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Amending Claims on Entry into Japan from PCT

1. Why Consider Claim Amendments When Entering Japan?

Japan offers applicants a valuable opportunity to amend claims at the time of entering the national phase from a PCT application. Unlike some jurisdictions, Japan permits substantial claim amendments — including narrowing or clarifying the scope — to better align with local patent practice, commercial strategy, or prior art.

2. Strategic Timing: Entry vs. Article 34 Amendments

Amendments can be submitted at the time of national phase entry, or previously under Article 34 during international phase. However, submitting amendments during national phase entry gives applicants greater control and may be more cost-efficient if localized advice is desired. Claim strategies can also incorporate JP-specific prosecution trends.

3. Filing Formalities for Amended Claims

  • Filing Deadline: 30 months from priority (with possible restoration)
  • Documents Required: Japanese translation reflecting amendments, bibliographic data, applicant info
  • Amendment Scope: Permissible to narrow or correct without adding new matter

4. Why Amend? Top Benefits for Applicants

There are several reasons why applicants choose to amend claims upon entering Japan:

  • To preempt likely rejections based on known JP prior art
  • To better match actual commercial products or licensing interests
  • To optimize clarity and conciseness according to JPO preferences
  • To align with claim sets filed in other countries (e.g., US, EP)

5. Cost and Support Services

Origami International Patent Firm offers fixed and transparent pricing:

  • Flat Filing Fee: JPY 43,000 – includes amendment filing and formalities
  • Translation Fee: 30 JPY/word (amended content included)
  • Legal Review: Optional claim refinement with a Japanese patent attorney
Learn more at: Origami’s PCT/Paris Entry Support

6. Clients We Assist

From global IP law firms to SMEs and startups, we work with a wide range of international clients. Whether you're filing directly or through an agent, our team ensures the claim amendments are accurate, strategic, and JPO-compliant.

7. Frequently Asked Questions (FAQ)

Can I amend claims during national phase entry into Japan?

Yes, amendments can be filed alongside the national phase request, provided they do not introduce new matter.

Do you provide claim drafting support?

Yes, we offer claim refinement and drafting support by Japanese patent attorneys familiar with JPO examination trends.

What if I already filed an Article 34 amendment?

JPO accepts the latest version on file unless new amendments are submitted. You may still amend upon entry.

How do you ensure translation reflects amendments?

Our translators work from the amended claim set and cross-check for technical and legal accuracy.

Contact Information

6-23-4, Jingumae, Shibuya-ku, Tokyo-to 150-0001, Japan
+81-50-6875-3628
info@origamipatentfirm.com
https://origamipatentfirm.com/en/origami-international-patent-firm-assist-pct-or-paris-extension-into-jp/
*We would appreciate it if you could set up the domain for @origamipatentfirm.com, regarding the above your email address. If not, our email might end up in the spam folder.

FYI: Competitive Fee Schedule

Compared to a typical Japanese patent firm, Origami International Patent Firm offers highly competitive and transparent pricing tailored to overseas applicants.

This means that applicants working with Origami can typically expect 50–70% total cost savings compared to conventional Japanese firms, without compromising on quality, responsiveness, or technical accuracy.

Item For Patent Application Typical Firm (Service Fee) Origami Firm (Service Fee)
PCT or Paris Extension into JP or
Regular Filing in JP 		100,000 JPY All-inclusive price 43,000 JPY
(about 300 USD)
Filing an amendment based on Art. 19 30,000 JPY
Filing an amendment based on Art. 34 30,000 JPY
Filing a voluntary amendment 30,000 JPY
Claiming priority to one or more prior applications 10,000- JPY
Filing a request for examination 20,000 JPY 15,000 JPY
(about 100 USD)
PPH (excluding a request for examination) 80,000 JPY 60,000 JPY
(about 400 USD)
Filing a priority certificate in the absense of DAS code (*1) 20,000 JPY 15,000 JPY
(about 100 USD)
Translation of each procedural document (*2) 40 JPY/EN Word 30 JPY/EN Word
Response to an Office action (*3) 200,000 or more JPY Workload A: 40,000 JPY (*4)
Workload B: 80,000 JPY (*4)
Workload C: 120,000 JPY (*4)
Workload D: 160,000 JPY (*4)
Workload E: 180,000- JPY (*4)
Filing a Divisional Application 80,000 JPY 60,000 JPY
(about 400 USD)
Reporting a notice of allowance and paying the registration fee (1st to 3rd year in lump sum as registration fee) 50,000 JPY 28,000 JPY
(about 180 USD)
Payment of annuity 30,000 JPY 15,000 JPY
(about 100 USD)

*1. Regarding "Filing a priority certificate in the absence of DAS code", the certificate and DAS code are issued by the Patent Office after a precedent application was filed. Furthermore, one of them is required only when you claim a priority based on the precedent application in Japan. In other words, they are not required if there is no precedent application.

*2. Regarding "Translation of each procedural document", we will charge a translation fee regarding specifications including a description, claims, abstract, and drawings which are needed to file with the JPO. Regarding an office action, we will charge the translation fee thereof if you request us to translate it from Japanese to English for studying it on your side. In other words, we do not charge when you prefer not to translate the office action.

*3. Response to an office action issued by the JPO, an amendment and argument are prepared for responding to it and for arguing that the concerned application should be registered. Please note that the office action is not necessarily issued, it is issued only when there is the reason for rejection regarding a registration of a Patent/Design/Trademark application, the reason being Novelty, Inventive Step, and the like. In other words, we do not charge when there is no office action or when you prefer not to respond to the issued office action.

*4. Regarding our service fee for responding to the office action, it is specified based on from "Workload A" to "Workload E". These workloads depend on degree of difficulty for overcoming the reason for rejection and/or the number of the reasons described therein.
The "Workload A" is, for example, a task of deleting a part of claims;
The "Workload B" is, for example, a task of preparing a comment for overcoming the office action;
The "Workload C" is, for example, a task of preparing and filing a response to the office action;
The "Workload D" is, for example, a task of preparing a comment for overcoming the office action and filing a response thereto; and
The "Workload E" is, for example, an additional or extra task in addition to the "Workload D".

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