Handling of Procedures Affected by COVID-19

Updated April 14, 2023
Updated December 28, 2021
Updated June 10, 2020
Updated April 30, 2020
April 6, 2020

Japan Patent Office

Since April 2020, the Japan Patent Office (JPO) has been providing flexible handling of applications for patents, utility models, designs, and trademarks, in the event that the applicants are affected by the Novel Coronavirus Disease (COVID-19) and are unable to complete the procedures within the time limit.

In light of the changes in the status of COVID-19 under the Infectious Disease Control Law and other factors, we have decided to terminate the handling provisionally stipulated for cases affected by COVID-19 and return to the operation of the conventional relief measures.

This conventional remedy requirement applies to proceedings in which the last day of the procedural period (the statutory or designated period (before the extension of the period) is on or after May 9, 2023 (Tuesday).

Handling of Procedures Affected by COVID-19

I. Designated Time Limits

If you are not able to carry out procedures within the time limits designated by the Japan Patent Office (JPO) due to the Novel Coronavirus Disease (COVID-19), please carry out the prescribed procedures in accordance with the following instructions. The procedures will be considered to be valid even after the designated time limits expired.

When it comes to procedures to respond to orders or notices for formality examinations by the JPO (except those for trials/appeals pending at the JPO), the procedures will be considered to be valid for an additional time period, such as the prescribed period for filing “the requests for extension of the duration” plus two months_*, even after the designated time limits expired, without “the requests for extension of the duration”. (For ways to request for remedies and description examples for reasons, please refer to the following.)

* In case where you need further extension due to the fact that, for instance, you reside in an area where restrictive measures have been in place longer than this period, please contact us at the email address below.

In regard to applicants’ response to notices of reasons for refusal, if they request for remedies either in the following ways, the JPO will take flexible approaches to allow the procedures even after the designated time limits expired:

• (1) File requests within the designated periods: Describe reasons in column “Details of statement” in written statements.
• (2) File requests within a certain period of time after the designated periods expired, such as the prescribed period for filing “the requests for extension of the duration”, with explaining the circumstances that prevented you from carrying out prescribed procedures: Add an “Others” column in written opinions etc. and describe on the column reasons for not having been able to implement the procedures.

Description example for reasons:

“Due to the negative effects of the COVID-19, Company XX for which applicants work/Office YY where representatives of applicants work had been closed from ○○ to ○○ in 2020, and the applicants/the representatives are (were) not able to implement the prescribed procedures. Nonetheless, since it has become possible to implement the procedures from ○○, 2020, please accept □□ as a valid procedure.”

II. Statutory Time Limits

If you are unable to carry out certain procedures due to the COVID-19 within the procedural periods specified by laws or governmental and ministerial ordinances, you can carry out the procedures only within the relief period.

In conducting the procedures, please attach a document explaining the circumstances that prevented you from conducting the procedures due to the COVID-19. When the JPO recognizes the necessity, the procedures will be considered to be valid.

For further details, please refer to “Relief Measures based on “Reasons beyond one’s Control” and “Legitimate Reasons” when prescribed procedures are affected by COVID-19”.

1. Procedures to which relief measures can be applied by carrying out procedures within 14 days

* Procedures for which relief measures are stipulated under the laws and regulations of Japan when prescribed procedures cannot be implemented within the time limits due to “Reasons beyond one’s Control”

Please carry out procedures within 14 days from the time it becomes possible (this is within two months for overseas residents; regarding (7), this is within one month for overseas residents).

Please note, however, that this is limited to within six months after the lapse of the prescribed period. (Regarding (6), this is within nine months after the lapse of the prescribed period; regarding (7), this is within two months after the lapse of the prescribed period; regarding (21) and (23), this is within seven months after the lapse of the prescribed period.)

Please submit documents by: (i) adding an “Others” column in documents to be submitted and describe on the documents circumstances of not having been able to implement procedures within the time limits; or (ii) describing the above circumstances in column “Details of statement” in written statements.

