed at the time of acceptance, we translate the specification, scope of claims, necessary drawings (explanations in the drawings), and abstract into Japanese, and domestic documents such as order letters and international publication publications. Create it while looking at etc.
Once the translation of the specification, etc. is completed, it is combined with the "domestic document" and created into a file to be submitted to the Patent Office. After checking, submit it online to the Patent Office.
If there is an amendment based on the provisions of Article 19 of the Treaty, submit a ``Translation Submission Form of Amendment to Article 19 of the Patent Cooperation Treaty'' or submit the amended translation of the scope of claims attached to the domestic document. It doesn't matter which one.
If there is an amendment based on the provisions of Article 34 of the Treaty, a ``Translation Submission of Amendment to Article 34 of the Patent Cooperation Treaty'' will be submitted, but problems may arise with this.
A) The translation of the Article 34 amendment is based on the amendment attached to the international preliminary examination report, but it may not have been issued by the International Preliminary Examining Authority within the period for submitting domestic documents (in particular, the preliminary examination report). The examination bodies are USPTO and EPO). In this case, we always contact the client to confirm the correction date, etc.
B) A case where there is an error in the information in the international preliminary examination report (particularly matters indicating the subject of the preliminary examination). In this case, the Patent Office may later request the local International Preliminary Examining Authority to make corrections. As a result, the processing within the Japan Patent Office does not move forward, causing delays in domestic publication and delays in substantive examination.
Japanese patent application
A Japanese patent application refers to a PCT application filed in Japanese that includes Japan as a designated country. In the case of this Japanese patent application, the documents to be submitted to the Patent Office are: (21,000) "Domestic document" (domestic fee is 19 yen), and if there is an amendment to Article 34 or Article 19, (34) a copy of the amendment to Article XNUMX. ③ Submit a copy of the Article XNUMX amendment.
In fact, when filing patent applications in Japanese, in most cases Japanese clients ask us to handle PCT applications. In this case, we have a complete set of PCT application documents at our office, so if the client instructs us to transfer, the confirmation work and transfer procedures will be relatively smooth.
For documents to be submitted to the Patent Office, we create a ``domestic document'', make it into a file for submission to the Patent Office, check it, and then submit it online to the Patent Office.
If there is an amendment based on the provisions of Article 19 of the Treaty, submit a ``Submission of Copy of Amendment to Article 19 of the Patent Cooperation Treaty''. This is an image file obtained by scanning a copy of the Article 19 amendment.
If there is an amendment based on the provisions of Article 34 of the Treaty, submit the "Submission of Copy of Amendment to Article 34 of the Patent Cooperation Treaty" in the same manner as a copy of the amendment to Article 19.
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