Japan: Speeding Up Examination and/or Refunding the Examination Fee

Despite its efforts to improve the rate at which pending Japanese patent applications are examined, the Japanese Patent Office (JPO) is still predicting an average delay between requesting examination and the actual commencement of examination of almost 30 months and this is not expected to be reduced in the near future. In order to weed-out applications in which applicants lose interest between the date of filing the request for examination and the actual start of examination, the JPO will issue a refund of one half of the examination fee if the application is abandoned or withdrawn prior to the issue of the first official action.

If prompt examination is needed by an applicant, it is still possible to request accelerated examination in Japan.* The fact situations under which acceleration could be requested were changed in 2004. Prior to 2004, the rules were not all that helpful to non-Japanese applicants in most cases unless the invention was being commercialized or commercialization was planed within two years. The situations in which acceleration can be requested have now been expanded to include all applications filed under the Patent Cooperation Treaty (PCT) and entering the national stage in Japan. This should then cover are very large percentage of foreign-originating Japanese patent applications.

If you would like to see the prosecution of your Japanese patent application accelerated then let us know. Similarly, if you have lost interest in a pending Japanese patent application for which you have previously requested examination, ask us about abandoning the application and seeking the partial refund of the previously tendered examination fee.

* In US Patent practice acceleration of examination is called "making the application special." It too needs to be requested and only certain fact situations will support such a request. Being based on a PCT application is, unfortunately, not one of them in the US.