• (1) Submission of document proving the fact to seek application of exceptions to lack of novelty of invention (Article 30, paragraph (4) of the Patent Act and Article 4, paragraph (4) of the Design Act)*
  

  * The JPO will provide the following measures to help applicants having trouble in submitting certificates affixed with seals or handwritten signatures for this purpose.
  Please refer here (in the case of a patent or a design)

• (2) Submission of a priority certificate - a certificate about the grant of the right of priority - under the Paris Convention (Article 43, paragraph (8) of the Patent Act; Article 11, paragraph (1) of the Utility Model Act; Article 15, paragraph (1) of the Design Act; Article 60-10, paragraph (2) of the Design Act; and Article 13, paragraph (1) of the Trademark Act)
• (3) Division of patent applications (Article 44, paragraph (7) of the Patent Act; and Article 11, paragraph (11) of the Utility Model Act)
• (4) Conversion of application of utility model registration or application of design registration into patent application (Article 46, paragraph (5) of the Patent Act)
• (5) Patent applications based on utility model registration (Article 46-2, paragraph (3) of the Patent Act)
• (6) Request for registration of extension of duration of patent right (Article 67-2, paragraph (3) of the Patent Act before the revision, provisory clause of Article 3 of the Order for Enforcement of the Patent Act before the revision)
• (7) Submission of document under Article 67-2-2, paragraph (1) of the Patent Act prior to revision by this Act (Article 67-2-2, paragraph (4) of the Patent Act before the revision)
• (8) Payment of patent fees (registration fees) (Article 108, paragraph (4) of the Patent Act; Article 32, paragraph (4) of the Utility Model Act; Article 43, paragraph (4) of the Design Act; and Article 41, paragraph (4), Article 41-2, paragraph (4), and Article 65-8, paragraph (5) of the Trademark Act)
• (9) Request for refund of patent fees (registration fees) (Article 111, paragraph (3) of the Patent Act; Article 34, paragraph (3) of the Utility Model Act; Article 45 of the Design Act; and Article 42, paragraph (3) and Article 65-10, paragraph (3) of the Trademark Act)
• (10) Request for appeal against examiner's decision of refusal (Article 121, paragraph (2) of the Patent Act; Article 46, paragraph (2) of the Design Act; and Article 44, paragraph (2) of the Trademark Act)
• (11) Request for retrial (Article 173, paragraph (2) of the Patent Act; Article 45, paragraph (1) of the Utility Model Act; Article 58, paragraph (1) of the Design Act; and Article 61 of the Trademark Act)
• (12) Request for refund of fees for request for examination of application or fees paid in excess (Article 195, paragraph (13) of the Patent Act; Article 54-2, paragraph (12) of the Utility Model Act; Article 67, paragraph (9) of the Design Act; and Article 76, paragraph (9) of the Trademark Act)
• (13) Correction of Description etc. of an application for utility model registration (Article 14-2, paragraph (6) of the Utility Model Act)
• (14) Withdrawal of demand for invalidation trial of utility model registration (Article 39-2, paragraph (5) of the Utility Model Act)
• (15) Refund of fees concerning withdrawal of application for intervention (Article 54-2, paragraph (6) of the Utility Model Act)
• (16) Request for trial against examiner's ruling dismissing amendment (Article 46, paragraph (2) of the Design Act applied mutatis mutandis to Article 47, paragraph (2) of the Design Act; and Article 44, paragraph (2) of the Trademark Act applied mutatis mutandis to Article 45, paragraph (2) of the Trademark Act)
• (17) Request for refund of individual designation fees for international application (hereinafter referred to as "international design registration application") regarded as design registration application in Japan under Article 60-6, paragraph (1) of the Design Act (Article 60-22, paragraph (3) of the Design Act)
• (18) Submission of certificate to receive special provisions concerning time of filing of trademark application (Article 9, paragraph (4) of the Trademark Act)
• (19) Application for trademark registration after revocation of international registration (Article 68-32, paragraph (6) of the Trademark Act)
• (20) Application for trademark registration after denunciation of Madrid Protocol (Article 68-32, paragraph (6) of the Trademark Act applied mutatis mutandis to Article 68-33, paragraph (2) of the Trademark Act)
• (21) Submission of document proving the fact to seek the application of exceptions to lack of novelty of invention in international patent application (Article 38-6-3 of Regulations under the Patent Act)
• (22) Submission of priority document certifying a priority claim under the Paris Convention when filing an international patent application or a request under Article 184-20, paragraph (1) of the Patent Act (Article 38-14, paragraph (1) of Regulations under the Patent Act)
• (23) Submission of document proving the fact to seek the application of exceptions to lack of novelty of design in international design registration application (Article 1-2 of Regulations under the Design Act)

2. Procedures to which relief measures can be applied when conducting prescribed procedures within two months

* Procedures for which relief measures are stipulated under the laws and regulations of Japan when prescribed procedures cannot be implemented within the time limits due to "Legitimate Reasons" or "being unintentional".

