FAQ
Q1.When can we file a divisional application in Japan?
A1.See the following chart showing the "div.OK" periods. See
also the following table showing the specific period of filing an appeal
and the specific period of filing a divisional application. It depends
on the effective filing date in Japan (i.e. the international filing date
in PCT case, and the filing date of original application in Japan for Paris-route
case.)
| If you receive decision of refusal with a delivery date on or after April 1, 2009 | If you receive notice of allowance without filing an appeal (prior to filing an appeal), | |
| If an application was filed prior to April 1, 2007 | A time for filing an appeal for resident abroad is within 4 month from a delivery date of decision of refusal. | - |
| A time for filing a divisional application for resident abroad is on the same date as the filing date of an appeal. | you can NOT file a divisional application any more. | |
| If an application was filed on or after April 1, 2007 | A time for filing an appeal for resident abroad is within 4 month from a delivery date of decision of refusal. | - |
| A time for filing a divisional application for resident abroad is within 4 month from a delivery date of decision of refusal or the same day as the filing date of an appeal. | A time for filing a divisional application is within 30 days from a delivery date of notice of allowance. |
Q2.Do you have any tips for preparing a japanese patent application?
A2. First, consider bundling a plurality of single-dependent claims into a multiple-dependent claims because the multiple-dependent format is allowed in Japanese practice and it would help reducing costs. Second, you may also consider changing the order of claims in view of the examination results of the corresponding application in the other countries since there is the rule of claim amendments peculiar to Japan (see here in detail). In general, among dependent claims subsequent to claim 1, it would be better to put the most promising and "second best" dependent claim on claim 2 or possibly closer to claim 2.
Q3.Are there any program in Japan for simplifying examination?
A3. No. At present, there is no mutual patent approval system between Japan and the other countries. Grant of Patent in the other country does not automatically lead to grant of patent in Japan, but may lead to the acceleration of examination in Japan if your Japanese application complies with the requirements of Patent Prosecusion Highway program.
Q4.Could you show me the outlines of the trademark system in Japan?
A4. See below.
| Paris Convention | A contracting state to Stockholm Act |
| Trademark Law Treaty | A contracting state. |
| Madrid Protocol | A contracting state. As for declarations made by Japan under the protocol and the common regulations, see here. |
| Principle of Registration | While no evidence of use is necessary for registration, registered trademark not in use for three years may be cancelled by third parties via a trial for cancellation. See also below. |
| Declaration of Use | Not necessary. |
| Evidence of Use | Not necessary. |
| A trial for cancellation due to not-in-use | Any registered trademark not in use for three years in Japan may meet requirements for a trial for cancellation (Article 50(1)). The registered trademark should be identical to the using trademark in light of common sense (Article 50(1)). |
| Multiple Classifications in One Application | Allowed. |
| Substantive Examination Principle | All the trademark applications, including Madrid protocol route, are examined and registered if no reason for rejection was found within the refusal period of 18 months (Article 5(2)(b) of the protocol) for Madrid protocol route or within 18 month from the filing date in Japan (Article 16 of Trademark Law, Article 2 of Enforcement Order) for Paris route. |
| Standard Characters (Article 5(3)) | The specific double–byte characters are allowed. Small characters are allowed. Color limitation (Coloring characters) is not allowed. |
| Two Alphabets Trademark | In principle Not allowed (Article 3(1)(v)), but monogram is allowed. |
| Opposition of Registration | Within 2 months from the date of publication. |
| Protection of Trademark Famous in Foreign Countries | Any application of the famous trademark by third party may be rejected (Article 4(1)(x) or 4(1)(xv)) or invalidated, if registered, via a trial for invalidation (Article 46(1)(i)). It would be advisable to register the trademark while there is a room for being protected under Articles 2(1)(i) and 2(1)(ii) of Unfair Competition Law even if the trademark were not registered. |
MASAKI PATENT FIRM
Address: 1-5-7 Higashiwaki
City: Toyohashi
State/Province: Aichi
Zip Code: 441-8083
Country: Japan
T:+81 (532)-39-8539
F:+81 (532)-39-8514