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August 6, 2008 Japan Patent Office |
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| “The Bill for Partial Amendments to the Patent Act, etc.” was passed in the 169th ordinary session of the Diet and promulgated on April 18, 2008. (Act No. 16 of 2008. Hereinafter referred to as “the 2008 Revision Act.”) By the 2008 Revision Act, the current 30-day time limit for filing a request for an appeal against an examiner’s decision of refusal is extended to “3 months” from the date when the certified copy of the examiner’s decision has been served (Patent Act, Design Act and Trademark Act). Additionally, when filing a request for an appeal against an examiner’s decision of refusal under the revised Patent Act, the amendment of claims, descriptions or drawings is to be done at the same time (as the request for appeal). Currently, the amendment of claims, descriptions or drawings can be done “within 30 days from the date of the request for appeal.” The time limit for filing a request for an appeal against an examiner’s ruling to dismiss an amendment (Design Act and Trademark Act) will also be extended to 3 months. (The 2008 Revision Act shall come into effect on the date specified by a Cabinet Order within a period not exceeding one year from the day of promulgation.) In this connection, the Japan Patent Office (JPO) has been considering the time limit for filing a request for an appeal for an overseas applicant and has made the following draft proposal. |
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| 1. Current Operation | ||||||||||||||||||||
| The time limit for filing an appeal against an examiner’s decision of refusal (Patent Act, Design Act and Trademark Act) and the time limit for filing an appeal against an examiner’s ruling to dismiss an amendment (Design Act and Trademark Act), each of which is normally 30 days under the current Act, is extended to 90 days for overseas residents (60 days are added). The time limit for filing an appeal against an examiner’s decision of refusal (Patent Act, Design Act and Trademark Act) and the time limit for filing an appeal against an examiner’s ruling to dismiss an amendment (Design Act and Trademark Act), each of which is normally 30 days under the current Act, is extended to 90 days for overseas residents (60 days are added). This operation is based on Article 4 of the Patent Act (including the case where it is applied mutatis mutandis pursuant to Article 68(1) of the Design Act and Article 77(1) of the Trademark Act), and is carried out ex officio for all applicable cases without exception. | ||||||||||||||||||||
| 2. Basic Concept for Changing Operation Guidelines and Outline of the Changed Operation Guidelines | ||||||||||||||||||||
| a. General Principle | ||||||||||||||||||||
| By the 2008 Revision Act, the time limit for filing an appeal against an examiner’s decision of refusal (Patent Act, Design Act and Trademark Act) and the time limit for filing an appeal against an examiner’s ruling to dismiss an amendment (Design Act and Trademark Act) will be extended to “3 months,” which is considered to be a period of sufficient length to guarantee that all applicants are able to consider whether to file a request for an appeal. Therefore, in principle, an extension of the time limit is no longer considered to be necessary for all cases concerning patents, designs, and trademarks. | ||||||||||||||||||||
| b. Time Limit for Filing a Request for an Appeal against an Examiner’s Decision of Refusal of a Patent Application | ||||||||||||||||||||
| In the patent system (but not in the design and trademark systems), the “time limit or period for amendment” of claims, etc. will be changed by the 2008 Revision Act to be “at the same time of filing the request for appeal.” Therefore, though the general principle is as described above, when making a decision on the operation concerning the extension of time limit for filing an appeal under the revised Patent Act, it should be taken into account that such a time limit will come to have a meaning as a period during which applicants consider how to make amendment of the claims, etc. Our proposal is as follows: | ||||||||||||||||||||
| Currently, a 120-day period (“30 days” for filing a request for an appeal, “60 days” for extension and “30 days” for submitting amendments) is guaranteed for overseas residents to consider how to make amendments. It means that even though the time limit for filing a request for an appeal will be extended to “3 months” by the 2008 revision Act, if there is no further extension of the time limit, it will be a drawback for overseas residents in considering necessary amendments. Therefore, the time limit for filing an appeal against an examiner’s decision of refusal of a patent application will be additionally extended “1 month” for overseas residents under the proposed operation. | ||||||||||||||||||||
| * | By the 2008 Revision Act, the time limit for filing a request for an appeal against an examiner’s decision of refusal of “a request for the registration of extension of a duration of a patent right” will be extended to “3 months” as well. However, in this case, the applicant need not consider amendments of claims, etc. Therefore, the time limit won’t be additionally extended under the proposed operation. | |||||||||||||||||||
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| c. Time Limit for filing an Appeal under the Design System and the Trademark System | ||||||||||||||||||||
