Overview
The measure set forth in the Industrial Competitiveness Enhancement Act that was adopted by Japan’s Diet on December 4, 2013, to reduce fees for SMEs for requests for substantive examinations and annuities, went into effect on April 1, 2014. As a result, the Japan Patent Office (JPO) fees charged to a small or medium-sized enterprise (hereinafter collectively “SME”) or to a venture company for (1) a request for a substantive examination of a patent application, and (2) annuities for the 1st year through the 10th year of a patent, will be reduced from about JPY380,000 to about JPY130,000 in total The JPO’s example case for calculation of fees has 10 claims at the time of submission of the request for substantive examination, and 6 claims at the time of registration).
For a Patent Cooperation Treaty (PCT) international application having 10 claims, the search fee, transmittal fee, and the international preliminary examination fee in total were reduced from about JPY 110,000 to about JPY 35,000.
This measure is applicable to any patent application for which a request for substantive examination is filed on or after April 1, 2014. The measure will remain in effect until March 31, 2018.
Details regarding the measure
A. Parties qualifying for a reduction of fees
A party that is doing business either in Japan or in a foreign country and that is any of the following is eligible for a reduction of the above-mentioned fees.
- A small, single-owner business; i.e., 20 employees or less, or 5 employees or less if the company is a wholesale, retail, or service business
- A single-owner business that has been in operation for less than 10 years
- A small enterprise (i.e., 20 employees or less, or 5 employees or less if the company is a wholesale, retail, or service corporation
- An enterprise capitalized at JPY300 million or less, and in operation for less than 10 years
However, an enterprise in 3 or 4 above that is controlled by another party, such as by a parent company, does not qualify for any reduction under this measure.
B. Specific fees reduced
- For a Japan patent application
a. Fee for a request for substantive examination: reduced to one third of the usual amount
b. Patent annual fees (1st year–10th year): reduced to one third of the usual amount
- For a PCT international patent application filed in the JPO in the Japanese language, (but no reduction if filed in the JPO in the English language)
a. Search fee (fee for international search report [ISR] made by the JPO) and transmittal fee: reduced to one third of the usual amounts
b. International preliminary-examination fee (voluntarily requested by an applicant in addition to the ISR): reduced to one third of the usual amount
c. International filing fee (fee for an international filing at the WIPO): refund equal to two-thirds of the filing fee paid
d. International preliminary-examination fee at the WIPO: refund equal to two thirds of the examination fee paid
It should be noted, however, among the fees for a PCT international patent application, the fees of c and d above that have been paid to the World Intellectual Property Organization (WIPO) are not actually reduced, but are refunded. Nonetheless, in terms of practical effect, the refunds constitute substantial reductions of the fees.
The parties that may obtain such refunds are the same as those listed in A above.
Also, if the JPO’s budgetary limit for such refunds for a fiscal year during the period of April 1, 2014, through March 31, 2018, is reached, refunds will not be given for the rest of that fiscal year.
Effective Period
The measure became effective on April 1, 2014, and is applicable to any patent application for which a request for substantive examination is filed during the period of April 1, 2014, through March 31, 2018, or to any PCT international patent application filed at the JPO and in the Japanese language during that same period. Patent annuities (1st year through 10th year) will be reduced for any patent application for which a request for substantive examination is filed during that same period.
Our Comments
The percentage of patent applications filed by SMEs and individuals in Japan is still limited, being less than one-half of that in the U.S.A. (12% in Japan and 25% in the U.S.A.). Because the burden of patent-application-related costs is relatively greater for SMEs and individuals than for large companies, the smaller parties are requesting governmental support relating to patent applications and the acquisition of patent rights. The measure is intended to respond to such requests.
Japan’s Ministry of Economy, Trade and Industry has said that the cost reductions effected by this measure will result in Japan having average filing costs lower than those in the U.S.A., Europe, China, and Korea, and are likely to promote an increase in the number of patent applications submitted in Japan by SMEs and individuals.
Prepared by Hiroshi HARI, Patent Attorney |
