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This page provides an overview of the requirements for achieving the same benefits as a Japanese patent application through a PCT (Patent Cooperation Treaty) international application.
I hope this article will be helpful to those seeking to obtain patent rights in Japan for their inventions.
Conditions for Achieving the Same Benefits as a Japanese Patent Application
The conditions for achieving the same benefits as a Japanese patent application through a PCT international application are clearly stupulated in Japan's Patent Act.
Specifically, the following two conditions must be met (Article 184-3, Paragraph 1 of the Japan Patent Act).
1. The international filing date for the PCT international application has been acknowledged.
First, the international filing date must be acknowledged by the receiving office(RO) for the PCT international application.
When a PCT international application is filed with the receiving office(RO), such as the national patent office of the applicant's country, and the receiving office(RO) confirms that the application meets the following requirements (PCT Article 11(1)), the receiving office will acknowledge the date of receipt as the international filing date.
(i) the applicant does not obviously lack, for reasons of residence or nationality, the right to file an international application with the receiving Office,
(ii) the international application is in the prescribed language,
(iii) the international application contains at least the following elements:
(a) an indication that it is intended as an international application,
(b) the designation of at least one Contracting State,
(c) the name of the applicant, as prescribed,
(d) a part which on the face of it appears to be a description,
(e) a part which on the face of it appears to be a claim or claims.
wipo.int/pct/en/texts/articles/a11.html
If the request for the PCT international application does not meet the conditions above, the receiving office(RO) will request the applicant to make corrections (PCT Article 11(2)(a)). Once the applicant provides the necessary corrections, the receiving office(RO) will acknowledge the date of receipt of the corrections as the international filing date (PCT Article 11(2)(b)).
2. Japan must be designated as one of the designated countries.
The second condition is that Japan must be included as one of the designated countries in the request for the PCT international application.
Here, "designated countries" refer to the countries where, based on the PCT international application, the applicant may later enter the national phase and seek to obtain patent rights.
However, due to the amendment to the PCT regulations in January 2004, by submitting a request for a PCT international application, all PCT member states are automatically considered designated. Therefore, unless specifically excluded in the request, Japan will be included as a designated country.
Before the 2004 amendment to the PCT regulations, the request form for a PCT international application included checkboxes, where applicants would check the countries (designated countries) in which they sought to obtain rights. However, since the current PCT system automatically designates all PCT member states upon filing, such checkboxes are no longer necessary.
Conversely, the current request form for a PCT international application includes checkboxes to specify countries that the applicant wishes to exclude from designation. These exclusion checkboxes are only provided for Japan, South Korea, and Germany. If you plan to pursue patent rights in Japan at a later stage, be careful not to check the box to exclude Japan.
If the conditions are met, the international filing date will be considered as the filing date of a patent application in Japan.
If the two conditions introduced so far are met, the PCT international application will be considered as a patent application filed in Japan on the international filing date (Article 184-3, Paragraph 1 of the Japan Patent Act).
Regardless of the date of national phase entry into Japan, the international filing date under the PCT will be considered the filing date in Japan. This provides an advantage for applicants, as the JPO examination such as filing order and novelty will be based on this international filing date.
There are additional hurdles to obtaining a patent in Japan based on a PCT international application.
What has been introduced so far are merely the conditions for a PCT international application to be considered as a patent application filed in Japan.
In reality, there are additional hurdles that must be overcome to obtain a patent in Japan based on a PCT international patent application.
For example, a procedure called "national phase entry" is required to connect the PCT international application to a domestic application in Japan (for specific details on the necessary procedures for national phase entry, please refer to this page; Procedure of national phase entry into Japan).
Additionally, it is necessary to request an examination from the Japan Patent Office(JPO), where the invention will undergo substantive examination to determine whether it qualifies for a patent.
If you are seeking to obtain patent rights in Japan based on a PCT international application, please feel free to contact us.
If you are considering obtaining patent rights in Japan based on a PCT international application, please feel free to contact APEX Patent Solutions.
Whether you are unsure about the procedures to follow, need to expedite the patent process, or are uncertain about pursuing patent rights in Japan, we will provide careful support tailored to your specific needs.