Japan, as one of the major economic powerhouses in Asia, boasts an advanced intellectual property (IP) ecosystem that is crucial for technology companies, startups, and innovators. In this column, we explore Japan’s patent system, from the basics of its IP framework and filing procedures to recent policy trends. We hope this serves as a practical guide for businesses and individuals seeking to understand Japanese patent protection in detail.
1. The History of Japan’s Patent System and IP Framework
1) Scope of Intellectual Property Rights and the Basic IP Act
Japan has multiple laws governing intellectual property, including the Patent Act, Utility Model Act, Design Act, Trademark Act, and Copyright Act. These are all encompassed by the overarching Basic Act on Intellectual Property, which underscores Japan’s commitment to protecting IP and strengthening the country’s industrial competitiveness at a national level.
2) Key Differences Between Japanese and Korean Patents
- Filing Language
- Japan: Primarily Japanese (English filing is possible but requires a Japanese translation within a specified timeframe).
- Korea: Korean or English (when filing in English, a Korean translation must be submitted).
- Request for Examination
- Japan: Anyone can request examination within three years of the filing date.
- Korea: The applicant must request examination within three years of the filing date.
- Opposition System
- Both countries have mechanisms allowing third parties to challenge patents, though details and deadlines differ.
- PPH (Patent Prosecution Highway) Cooperation
- Japan has PPH agreements with over 47 countries, enabling faster examinations by sharing prior examination results.
- Korea also participates in the IP5 (the patent offices of the US, Europe, China, Japan, and Korea) and operates global Patent Prosecution Highway programs to expedite examinations.
2. Features and Registration Requirements for Japanese Patents and Utility Models
1) Scope of Protection for Patents vs. Utility Models
- Patent Act: Protects “highly advanced creations of technical ideas utilizing the laws of nature.”
- Covers methods, substances, devices, software, and a wide range of technological fields.
- Utility Model Act: Protects “creations of technical ideas utilizing the laws of nature related to the shape, structure, or combination of articles.”
- Does not cover methods or substances; focuses on the configuration of tangible products.
2) Registration Requirements
Both patents and utility models require:
- Industrial applicability
- Novelty (newness)
- Inventive step (non-obviousness)
Under the Patent Act, Japan uses a substantive examination system, where examiners carefully review novelty, inventive step, etc. In contrast, the Utility Model Act employs a non-substantive examination system, approving registration primarily via formalities only.
- Utility Model Technical Evaluation Report: Before enforcing a utility model right, the right holder must present an official evaluation report to a potential infringer. This step aims to reduce risks of unwarranted infringement claims.
3) Exceptions to Loss of Novelty
Even if an inventor publicly discloses their invention before filing for a patent, Article 30 of the Japanese Patent Act allows them to claim an exception to the loss of novelty within one year of disclosure.
- To invoke this exception, the applicant must submit documentary proof of the disclosure within 30 days after filing the application.
3. Japanese Patent Filing Procedures and Required Documents
1) Preparing for Filing
Essential Documents
- Application form
- Specification (Description)
- Claims
- Abstract
- Drawings (if necessary)
Filing Fees
- Typically around 14,000 yen per application.
Drafting Tips
- Maintain technical accuracy and avoid redundant or ambiguous language.
- Ensure compliance with the format and rules stipulated by the Japanese Patent Office (JPO), such as those in the Patent Act Enforcement Regulations.
2) Electronic Filing vs. Paper Filing
- Electronic Filing
- Requires a computer with internet access, an electronic certificate, and dedicated software.
- Both companies and individuals can file electronically from their office or home.
- Paper Filing
- Documents can be submitted directly at the JPO counter or by mail.
3) Request for Examination
Japan follows a deferred examination system:
- A patent application undergoes substantive examination only if an examination request is filed.
- If no one files a request for examination within three years of the filing date, the application is deemed withdrawn.
Once examination begins, the examiner conducts both formal and substantive reviews to check for any grounds for rejection.
4) Examination Outcomes
- Decision to Grant a Patent
- If no grounds for rejection are found, the JPO issues a decision to grant a patent. The applicant must pay the registration fee (covering years 1–3) within 30 days of receiving the decision notice for the patent right to take effect.