* Under the Act of Partial Revision of the Patent Act and Other Acts (Act No. 42 of 2021), part of which comes into effect on April 1, 2023, the requirement for reinstatement of relief provisions after the expiration of the period shall be relaxed from " (having) Legitimate Reasons " to "(being) Unintentional " (hereinafter referred to as the "Unintentional Standard").

Please be sure to carry out procedures within two months from it becomes available.
However, it is valid for only within one year after the lapse of the prescribed period. (Regarding (7) to (9), this is within 6 months after the lapse of the prescribed period).

Please submit documents for procedures that you were unable to implement within the prescribed periods and statements of the grounds for restoration, which describe reasons for the failure to meet the time limit.

• (1) Submission of translation of foreign language application (Article 36-2, paragraph (6) of the Patent Act)
• (2) Request for examination of application (Article 48-3, paragraph (5) of the Patent Act)
• (3) Delayed payment of patent fees and patent surcharge (Article 112-2, paragraph (1) of the Patent Act; Article 33-2, paragraph (1) of the Utility Model Act; and Article 44-2, paragraph (1) of the Design Act)
• (4) Submission of translation of patent application in foreign language (Article 184-4, paragraph (4) of the Patent Act)
• (5) Appointment of patent administrator of international patent application for overseas resident (Article 184-11, paragraph (6) of the Patent Act)
• (6) Submission of translation of a utility model registration application in foreign language (Article 48-4, paragraph (4) of the Utility Model Art)
• (7) Application for registration of renewal of duration of a trademark right (Article 21, paragraph (1) of the Trademark Act)
• (8) Delayed payment of later installment registration fee and a surcharge (Article 41-3, paragraph (1) of the Trademark Act)
• (9) Application for registration of renewal of duration of a right based on defensive mark registration (Article 65-3, paragraph (3) of the Trademark Act)

3. Priority claim

* Procedures for which relief measures are stipulated under the laws and regulations of Japan when prescribed procedures cannot be implemented within the time limits due to "Legitimate Reasons" or "Unintentional Standard".

Please be sure to carry out procedures within two months from the expiration of the period you can file an application with a priority claim.

Please submit documents for procedures that you were unable to implement within the prescribed periods and statements of the grounds for restoration, which describe reasons for the failure to meet the time limit.

• (1) Priority claim based on patent applications (provision in the parentheses under Article 41, paragraph (1), item (i) of the Patent Act and provision in the parentheses under Article 8, paragraph (1), item (i) of the Utility Model Act)
• (2) Priority claim as governed by the Paris Convention (Article 43-2, paragraph (1) of the Patent Act)
• (3) Claiming priority for an international application under the Patent Cooperation Treaty (Article 28-3, paragraph (1) of Regulations under the Act on International Applications under the Patent Cooperation Treaty)

4. International applications under the Patent Cooperation Treaty

Please carry out procedures as soon as it becomes available. Please note, however, that this is limited to within six months after the lapse of the prescribed period.

• (1) Submission of a document pertaining to the procedure for an international application under the Patent Cooperation Treaty (Article 73-3, paragraph (1) of Regulations under the Act on International Applications under the Patent Cooperation Treaty)

5. Request for Exemption from Paying Additional Registration Fees

* Procedures for which exemption from additional patent (registration) fees is stipulated under the laws and regulations of Japan when the prescribed procedural periods expire due to "reasons beyond one's control" (For rights for which payment deadlines expire on and after October 1st, 2021)

Please be sure to carry out procedures for paying prescribed fees "within the payment deadlines for additional fees (within six months after the payment deadlines expire)" or "within two months from the dates on which the procedures become available after the payment deadlines for additional fees expire (only in case the reasons for delayed payment are "legitimate reasons" or "Unintentional Standard") (for patent rights, utility model rights, and design rights, within one year after the payment deadlines for additional patent (registration) fees expire; for trademark rights, within six months after the payment deadlines for additional registration fees expire). Also, please submit documents stating that the delay is due to the reasons beyond the control of rights holders.

[Last updated 14 April 2023]

Contact

Contact details for this article Official Services Management Section, General Coordination Divisions E-mail:pa0220@jpo.go.jp