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Q25. Nationalizing a PCT Application

Q25. Nationalizing a PCT Application
 (1) When can a national phase application be filed in Japan?
 (2) A PCT application was filed in the U.S. Patent and Trademark Office. Please explain the procedure involved in commencing the national phase in Japan.

A25. (1) A national phase application must be filed within 30 months from the priority date, irrespectively of the filing of a demand under Chapter II of PCT has been filed.
 (2) It is required to file a petition for commencing a national phase in Japan and a 15
Japanese translation of each of the specification, claims, abstract and, if any English legends are contained in drawings, those drawings of the international (PCT) application as originally filed.
 The petition of a national phase application must be filed within 30 months from the priority date, but you can file within two months from the filing date of petition about a translation when the petition is filed within two months before the termination date.
 The Japanese translation of the Amendment filed and entered under Art.19 and/or Art.34 of the PCT can also be filed, but this is not mandatory. If the applicant wishes the national phase application to be examined with the amended claims, it should be necessary to submit the Japanese translation of the Amendments under Art.19 or 34 of the PCT.
 However, please note that an introduction of new matter is prohibited.
 Further, when the applicant amended under Art.19 of the PCT, the applicant can file a translation of the amended claims instead of a translation of claims originally filed in the international (PCT) application.
 It is recommendable to submit the Amendment when a request for examination is filed, after having carefully reviewed the Amendment in respect of whether or not the amended matter would be considered as introducing new matter under our patent practice. By this, you can save unnecessary cost for translation of the Amendment at the time of filing the national phase application in Japan. In addition, you can take into the consideration, any change in technical importance or any new prior art found in relation to the claimed invention up to the time when a request for examination is filed, which situation may affect your claiming in the Japanese application.
 The original applicant of the national phase application in Japan must be the inventor(s) or, if the invention was assigned, the assignee(s) who is named in the petition. We recommend, therefore, that when you instruct your Japanese associate to file a national phase application in Japan, you send a copy of the request of the international application and documents to be translated together with your instruction.