Novelty
The claimed invention is considered the same as technology known or disclosed before the filing date (earliest priority date).
Our response: We compare the cited disclosure with each claim feature and identify any technical differences.
PCT NATIONAL PHASE · JAPAN
Japanese Patent Examination and Office Action Responses
When the JPO issues an Office Action, we review the objections and cited references, assess the prospects for allowance, and recommend a response that reflects your objectives for the application.
Japan Patent Office, Tokyo · Photo: Rs1421 (2012) · CC BY-SA 3.0 · Cropped
Common Japanese Objections and Response Examples
An Office Action sets out the examiner’s objections and gives the applicant an opportunity to respond with arguments and/or amendments. Common objections include the following.
The examples are hypothetical illustrations. Other objections may arise, and several can be raised together.
Inventive Step
The invention is considered obvious to a person skilled in the art in light of existing technology. Novelty alone does not establish inventive step.
Our response: We examine the reason for combining references, technical compatibility, and relevant effects.
Clarity
The claim wording or the subject matter for which protection is sought is unclear.
Our response: We check definitions and terminology and consider an explanation or supported wording amendment.
Support Requirement
The scope sought in the claims is not adequately supported by the invention described in the specification.
Our response: We assess whether the description and common general knowledge support the full scope claimed.
Enablement
The description does not sufficiently explain how a skilled person can carry out the invention.
Our response: We review the disclosure and knowledge at filing to determine whether the invention can be carried out.
Medical Methods and Industrial Applicability
In Japan, methods of surgery, treatment, or diagnosis of humans are treated as lacking industrial applicability.
Our response: We examine the claim category. Human medical methods face restrictions; medicines and devices are not categorically excluded.
Illustrative examples and legal references
Novelty
Example: all elements of the claimed device are said to be disclosed in a single cited document.
Our Response Work
We compare the actual disclosure with the claim, check differences in features or conditions, and examine the examiner’s interpretation. Where appropriate, we consider incorporating a feature supported by the original disclosure.
Inventive Step
Example: the examiner combines the device in document A with the control method in document B.
Our Response Work
We assess motivation to combine, technical compatibility, circumstances weighing against the combination (including teaching away), and relevant effects. Any proposed amendment is reviewed for support and its impact on scope.
Clarity
Example: “a sufficiently high temperature” is undefined, or a component has inconsistent names across the documents.
Our Response Work
We check definitions, terminology, and relationships against the source text and consider an explanation or a supported wording amendment. Translation-related issues are checked against the original.
Support Requirement
Example: the experiments and explanation concern one particular material, but the claim covers a broad class of materials.
Our Response Work
We consider the disclosure as a whole and common general knowledge, then develop arguments explaining technical support or consider an appropriate amendment. Matching terminology alone is not sufficient.
JPO: support requirement examination guidelines (Japanese) ↗
Enablement
Example: essential manufacturing conditions are missing and the stated procedure is said not to reproduce the product.
Our Response Work
We examine the original disclosure and common general knowledge at filing and consider supporting evidence where appropriate. Missing original technical content cannot necessarily be supplied later through amendment.
Medical Methods and Industrial Applicability
Example: a claim directly covers treating a patient by administering a drug.
Our Response Work
Medicines and medical devices are not categorically excluded. We review the actual claim and consider permissible subject matter and claim forms within the original disclosure and applicable amendment limits.
JPO: medical methods and industrial applicability examination guidelines (Japanese) ↗
From Assessment to Response
- 01AssessObjections, citations, and prospects
- 02DiscussArguments, amendments, and scope
- 03RespondApproved response within the deadline
Clarification with the Examiner by Email or Telephone
Where clarification is useful, we contact the examiner primarily by email or telephone. We organize the technical issues and proposed changes, then prepare the written response with your approval.
A discussion does not replace the written response or its deadline and does not guarantee allowance.
Fees for Requesting Examination
SMEs, individuals, and universities that meet the applicable requirements may qualify for a reduction or exemption of JPO examination fees. Qualifying SMEs pay 1/2 of the standard fee; qualifying small enterprises and SME startups pay 1/3.
We are familiar with the eligibility rules and application procedures for fee reductions. We check the available options and handle the application so that an overlooked reduction does not lead to unnecessary official fee costs. Eligibility and further cost-saving options →
Example: 20 claims, a non-JPO international search report
JPY 124,000 + 20 × JPY 3,600 = JPY 196,000. This is the examination-request official fee, separate from the JPO national phase entry fee of JPY 14,000 and professional fees.
Official fee categories and claim-count calculation
For international applications filed on or after April 1, 2019, the standard official examination fees are as follows.
| International search report category | Official examination fee |
|---|---|
| Established by an ISA other than the JPO | JPY 124,000 + JPY 3,600 per claim |
| Established by the JPO | JPY 83,000 + JPY 2,400 per claim |
| Ordinary rate where the above categories do not apply | JPY 138,000 + JPY 4,000 per claim |
We confirm the claim count when requesting examination, applicable category, and eligibility for reductions before calculating the formal amount. Professional fees for related review or amendments are separately quoted with the scope of work.
Fees for Office Action Responses
We quote according to the objections, citations, technical analysis, and amendment work. Appeals, divisional applications, and further responses are separately considered. Scope and costs are confirmed before work begins.
If a clear mistranslation is confirmed in a translation prepared by our firm, its correction carries no additional translation fee. Other amendments and Office Action work are discussed and quoted separately. If filing a correction involves JPO official fees or related professional fees, we confirm those costs with you in advance.
Request a Quote
Tell us the WO number and your objectives. We will review the information and explain the next steps.
Request a quote →General information, reviewed October 15, 2026. Procedures and fees depend on the application and may change. We confirm the current position before accepting filing instructions.
JPO: national phase · JPO: fees · WIPO