Handling of Procedures for Those Affected by the Current Situation in Ukraine

April 4, 2022
Japan Patent Office

The following is to inform for those adversely affected by the situation in Ukraine with regard to filing procedures for patent, utility model, design, and trademark.

Relief provided even after the designated time limit exceeded for filing procedures with the Japan Patent Office (JPO)

（1）Designated Time Limits

If you are unable to carry out procedures within the time limits designated in the notice or amendment order issued by the Commissioner, Chief Administrative Judge or the Examiner of the JPO due to the situation in Ukraine, the procedures will, in principle, be considered valid even after the designated time limit expires in accordance with the following requests.

Procedure for Request

1. File requests within the designated periods: Describe reasons in column “Details of statement” in written statements
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.：

(1-1) Designated Time Limits (Response Time Limit for Notices of Reasons for Refusal)

If you are unable to proceed within the time limit designated in the notice of reasons for refusal issued by the Examiner due to the situation in Ukraine, please make the following request and submission will be accepted even after the designated time limit has expired for design and trademark examinations. With regard to patent examination, the examiner will again issue a notice of reasons for refusal or take other actions, thereby, in principle, relief measures will be applied.

Procedure for Request

Please file a request within the certain period of time or after the expiration of the time period, describing the reasons for not being able or not having been able to implement the procedures within the designated period of time in the written opinion.

* If applicants do not file a request for relief after the expiration of the designated time limit, it will be deemed that the applicants do not respond to the notice of reasons for refusal, and the examination may proceed. Accordingly, please file a request for relief within the designated time limit by submitting a written opinion as soon as the applicant determines that such request is necessary. In particular, if the applicant intends to file a request for relief after the designated time limits expired, please be sure to call the examiner written in the notice of reasons for refusal as soon as possible to inform him/her of intentions to file a request in order to avoid passing each other / misunderstanding.

（2）Statutory Time Limits

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

[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 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.

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.)

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)
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 “Unintentional Standard”
※For procedures for which the procedural period has expired before March 31, 2023, relief for expiration of the period will be granted for "Legitimate Reasons"

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. When the grounds for the request are approved, the request shall be treated as a valid procedure.

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).

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) (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*

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.

(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)

[Last updated 14 November 2023]

Contact

Contact details for this article

Official Services Management Section, General Coordination Divisions

E-mail:pa0220@jpo.go.jp

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