- Rejection and Office Action
- If there are grounds for rejection, the examiner issues an Office Action (notification of reasons for refusal). The applicant then has a specified period (60 days if residing in Japan, or up to 3 months if residing abroad) to submit an argument and/or amendment.
- If the rejection is not overcome, a final decision of refusal is issued. The applicant may then appeal through a Trial Against Examiner’s Decision of Refusal.
4. Appeals, Trials, and Dispute Resolution
1) Trial Against Examiner’s Decision of Refusal
If the examiner issues a final refusal, the applicant may appeal to the JPO’s Trial and Appeal Department (a panel of administrative judges). If they find the refusal was unfounded, the application may be granted after further examination.
2) Opposition System
Within six months of the publication of the patent gazette, any third party can file an opposition, asserting that the patent is invalid for specific reasons. The JPO then conducts a documentary review to decide whether to revoke or maintain the patent.
3) Invalidation Trial
An invalidation trial can be requested if a granted right has critical defects or to serve the public interest if the patent is deemed unjustifiable. Only parties with a vested interest can initiate this process, and further legal recourse is possible through an appeal to the Tokyo High Court.
4) Correction Trial
A correction trial allows the patentee to amend errors in the specification or claims. This is often used strategically during invalidation trials to fortify patent rights.
5. Maintenance and Exploitation of Patent/Utility Model Rights
1) Term of Rights
- Patents: 20 years from the filing date (extendable up to five additional years for certain pharmaceuticals, agrochemicals, etc.).
- Utility Models: 10 years from the filing date.
2) Annual Fees
Patent owners must pay annual maintenance fees to keep their patents in force.
- For patents, fees for years 1–3 are paid upon registration. From the 4th year onward, fees are paid annually.
- For utility models, fees for years 1–3 are paid upon application filing.
3) Licensing (Working Rights)
- Exclusive License: Provides an exclusive right similar to the patent holder’s own.
- Non-Exclusive License: Allows the licensee to practice the invention within agreed terms.
- Other types include a statutory non-exclusive license and compulsory license under certain conditions.
4) Utility Model Enforcement Considerations
Because utility models in Japan are granted without substantive examination, a Utility Model Technical Evaluation Report must be presented to the alleged infringer before enforcement or warning. If the utility model is later found invalid, the right holder could be liable for damages incurred by the other party, making careful due diligence essential.
6. Recent Policy Trends in Japan
1) Accelerated Digital Transformation
In the wake of COVID-19, Japan has been expediting digital processes across all IP domains—patents, designs, and trademarks—to accommodate remote and online transactions. Judicial systems are also being reformed to handle IP disputes more effectively.
2) Enhanced Design and Trademark Protection
- Amendments to the Design Act now protect digital designs (e.g., GUIs, architecture, interior design).
- Fast-track examination systems have been introduced, reducing the time to secure trademark rights.
3) Expanded Patent Holders’ Remedies
Procedural safeguards have been refined to offer patent holders more robust legal remedies, including simplified procedures for patent right restoration if lapsed inadvertently. Under the 2021 amendments, Japan is better equipped to protect patents and utility models amidst expanding e-commerce and contactless business models.
Conclusion and Key Takeaways
Japan is a technologically advanced market with a thriving startup ecosystem, making patent protection a strategic asset for anyone seeking to establish or expand their presence. Securing Japanese patent rights can confer a significant competitive edge, generate licensing revenue, and open opportunities for collaboration.
However, just like in Korea, the Japanese system has complex procedures—ranging from examination requests and annual fee payments to opposition and invalidation trials—that require diligent attention and strategic planning. Accurate documentation and translation are critical. Thorough consultation with experts is essential to navigate these steps successfully.
At Pine IP Firm, we have extensive experience across patent, design, trademark, and copyright matters. If you are looking to protect and commercialize your ideas effectively in Japan—or any other major market—our team is here to provide expert guidance every step of the way.
Do you want to ensure your ideas and creativity are fully protected?
Pine IP Firm offers comprehensive services in patents, designs, trademarks, copyrights, and more. Leverage our experience and know-how to strengthen your intellectual property strategy. Contact us today to discuss how we can assist with your Japanese patent needs.
