29 July 2014Jurisdiction reportsHiroshi Hari

Fees reduced for SMEs

A measure to reduce fees for small and medium-sized enterprises (SMEs) for requests for substantive examinations and annuities, set out in the Industrial Competitiveness Enhancement Act that was adopted on December 4, 2013 by Japan’s Diet, came into effect on April 1, 2014. The measure will remain in effect until March 31, 2018.

As a result, the fees for an SME for (1) a request for a substantive examination of a patent application; and (2) annuities for the first year through to the tenth year of a patent, have been reduced from about JPY380,000 ($3,720) to about JPY130,000 ($1,272).

For a Patent Cooperation Treaty (PCT) international application, the search fee, transmittal fee, and the international preliminary examination fee were reduced from about JPY110,000 ($1,076) to about JPY35,000 ($342).

Parties qualifying for a reduction of fees

A party that is doing business in Japan or in a foreign country and meets any of the following requirements is eligible for a reduction of the above-mentioned fees:

1. A small, single-owner business (20 employees or fewer, or five employees or fewer if the company is in a wholesale or retail sector or service sector);

2. A single-owner business that has been in operation for less than 10 years;

3. A small enterprise (juridical person) (20 employees or fewer, or five employees or fewer if the company is in a wholesale and retail sector or service sector);

4. An enterprise capitalised at JPY300 million ($2.9 million) or less, and in operation for less than 10 years.

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.

Specific fees reduced

1. 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 (first year to tenth year): reduced to one third of the usual amount.

2. For a PCT international patent application filed in the Japan Patent Office (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 amount;

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 World IP Organization [WIPO]): refund equal to two thirds of the filing fee paid;

d. International preliminary examination fee at WIPO: refund equal to two thirds of the examination fee paid.

However, among the fees for a PCT international patent application, the fees of c. and d. that have been paid to the WIPO are not actually reduced, but are refunded. Nonetheless, in terms of their practical effect, the refunds constitute substantial reductions in fees.

The parties that may obtain such refunds are the same as described above.

Also, if the JPO’s budgetary limit for such refunds for a fiscal year during the period April 1, 2014 through to March 31, 2018 is reached, refunds will not be given for the rest of that fiscal year.

"Patent annuities (first year through to tenth year) will be reduced for any patent application for which a request for substantive examination is filed during that same period."

The measure is applicable to any patent application for which a request for substantive examination is filed during the period April 1, 2014 through to 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 (first year through to tenth 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 less than half the proportion in the US (12 percent in Japan and 25 percent in the US), and the outright number of patent applications by SMEs and individuals is still limited. Because the burden of patent application-related costs is relatively greater for SMEs and individuals than for large companies, the smaller parties are requesting government support. This 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 US, Europe, China or Korea, and are likely to promote an increase in the number of patent applications submitted in Japan by SMEs and individuals.

Hiroshi Hari is a patent attorney at Kyosei International Patent Office. He can be contacted at: info@kyosei.or.jp

Already registered?

Login to your account

To request a FREE 2-week trial subscription, please signup.
NOTE - this can take up to 48hrs to be approved.

Two Weeks Free Trial

For multi-user price options, or to check if your company has an existing subscription that we can add you to for FREE, please email Adrian Tapping at atapping@newtonmedia.co.uk