| PCT, International Applications |
Referenced Items (393, 394, 395, 396, 397, 398, 399, 400, 401, 402, 403, 404, 405, 406, 407, 408, 409, 410, 411, 412, 413, 414, 415, 416, 417) |
(397) Arrangement between the United States Patent and
Trademark Office and the Japan Patent Office
Concerning Action of the Japan Patent Office
as an International Searching Authority
and Preliminary Examining Authority
under the Patent Cooperation Treaty
for International Applications Received by
the United States Patent and Trademark Office
Annex A
Outline of Technical and Procedural Matters
CONTENTS
1 CONTACT DETAILS
2 PAYMENT PROCEDURE AND FEES FOR ISA/IPEA SERVICES
3 PROCEDURE FOR TRANSMITTING DOCUMENTS BETWEEN THE USPTO AND THE JPO
4 DIRECT CONTACT BETWEEN U.S. APPLICANTS AND THE JPO
5 PROCEDURE FOR TRANSMITTING DOCUMENTS BETWEEN U.S. APPLICANTS AND THE JPO
1 Contact Details
1.1 Language of Communication: English
1.2 Contact Details for JPO's PCT Section ("JPO"):
Phone number: +81-3-3592-1308
Fax number: +81-3-3501-0659
E-mail: pa1a31@jpo.go.jp
1.3 Postal Address for the JPO:
Japan Patent Office
Office for International Applications under the PCT
3-4-3, Kasumigaseki, Chiyoda-ku, Tokyo 100-8915, Japan
1.4 Postal Address for the USPTO:
Director of the U.S. Patent and Trademark Office
P.O. Box 1450
Alexandria, VA 22313-1450
United States of America
1.5 Contact Details for the Receiving Office of the USPTO:
Phone number: +1 703 756 1399
Fax number: +1 571 273 8300
E-mail: rori.burch@uspto.gov
tracei.hale@uspto.gov
2 Payment Procedure and Fees for ISA/IPEA Services
For the most up-to-date information on the amount of fees applicable for
International Searching Authority (ISA) service, please refer to PCT
Applicants Guide International Phase Annex D 'JP,' and for the
International Preliminary Examining Authority (IPEA) information, refer to
PCT Applicants Guide International Phase Annex E 'JP.'
2.1 Classification of Fees:
Search fee: See PCT Applicant's Guide Annex D
Preliminary examination fee: See PCT Applicant's Guide Annex E
Handling fee: See PCT Applicant's Guide Annex E
Current fees can be found at: http://www.wipo.int/pct/en/fees/index.html
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2.2 Procedure for Remitting Fees:
Search fee: U.S. applicant ==> USPTO ==> JPO
Preliminary examination fee: U.S. applicant ==> JPO
Handling fee: U.S. applicant ==> JPO
Additional fees: U.S. applicant ==> JPO
* The method for payment of fees by U.S. applicants to the JPO is by Bank
Transfer or patent revenue stamps. (The patent revenue stamps are only
available in Japan.)
2.3 Acceptable Currency for Fee Payment:
USD for fee payment by the USPTO to the JPO
JPY for fees paid to the JPO by U.S. applicant
2.4 The JPO's Bank Account Details for Fee Remittance:
A. Bank account designated by the JPO for fee remittance by U.S.
applicants
Swift code: SMBC JP JT
Name of bank: SUMITOMO MITSUI BANKING CORPORARTION
BSB: 096
Account number: 173377
Name of beneficiary: JAPAN PATENT OFFICE
* Any expenses required by the bank(s) in connection with the remittance
are to be borne by the applicant. Therefore, whenever there is a shortfall
in the fee received by the JPO due to the various expenses required by the
bank(s), and the shortfall is not paid within the payment deadline, the JPO
intends to proceed with necessary procedures concerning unpaid prescribed
fees. The JPO does not intend to bear any responsibility with respect to
payment problems with the bank(s), which have arisen due to the applicant,
for any reason whatsoever.
B. Bank account designated by the JPO for fee remittance by the USPTO
Swift code: BOTKJPJT
Name of bank: The Bank of Tokyo-Mitsubishi UFJ, Ltd.
