The Japanese Patent Law was amended this spring.  Some of the amendments are already in force and the rest will be go into effect by April 1, 2004.  Specifically, these amendments involve the following major revisions:

• Revision of Official Fees (effective April 1, 2004)
• Refund System of the Fee for Request for Examination (October 1, 2003)
• Abolishment of Opposition System and Establishment of New Invalidation Appeal System (January 1, 2004)
• Revision of Complaint Procedure at the Tokyo High Court (January 1, 2004)
• Unity of Invention (January 1, 2004)

I. Revision of Official Patent Fees

• Application fee:  REDUCED
• Request for Examination Fee:  RAISED
• Annuity:  REDUCED

The Japanese Patent Office (JPO) is set to change the official fees related to patent.  The JPO’s official explanation of the purpose of the fee revision posted in its Web site is: “By decreasing the application fee and the annuity, and increasing the fee for request for examination, thereby reducing the total cost per patent application, applicants would be provided with more incentives to make strategic efforts.” 

Indeed, the total cost certainly would be reduced if a patent is finally granted and maintained for more than 7 to 9 years.  On the contrary, if a patent is not granted after filing a Request for Examination, the cost will significantly increase.  The rationale behind the revision of the official fees primarily seems to be the JPO’s drive to cut back the massive and growing number of applications for Requests for Examination that rapidly led to an unacceptably large loss in examination speed, frustrating the JPO for years.  In addition to some vigorous IP promotional activity in some technical fields, the due period for filing a Request for Examination is shortened from 7 to 3 years with respect to patent applications filed on or after October 1, 2001.  The revision, however, inadvertently set off a negative outcome of an aggressive increase in the applications for Request for Examination that propelled the JPO to introduce an urgent exhortation that a more strategic perspective be used in filing applications, stressing the need and benefit of a “strategic filing”.

Revised Official Fees:

(JPY per application) Current Fee Revised Fee Application Fee 21,000 16,000 Fee for Request for Examination 84,300 (plus 2,000/claim) 168,600 (plus 4,000/claim) Annuity 1st to 3rd 4th to 6th 7th to 9th 10th to 25th 13,000 (plus 1,100/claim) 20,300 (plus 1,600/claim) 40,600 (plus 3,200/claim) 81,200 (plus 6,400/claim) 2,600 (plus 200/claim) 8,100 (plus 600/claim) 24,300 (plus 1,900/claim) 81,200 (plus 6,400/claim)

The above table shows the new official fees coming into effect on April 1, 2004.  Please note that the Fee for Request for Examination has doubled.  Other official fees have decreased (*the annuities are to be paid after the patent grant, no maintenance fee is required during the prosecution stage). 

As can be seen, the new charge for each additional claim is a force to be reckoned with. The implication of the per-claim fee rise is that applicants will need to get more rigorous and watchful about the number of claims they want to file and to try to prune away superfluities to keep the claims to the effective minimum when filing a Request for Examination.  If the number of claims can be cut for example from 60 to 20, the new fee for Request for Examination will stay almost on par with the cost based on the current fee. 

To this end, the multi-dependency format that is acceptable and widely practiced in Japan is worthy of note as a practical way that can make a difference in keeping the cost down.  In this format, the actual numbers of claims are charged irrespective of the dependencies. 

Since other official fees are to be discounted, re-engineering a patent portfolio with a strategic focus on curtailing the number of claims by adeptly drafting and/or amending claims can bring the total cost down without having to slash the number of applications to be filed. 

Estimation of Total Cost in Typical Case:
Number of claims 7.6; Annuity 1st to 9th (average at the JPO)

(JPY per application) Current Fee Revised Fee Application Fee 21,000 16,000 Fee for Request for Examination 99,500 199,000 Annuity 356,200 166,600 Total 476,700 381,600

The above table is an average-case analysis by the JPO to give a rough estimation of the total cost.  The JPO explains that the total cost can be reduced significantly if the patent is granted.  In addition, the JPO says that downsizing the number of claims through “strategic efforts” of sifting is remarkably conducive to successful cost reduction.