The Japanese Patent Office has announced that the fees it charges for requesting examination of Japanese Patent Applications will double for all applications filed after April 1, 2004. Application fees will, however, be reduced for applications filed after that date. Additionally maintenance fees for the first to ninth (but not subsequent) years are reduced for patents granted on applications for which examination is requested on or after April 1, 2004. However, the maximum possible reduction in filing and maintenance fees is only about half of the increase in examination fees. Therefore applicants for Japanese Patents could be well advised to file new applications (including new Patent Cooperation Treaty applications designating Japan) while the current lower fees are still in effect (i.e. before April 1, 2004). By proceeding in this way it is possible to take advantage of both lower examination and maintenance fees which should more than compensate for a higher application fee.
In Japan, both the Examination Fees and the subsequent Annual Maintenance Fees are based on the total number of claims (i) active in the application (when requesting Examination) or (ii) which went to grant (when paying annual Maintenance Fees). The Official Fees paid over the life of a Japanese Patent can be very expensive, particularly if the application and patent each have large numbers of claims. Doing an analysis of the costs for obtaining a Japanese Patent is severely complicated by the fact the applicant can request examination early on or can defer filing an examination request for three years from the filing date (or in the case of a PCT application from the international filing date), by the fact that the time taken by the Japanese Patent Office to examine patent applications tends to vary rather widely and by the fact that many applicants choose not to pay Maintenance Fees for the maximum patent term. So, while the timing of paying the fee for requesting examination is a bit of a judgement call when consideration is given to trying to lower the overall expense of a Japanese Patent, it is clear that reducing the number of claims in a Japanese Patent Application will certainly reduce the cost of a Japanese Patent over its lifetime as will filing new applications prior to the April 1, 2004 date noted above. Of course, the lifetime of
a Patent, whether Japanese or of any nationality, is foreshortened by failing to pay a Maintence Fee since such action causes the Patent in question to abandon (i.e. to enter the public domain).
When consideration is given to the value of the invention, a judgment of when it might be in the applicant’s best interest to request Examination of a Japanese patent application relating to it becomes a very complex issue indeed. Of course, if the invention is truly valuable, then the fees charged by the Japanese Patent Office may be of relatively low concern. But experience tells us that for companies which have large portfolios of patents, the lifetime costs of Japanese (and of other foreign) patents become a major consideration and this “option” that applicants now have to file new applications before April 1, 2004 in order to save some expense downstream should be given urgent attention.