BSB: Toranomon branch 041
Account number: 2509552
Name of beneficiary: JAPAN PATENT OFFICE
** Upon the transfer of the search fee, the USPTO intends to send a
remittance report to the JPO by e-mail to the contact details indicated in
paragraph 1.3. The remittance report should include, at the minimum, the
international application number(s) and the international filing date(s) to
identify the case.
2.5 Additional Search Fees:
If the JPO considers that the international application does not comply
with requirement of unity of invention as set forth in the PCT regulations,
the JPO intends to invite the applicant to pay additional fees (PCT Article
17(3)(a)). The applicant may pay the additional fees directly to the JPO
(PCT Rule 40.2(b)) in a currency and mode acceptable to the JPO within one
month from the date of the invitation (PCT Rule 40.1(ii)). Acceptable
methods of payment are as follows:
(a) The applicant pays the additional fee in JPY to the designated bank
account indicated in 2.4.A, and submits the form "PAYMENT OF ADDITIONAL
FEE" to the JPO with the document which can confirm the payment (See
Attachment I)
(b) The applicant submits the form "PAYMENT OF ADDITIONAL FEE" to JPO with
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the indicated amount of patent revenue stamps. The patent revenue
stamps are only available in Japan (See Attachment I).
Where the international application lacks unity of invention under PCT
Article 34(3)(a) and the JPO invites the applicant to pay an additional fee
or to restrict the claims, the additional fee is to be paid directly to the
JPO. The above procedures should be applied mutatis mutandis for this
purpose.
2.6 Responsibility for the Cost of Remitting Fees or Refunds:
Remittance fee: sending party (U.S. applicant or the USPTO)
Postal fee: sending party (all postage is to be prepaid)
Refund: receiving party (U.S. applicant or the USPTO)
2.7 Refund Procedure:
A. Refund to U.S. applicant
Refund of payment under PCT Rules 16.3, 40.2, 57.4, 58.3, 68.3, and of
overpayment should be commenced upon request of the applicant. The
applicant is to submit a document which includes the following items to the
JPO directly (See Attachment II):
(a) the purpose of refund which the applicant requests;
(b) bank details (bank name, branch name and address, account number,
account name);
(c) the name of the applicant;
(d) the address of the applicant;
(e) the international application number; and
(f) the document that can confirm the payment.
*Refund should be remitted to the applicant in JPY. Any expenses
required by the bank in connection with the remittance are to be borne by
the applicant. Therefore the applicants are strongly recommended to consult
with the JPO before requesting for refund, since where the amount of refund
is less than bank expenses, the applicant cannot receive any refunds.
B. Refund to the USPTO
i. The JPO determines whether the paid fee exceeds the required amount.
ii. If so, the JPO notifies the USPTO.
iii. The USPTO intends to deduct that amount from its next monthly payment
to the JPO. If the refund is not executed as intended, the JPO intends to
ask the USPTO for assistance by contacting the Director of the Receipts
Accounting Division, in the Office of Finance (Mr. Matthew Lee) at
telephone number 01-571-272-6343 or e-mail address matthew.lee@uspto.gov
with any questions related to the above.
iv. Currency conversion fees for refunds are intended to be borne by the
U.S. applicant or the USPTO.
3 Procedure for Transmitting Documents between the USPTO and the JPO
3.1 Transmission of Search Copy:
Transmission frequency: once a week or as soon as possible after the
receiving office completes its formality examination.
The USPTO and the JPO intend to allow the International Bureau (IB) to
prepare and transmit search copies electronically ('eSearchCopy') to the
JPO on behalf of the USPTO.
The USPTO intends to notify the IB regarding information on the payment
of the search fee for electronically sending the Search Copy to the JPO.
Any sequence listing in electronic form which is furnished by the
applicant for the purposes of the international search (PCT Rule 13 ter.)
to the USPTO is to be promptly sent by the USPTO either directly, or via
the IB, to the JPO (PCT Rule 23.1(c)).
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3.2 Notice of the Receipt of Search Copy:
The JPO notifies the USPTO on paper via postal service or private
carrier within 15 days of receiving the search copy.
3.3 Notification of Excess Requests:
The USPTO intends to notify the JPO via email as soon as the number of
international applications had reached 98% of the quarterly application
limits, which are 300 applications having been received per quarter during
the first and second years, or 500 applications having been received per
quarter in the third, fourth, and fifth years.
