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Home > JPO Activities > Examination on Patent Right and Utility Model Right > archive > Change in Extension of Period for Responding toNotice of Reasons for Refusal (Patents)

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Change in Extension of Period for Responding toNotice of Reasons for Refusal (Patents)

Regarding the extension of the period for responding to a notice of reasons for refusal, the JPO will revise the guidelines for written requests for extension submitted on or after April 1, 2007, as follows. The new guidelines will also apply to applications for which a notice of reasons for refusal has been issued on or before March 31, 2007 and for which the written request for extension is submitted on or after April 1, 2007.

1. New guideline details

(1)If an applicant has a justifiable reason for not being able to respond within the designated period, an extension of the period will be granted as described below. There are two justifiable reasons, and they are as follows.

  • Reason 1:The need to conduct experimentation to compare the claimed invention with the cited invention stated in the notice of reasons for refusal.
  • Reason 2:The need to translate the notice of reasons for refusal issued by the JPO and the documents to be submitted to the JPO, such as the written opinion and written amendments.

If the applicant is a resident of Japan

An applicant who requests an extension due to Reason 1 will be granted a one-month extension to the designated period for response. Only one written request may be submitted.

If the applicant is a resident abroad

  • An applicant who requests an extension due to Reason 1 or Reason 2 will be granted an extension to the designated period for response. One written request will result in an extension of the designated period by one month and up to three written requests may be submitted (maximum of a three-month extension). Only one written request may be submitted in the case of Reason 1. 
  • Two-month and three-month extensions require the submission of two written requests and three written requests, respectively. More than one written request may be submitted at the same time. 
  • Please note that the period of response to notices other than a notice of reasons for refusal (i.e., a directive for consultation or a request pursuant to Article 194
    (1) of the Patent Act) is the same as before, meaning that an applicant living abroad may obtain a three-month extension with one written request, and no extension will be granted to an applicant living in Japan.

(2)As for period of response for (i) a notice of reasons for refusal or (ii) questioning using the reconsideration report under a procedure of the appeal against examiner's decision of refusal, an extension of the designated will also be granted, if there is a justifiable reason for being unable to respond within the period (either Reason 1 or 2 stated in 1(1)).
It should be noted that if an extension of period of response is requested an appeal that has been requested an accelerated appeal examination, that appeal is received as an ordinary one, not accelerated one. Please see "Guidelines on Accelerated Examination and accelerated Appeal Examination." (Japanese version only) page 46.
Other thing under the appeal procedure is same as before.

2. Submission of a written request for extension of period

Please make sure to state a justifiable reason for requesting an extension (either Reason 1 or Reason 2 stated in 1(1)) in the "Subject Matter of Request" column of the written request for extension of period.
The fee to be paid at the time of submission is 2,100 yen per written request.

[Last updated 6 February 2007]

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