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Home > Obtaining IP Rights > Appeals/Trials > The specified time limit for responding to a Notification of Reasons for Refusal in the process of an appeal against an examiner’s decision of refusal (there are no changes in terms of operating procedures regarding this)

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The specified time limit for responding to a Notification of Reasons for Refusal in the process of an appeal against an examiner’s decision of refusal (there are no changes in terms of operating procedures regarding this)

November 1, 2016

Trial and Appeal Department, Japan Patent Office

Starting from April 1, 2016, the operating procedures regarding the extension of the specified time limit for responding to a Notification of Reasons for Refusal concerning patent applications or applications for trademark registration have been modified. Please note that, however, there are no changes in terms of the operating procedures for the period for responding to the Notification of Reasons for Refusal (including those made in the process of reconsideration by examiners as one of the appeal proceedings) in the process of an appeal against an examiner’s decision of refusal.

The operating procedures for the period for responding to the Notification of Reasons for Refusal (including those made in the process of reconsideration by examiners as one of the appeal proceedings) in the process of an appeal against an examiner’s decision of refusal are described below.

Please note that the above-mentioned period for responding to the Notification of Reasons for Refusal may not be extended after the expiration of the time limit.

1. As to Patent applications

When the applicant is a domestic resident

An extension of the specified time limit for response shall be limited to those for the following purpose (1).

Request for extension of the specified time limit shall be made only once and up to a one-month extension can be granted.

When the applicant is an overseas resident

An extension of the specified time limit for response shall be limited to those for either of the following purposes (1) and (2).

A one-month extension of the specified time limit for response can be granted by filing a request for extension, and an additional one-month extension can be granted by filing the second request and the third request respectively. Therefore, a maximum of a three-month extension of the specified time limit can be granted by filing three requests. However, the extension based on the requirement (1) shall be made only once (up to a one-month extension).

(1) Acquisition of the experimental data to compare the claimed invention with a cited invention indicated in the Notification of Reasons for Refusal, etc.

(2) Translation of trial and appeal procedure documents

Requesting an extension of the specified time limit for response “for certain reasons,” etc. shall be inappropriate. Furthermore, if there is any question of the need for the “comparison testing,” the JPO may contact the applicant in order to confirm the situation.

Since there have been cases where requests for extension of the specified time limit were not granted, you should keep filing deadlines in mind and give yourself plenty of time in advance to submit a request form for an extension of the specified time limit for response.

2. As to applications for design and trademark registrations

A one-month extension of the specified time limit for response can be granted by filing a request for extension when the applicant is an overseas resident.

3. As to related information

For further information on a request for extension of the specified time limit in the process of an appeal against an examiner’s decision of refusal, please see the following.

Chapter 25-04 of the Manual for Appeal and Trial Proceedings, "Extension of the period for submission"(PDF:67KB)

For further information on the operating procedures for a request for extension of the specified time limit, please see Q1-43 of the following.

審判手続に関するQ&A (Japanese)

Furthermore, for further information on the operating procedures at the examination phase, please see the following.

 

[Last updated 1 November 2016]

Contact

Inquiry : Trial and Appeal Division, Japan Patent Office

FAX:+81-3- 3584-1987

E-mail: PA6B00@jpo.go.jp