This article aims to explain the timeline and deadlines of a PCT application or Paris Route application when being filed in Japan.

Filing Deadline and Translation Submission

The deadline for entering a PCT application into the national phase in Japan is 30 months from the earliest priority date.

Paris route applications may be filed either in Japanese or any other language within one year from the priority date. When a Paris route application is filed in English (or any language other than Japanese), a Japanese translation must be filed within 16 months from the priority date and mistakes in the translation may be rectified by Amendments (during the patent prosecution procedure) or Corrections (after grant of a patent).

Publication

Publication of non-examined Japanese patent applications in the official gazette and on the JPO website takes place 18 months after their filing or priority date, whichever is earlier. Any third party may submit prior art documents to the JPO in relation to the patent application.

Examination

Examination must be requested within 3 years from the filing date in Japan (International Filing Date for a PCT application).

According to the JPO Status report 2022, FA Pendency (first action pendency) on average was 10.2 months. First action pendency is the period from the date of examination request until the JPO sends the first notice of examination results to the applicant (in most cases this will be either a Notice of a Patent Grant or an Office Action).

Once an Office Action is issued, an international applicant is given 3 months to respond to the Office action (only 2 months for domestic applicants). The deadline to respond can be extended by up to three months.

According to the JPO Status report 2022, the pendency on average was 15 months in 2020. This is an increase from 9.3 months in 2018 and might be connected to the pandemic.

In our experience, total pendency for patent applications filed by non-Japanese companies is generally slightly longer compared to the average time indicated by the JPO. This could be due to the (on average) smaller amount of patent applications being granted without an Office Action, or may be due to the longer deadlines for responding to Office Actions for international applicants.

Appeal Proceedings

The deadline to file an appeal against the examiner's decision of rejection is 4 months for overseas applicants and three months for Japanese domestic applicants.

Pendency from filing the appeal until a final decision is made by the appeal board was 12 months on average in 2021.

Expediting Examination

Several measures are available to accelerate examination (e.g., PCT PPH, PPH) when 1) a decision to grant a patent is issued by one of the participating offices, (2) an Accelerated

Examination when the relevance of the claimed invention as they relate to the search results is explained, and (3) a Super Accelerated Examination when the claimed invention will soon be utilized, etc.

According to JPO statistics, the average FA pendency for applications under Accelerated Examination is 2.3 months on, average and less than 1 month under Super Accelerated Examination.

Delaying Examination

Unlike CNIPA, the JPO does not provide a way to delay the examination of a patent application, other than waiting until deadlines are approaching and extending deadlines to respond to an Office Action up to a maximum of three months.

As of April 2023, it will however be possible to delay the examination of a divisional application if the parent application is still pending in the Appeal stage.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.