So that the USPTO may quickly stop accepting such international
applications, the JPO intends to informally notify the USPTO via email that
the search will not be conducted by the JPO because either: (1) more than
8,400 requests have been received in the 5 year period from July 1, 2018 to
June 30, 2023; or (2) the above described quarterly application limits have
been reached.
Additionally, the JPO intends to officially notify the USPTO on paper
via postal service or private carrier within three weeks of receiving any
search copy that exceeds the above described 5 year or quarterly period and
for which the JPO does not intend to perform the international search by
using a copy of the form PCT ISA 224 for the applicant.
The JPO may retain a particular amount of excess requests received in
the current quarter of up to 10% of the above discussed quarterly limits
(i.e., 30 excess requests per quarter during the first and second years and
50 excess requests per quarter in the third, fourth and fifth years); the
excess requests contributing to the total number of requests received in
the next quarter.
The JPO intends to dispose securely of the search file if no response is
received within 1 month of notifying the USPTO.
The USPTO does not intend to notify information on the payment of the
search fee to the IB and forward the search fee for applications where the
JPO has provided notification of excess requests to the USPTO. Should the
USPTO have already sent the search fee, then the USPTO intends to withhold
an amount equivalent to the search fee from a subsequent payment due to the
JPO.
3.4 Sending of Receiving Office (RO) Forms to the JPO:
Where the USPTO issues any RO forms after receiving the international
application, the USPTO intends to promptly send, either directly or via the
IB, the copies of the RO forms (such as PCT/RO/106,107, and 111) and
attached documents (such as replacement sheets, if needed) to the JPO.
4 Direct Contact between U.S. Applicants and the JPO
4.1 Submission Procedure and Method of Making a Demand:
The JPO intends to act as a competent IPEA for any international
application filed with the USPTO which meets the following conditions
mentioned in the Agreement between the JPO and the International Bureau:
(a) The international search was performed by the JPO;
(b) The applicant chooses the JPO as the competent IPEA; and
(c) The applicant of the international application submits the Demand (form
PCT/IPEA/401) within the deadline stipulated under PCT Rule 54bis.
Paper-based demands (form PCT/IPEA/401) are to be submitted from the
applicant to the IPEA/JP directly by registered mail or via courier
service. E-mail or facsimile submissions are not acceptable. Postal address
for the JPO: as at paragraph 1.3 of this Annex.
*Applicants that register for ePCT private services may submit the
demand to the JPO using the 'Submit Chapter II Demand' Action through which
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the IB forwards the Demand to IPEA/JP under PCT Rule 59.3(b).
4.2 Procedure for Notifying Applicants that a Demand has been Received:
The JPO notifies applicants within three weeks of receiving the demand.
4.3 Payment Procedure for Examination and Handling Fees:
The fees can be paid by one of the following methods which are
acceptable by the JPO. (Rule 57.1, 58.1 (c))
(a) The applicant pays the international preliminary examination fee and
handling fee in JPY to the designated bank account (indicated in 2.4.A),
and submits the form "PAYMENT OF FEES FOR PRELIMINARY EXAMINATION"** to the
JPO with a document that can confirm the payment. **See Attachment III
(b) The applicant submits the form "PAYMENT OF FEES FOR PRELIMINARY
EXAMINATION"** to the JPO with the indicated amount of patent revenue
stamps. The patent revenue stamps are only available in Japan. **See
Attachment III
5 Procedure for Transmitting Documents between U.S. Applicants and the
JPO
5.1 Transmission of Various Notices and Invitations from the JPO to U.S.
Applicants:
To be sent via the postal service to the postal address specified in the
request or the demand.
5.2 Response of U.S. Applicants to the JPO's Invitations:
U.S. applicants should respond via postal service within the period
specified in the invitation, pursuant to the various PCT regulations which
are applicable, this Arrangement places no new burden on the applicant that
they do not already have under the PCT. E-mail or facsimile submissions are
not acceptable.
Time frame for responding to an invitation: normally one month from the
mailing date.
Time frame for responding to written opinions (of an international
preliminary examination): normally two months from the mailing date (time
limits can be extended at the examiner's discretion as long as the due date
for an international preliminary examination report is not affected, or
shortened at the examiner's discretion if the due date is affected).
5.3 Method of Communication between the JPO and U.S. Applicants:
Language: English
Method: e-mail (preferred), postal service, facsimile
[1454 OG 54]