JPO Updates PCT Handbook
13 May 2016
The Japan Patent Office (JPO) has updated the amounts of additional fees and competences of offices or authorities in its Handbook for PCT International Search and Preliminary Examination in the Japan Patent Office, as well as provided a provisional English translation of the handbook. When any ambiguity in terms of interpretation is found in the provisional translation, the Japanese text shall prevail.
The JPO update the handbook on April 1, 2016, says Kan Otani, a patent attorney at Ohno & Partners in Tokyo. “But it is on formality issues.”
One topic of interest in the updates is the revised fee structure relating to the international application. This revision reflects 2015 amendments of the patent act and other legislation in Japan, says Aki Ryuka, a Japanese patent attorney at Ryuka IP Law Firm in Tokyo. “The previous structure of fees such as search fee and preliminary examination fee was uniform between PCT international applications filed in Japanese and in non-Japanese languages. Now, the fee structure is separated between them with different amount. Specifically, the fees for those filed in non-Japanese languages are higher, which is attributed to actual costs, the trend in patent application, the fee levels of overseas, and so on.”
The separation of fee schedules seems inevitable due to the increasing PCT international applications filed in non-Japanese languages, Ryuka says. “However, the higher costs for non- Japanese may make foreign people feel awkward in filing their PCT applications where the international search and/or international preliminary examination shall be carried out by JPO. Hence, it is necessary to carefully look at the influences of this issue, for example, on the expanding competency of JPO as the International Searching Authority and the IPEA under the PCT.”
Due to the steadily increasing number of international applications under the Patent Cooperation Treaty, it is necessary to clarify its practices and procedures in JPO acting as the International Searching and Preliminary Examining Authority under the PCT.
“According to JPO’s status report on March 29, 2016, the number of PCT international applications filed with the JPO as the receiving office was 43,097 in 2015, rising from 26,422 in 2006 and marking a record high,” Ryuka says. “Even though the JPO is unlikely to increase the staff only for [international applications], it is conceivable that the number of patent examiners could be increased in the future to strengthen the system of patent examination including the examination of PCT international applications.”
JPO first created the handbook in October 2015 in order to improve the transparency and predictability of searches and examinations. It is also used to explain the specific practices and procedures conducted by JPO acting as the International Searching and International Preliminary Examining Authority. The handbook cites relevant provisions in the PCT documents and, if applicable, Japan’s laws, as well.
Procedures for international applications under the PCT are stipulated in the PCT, Regulations under the PCT, and other documents, as well as in Japan’s national laws such as the Act on International Applications Under the Patent Cooperation Treaty.
The information contained in the handbook applies to all international searches and preliminary examinations conducted on and after October 1, 2015.
The provisional translation of the Handbook can be downloaded from: www.jpo.go.jp/tetuzuki_e/t_tokkyo_e/files_pct_handbook_e/all_e.pdf