| For the design system and the trademark system, there is no time limit for submitting amendments as in the patent system; i.e., in the two systems, amendments can be submitted at any time as long as the application or the appeal case is pending examination or appeal (Article 60-3 of Design Act and Article 68-40 of Trademark Act). The 2008 Revision Act doesn’t change the provisions about amendments. Therefore, subject to the general principle above, the time limit for filing an appeal will not be additionally extended. | ||||||||||||||||||||
| Ref. 1 Proposal of Time Limits for Filing Appeals | ||||||||||||||||||||
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| Patent: | ||||||||||||||||||||
| · | Appeals against examiner’s decision of refusal | |||||||||||||||||||
| (excluding appeals against an examiner’s decision of refusal of “a request for the registration of extension of a duration of a patent right”) | ||||||||||||||||||||
| Design & Trademark: | ||||||||||||||||||||
| · | Appeals against examiner’s decision of refusal | |||||||||||||||||||
| · | Appeals against examiner’s ruling to dismiss an amendment | |||||||||||||||||||
| Ref. 2 Related Articles (Before revision under 2008 Revision Act) | ||||||||||||||||||||
| · | These are not official translations. | |||||||||||||||||||
| Patent Act | ||||||||||||||||||||
| Article 4 (Extension of time limits, etc.) | ||||||||||||||||||||
| The Commissioner of the Patent Office may, upon request or ex officio, extend the period provided for in Articles 46-2(1)(iii), 108(1), 121(1) and 173(1), for a person in a remote area or an area with transportation difficulty. | ||||||||||||||||||||
| Article 121 (Appeal against examiner's decision of refusal) | ||||||||||||||||||||
| (1) | A person who has received an examiner's decision to the effect that an application is to be refused and is dissatisfied with the examiner’s decision may file a request for an appeal against the examiner's decision of refusal within 30 days from the date on which the certified copy of the examiner's decision has been served. | |||||||||||||||||||
| Article 17-2 (Amendment of Description, Claim(s) or Drawing(s) attached to the application) | ||||||||||||||||||||
| (1) | An applicant for a patent may amend the description, claim(s), or drawing(s) attached to the application, before the service of the certified copy of the examiner's decision that a patent is to be granted. However, after the receipt of a notification under Article 50, an amendment may only be made only in the following cases: | |||||||||||||||||||
| (i) - (iii) | ||||||||||||||||||||
| (iv) | where the applicant files a request for an appeal against an examiner's decision of refusal and said amendment is made within 30 days from the date of said request for said appeal. | |||||||||||||||||||
| Design Act | ||||||||||||||||||||
| Article 68 (Mutatis mutandis application of Patent Act) | ||||||||||||||||||||
| (1) | The provisions of Articles 3 to 5 (time periods and dates) of the Patent Act shall apply mutatis mutandis to time periods and time limits provided in this Act. In this case, the term "Article 121(1)" of Article 4 of the Patent Act shall be deemed to be replaced with "Article 46(1) or 47(1) of the Design Act." | |||||||||||||||||||
| Article 46 (Appeal against examiner's decision of refusal) | ||||||||||||||||||||
| (1) | A person who has received an examiner's decision to the effect that an application is to be refused and who is dissatisfied with the examiner’s decision may file a request for an appeal against the examiner's decision of refusal within 30 days from the date on which the certified copy of the examiner's decision has been served. | |||||||||||||||||||
| Article 47 (Appeal against examiner's ruling to dismiss an amendment) | ||||||||||||||||||||
| (1) | A person who has received an examiner's ruling to dismiss an amendment under Article 17-2(1) and is dissatisfied with the examiner’s ruling may file a request for an appeal against the examiner's ruling to dismiss an amendment within 30 days from the date on which the certified copy of the examiner's ruling has been served. However, this provision shall not apply where a new application for design registration under Article 17-3(1) has been filed. | |||||||||||||||||||
| Trademark Act | ||||||||||||||||||||
| Article 77 (Mutatis mutandis application of Patent Act) | ||||||||||||||||||||
| (1) | The provisions of Articles 3 to 5 (time periods and dates) of the Patent Act shall apply mutatis mutandis to time periods and time limits provided in this Act. In this case, the term "Article 121(1)" of Article 4 of the Patent Act shall be deemed to be replaced with "Article 44(1) or 45(1) of the Trademark Act." | |||||||||||||||||||
| Article 44 (Appeal against examiner's decision of refusal) | ||||||||||||||||||||
| (1) | A person who has received an examiner's decision to the effect that an application is to be refused and who is dissatisfied with the examiner's decision of refusal may file a request for an appeal against the examiner's decision of refusal within 30 days from the date on which the certified copy of the examiner's decision has been served. | |||||||||||||||||||
| Article 45. (Appeal against examiner's ruling to dismiss an amendment) | ||||||||||||||||||||
| (1) | Any person who has received an examiner’s ruling to dismiss an amendment under Article 16-2(1) and is dissatisfied with the examiner's ruling may file a request for an appeal against the examiner’s ruling within 30 days from the date on which the certified copy of the examiner’s ruling has been served. However, this provision shall not apply where a new application for trademark registration provided in Article 17-3(1) of the Design Act as applied mutatis mutandis pursuant to Article 17-2(1) of this Act is filed. | |||||||||||||||||||
