Applicants wonder about filing pre-examination amendments (for example, to delete claims) for the Japanese national stage of their Patent Cooperation Treaty (PCT) international applications. Filing international phase amendments (under Article 19 or Article 34 of the Patent Cooperation Treaty [PCT]) is optional in Japan's national phase. Recommended procedures depend on the kind of amendment one wishes to file.
How can I file my Article 19 Amendment for the Japanese national phase of a PCT application?
A PCT Article 19 Amendment is not automatically incorporated into the application in the Japanese national phase. The JPO does, however, accept the content of an Article 19 Amendment for examination in the national phase in place of a translation of the claims filed originally in the international application. The best way to amend the national phase claims according to the Article 19 Amendment is to submit its translation when filing the translation of the PCT application.
How can I file my Article 34 Amendment for the Japanese national phase of a PCT application?
Like an Article 19 Amendment, an Article 34 Amendment (of claims, description, and/or figures) is optional for an application entering the Japanese domestic phase. If it is to be filed, we generally recommend filing the Amendment not as a translation of the Article 34 Amendment per se with the translation of the PCT application, but as a Preliminary Amendment–and that when filing a Request for Examination.
Why? By taking advantage of the time available until the Request for Examination becomes due in Japan (i.e. three years from the date of the international filing date), it is possible to monitor the examination progress in other countries and plan the best way to amend the specification, claims, or drawings of the application in Japan with a Preliminary Amendment. This method is also generally simpler and more cost-effective.
How can I make any other amendment to the Japanese national phase of a PCT application?
A Japanese national phase of an international application may be amended, in addition to or instead of, any translation of an Article 19 or Article 34 Amendment. This should be done by filing a Preliminary Amendment between the filing of the Japanese translation of the application and the filing of the Request for Examination.
So, what is the right procedure for you? Consult with a Japanese patent attorney for more details.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
