In accordance with Japan’s participation in the Patent Law Treaty (PLT) (for Japan, came into force on June 11, 2016), the revised Patent Act has come into force on April 1, 2016.

 The followings are the major revisions from the viewpoint of the filing of patent applications in Japan from foreign countries.

1. 1. Definition of requirements for according the filing date and supplement a procedure (Article 38-2)
2. 2. Patent application containing a reference to a previously filed application (Article 38-3)
3. 3. Submission of missing parts of the description or drawings (Article 38-4)

(1) Definition of requirements for according the filing date and supplement a procedure

In accordance with the provisions in Article 5(1) of the PLT, it is defined that the date on which the patent application form is submitted to the Japan Patent Office (JPO) is accorded as the filing date of the patent application, unless the application falls under one of the followings:

(a)      when it is recognized that the patent application does not expressly contain an indication that the applicant intends to obtain a patent;

(b)      when it is recognized that the patent application does not contain an indication of the name or appellation of the applicant, or that the indication is not clear enough to identify the applicant; and

(c)      when the patent application does not contain a description.

When the case falls under any one of the items (a) - (c), a supplement order is issued, and the date when the supplement is completed is accorded as the filing date.

 A special note should be made on the fact that, as long as a specification (description) is attached, the submission date is accorded as the filing date, and thus for example, even when claims are not attached like in the case of a research paper (a language other than English is allowed), the submission is accepted like in the provisional application in the United States.  It is noted that in the case of a document which does not follow the form of patent application, such as a research paper, it is recommended that a fully equipped patent application be submitted within one year with the internal priority claimed.

 As described above, now it is allowed to file an application with a research paper that does not include claims, and thus when it is desirable to secure a filing date in a country that does not adopt a provisional application system, it becomes possible to first file an application in Japan and then to file an application in the country of the applicant while claiming the priority under the Paris Convention.  In this case, though, an attention should be paid to whether it is mandatory to file the earlier application in the country where the invention was made.

 Along with this revision, the filing of the application becomes possible even in foreign languages other than English.

 For instance, now it is allowed to file an application in a foreign language based on an earlier application in a country other than English-speaking countries while claiming a priority under the Paris Convention, and then to submit a Japanese translation within one year and four months after the priority date (before the revision, within one year and two months).  Accordingly, when an application must be filed in Japan just before the time limit for claiming priority under the Paris Convention, it is recommended to first file the application in Japan with the description in the language of the earlier application, then take plenty of time to prepare a Japanese translation and submit the Japanese translation within one year and four months from the priority date.

(2) Patent application containing a reference to a previously filed application

 In accordance with the provision in Article 5(7) of the PLT, it is allowed to file a patent application without a description, if the application number of the earlier application is contained in the application form.  However, it is necessary to supplement the specification (description) and necessary drawings in Japanese within four months from the filing date.

 As described in the item (1) above, now that an application in a foreign language other than English can be filed in Japan, the present system seems to be valuable especially in an emergency case where the documents of the earlier application cannot reach Japan by the priority time limit.

(3) Submission of missing parts of the description or drawings

 When a part of the description or drawings attached to the patent application is missing, an order to supplement the missing part is notified by the JPO, and the date of supplement is in principle accorded as the filing date of the application.  However, when the missing part is included in full in the basic application on which the priority is claimed, the filing date is the date on which the application form was filed.