The course of issuance of the search report by the Japan Patent Office (JPO) and how to know the Office schedule to start on the substantive examination on a specific case

For every Japanese patent application (incl. Japan designated phase of an international PCT application), a search for the relevant prior art will automatically (no request or search fee is required) be carried out at the Formality Examination Division of the JPO (outsourcing to outside organization, such as IPCC - Industrial Property Cooperation Center, established 1985) soon after the application is found to pass the formality check, but before the application is forwarded to the Substantive Examination Division.  This will serve a preparation of the substantive examination. 

After a patent application is laid-open (published), any person (also “anonymous” or “straw-man”) may offer the information regarding the patentability by submitting an Information Order Form along with prior art documents (patents or non-patents, printed publications, certified experimental results or materials showing that the claimed invention is known or public use, etc.).  In the Information Order Form, the explanation of the pertinency (relevancy to the patentability) of the cited art may be described to present a new question of patentability as to the claims.  The Examiner who substantially examines the application, will not be bound by the information as provided (there is no obligation for the Examiner to consider the information), and generally how the information has been utilized for the examination is not informed to the person who offered the information.  The provided information itself may be available to any person who will inspect the official file-wrapper of the application.

Such a preparatory search or the information offered by third parties will facilitate the substantive examination of an application to which a Request for Examination is filed, and also reduce the Substantive Examiner’s workload.  Needless to say, it is the Substantive Examiner who will finally consider the relativity to the patentability based on the searched prior art reference(s) or the prior art newly found by him/her.

For the purpose of delaying the search, we have no measure to be taken to stop the JPO (or IPCC) from carrying out a prior art search.

Once a Request for Examination is filed, the substantive examination will be started to the application by the issuance of the first examiner’s report (a first Office Action ‘Notification of Reasons for Rejection’ or a Decision of Grant).  There is no system at the JPO to issue or publish the search report separately.  Instead, the result of a prior art search is firstly mentioned in a first Office Action as ‘List of Cited Reference(s)’ as far as the reasons for rejection relies thereupon, and any other person will know the result of a prior art search by inspecting of the official file-wrapper at the JPO after the first Official Action issued.

Currently, the applicants have to wait an average of two (2) years from requesting an examination until the substantive examination is started (e.g., the issuance of a first Office Action or a Decision of Grant).  If the applicant or inventor wishes to know the Office schedule as to when the substantive examination will start on his/her patent application, he/she can request his/her appointed Japanese patent attorney to send a Inquiry Letter to the JPO.  In a few weeks after sending the letter, the JPO will inform the scheduled date (month) with respect to the application questioned.

by R. Enomori