Change of Operating Procedures regarding the Extension of the Specified Time Limit for Responding to a Notification of Reasons for Refusal concerning Patent Applications and Applications for Trademark Registration (starting from April 1, 2016)

Friday, April 01, 2016
Japan Patent Office

The Act for Partial Revision of the Patent Act and Other Acts (Act No. 55 of 2015) including provisions to implement the provisions of the Patent Law Treaty (PLT) and the Singapore Treaty on the Law of Trademarks (STLT), which will come into force on June 11, 2016 for Japan, has come into force on April 1, 2016. Accordingly, 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, and thus the changes are described below. (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.)

1.As to Patent applications

(1) Request for extension of the specified time limit for responding to a Notification of Reasons for Refusal before the expiration of the time limit

When the applicant is a domestic resident

A two-month extension of the specified time limit for response can be granted by filing a request for extension. It is unnecessary to have reasonable grounds for such a request. The fee is the same as before: 2,100 yen.

When the applicant is an overseas resident

A two-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 (a maximum of a three-month extension of the specified time limit can be granted).

The first and second requests may be submitted at the same time. It is unnecessary to have reasonable grounds for such request. The fee is the same as before: 2,100 yen per request.

(2) Request for extension of the specified time limit for responding to a Notification of Reasons for Refusal after the expiration of the time limit

A two-month extension can be granted if a request for extension is filed within two months* even after the expiration of the specified time limit for responding to a Notification of Reasons for Refusal.

* The time limit for requesting the extension after the expiration of the specified time limit is two months from the day following the last day of the said time limit even when the last day falls on a day when the JPO is closed, such as Saturdays, Sundays and national holidays.

Whether the applicant is a domestic resident or an overseas resident, a two-month extension of period for responding can be granted by filing a request for extension. It is unnecessary to have reasonable grounds for such request. In addition, when filing a request for the extension of the said time limit after the expiration of the time limit, the applicant needs to pay a fee of 51,000 yen.

However, when the extension(s) mentioned in the item (1) is(are) granted, the applicant may not file a request for the extension after the expiration of the time limit for response. In addition, if the applicant has responded within the initial period for response, he/she may not file a request for the extension after the expiration of the time limit for responding.

2.As to applications for trademark registration

(1) Request for extension of the specified time limit for responding to a Notification of Reasons for Refusal before the expiration of the time limit

Whether the applicant is a domestic resident or an overseas resident, a one-month extension of the specified time limit for response can be granted by filing a request for extension. It shall be unnecessary to have reasonable grounds for such a request. The fee is the same as before: 2,100 yen.

(2) Request for extension of the specified time limit for responding to a Notification of Reasons for Refusal after the expiration of the time limit

A two-month extension can be granted if a request for extension is filed within two months* even after the expiration of the specified time limit for responding to a Notification of Reasons for Refusal.

* The time limit for requesting the extension after the expiration of the specified time limit is two months from the day following the last day of the said time limit even when the last day falls on a day when the JPO is closed, such as Saturdays, Sundays and national holidays.

Whether the applicant is a domestic resident or an overseas resident, a two-month extension of period for responding can be granted by filing a request for extension. It is unnecessary to have reasonable grounds for such a request. In addition, when filing a request for the extension of the said time limit after the expiration of the time limit, the applicant needs to pay a fee of 4,200 yen.

* With regards to the request for the extension of the specified time limit to respond to a Notification of Provisional Refusal concerning an international application for trademark registration pursuant to the Madrid Protocol, the operating procedures mentioned in the item 2. (1) and (2) shall be applied.

3.Subjects to which the new operating procedures shall apply

The operating procedures described above in the item 1. and 2. shall apply when the time limit for responding to a Notification of Reasons for Refusal (including those issued before April 1, 2016) will expire on or after April 1, 2016 and, further, the request for the extension of the time limit for response will be filed on or after April 1, 2016 (with regards to item 1. (1), this refers to the first request when the applicant is an overseas resident).

* Please note that the operating procedures are the same as before with regards to extension of the time limit when a request is filed prior to April 1, 2016.
In addition, even after April 1, 2016, there are no changes in terms of the operating procedures for the period for responding to the following notifications:

• - a 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 and
• - a Notification of Reasons for Refusal to an application for registration of extension of duration of a patent right.

[Last updated 14 April 2016]

Contact

Customer Relations Policy Division, Trademark and Customer Relations Department, Japan Patent Office E-mail:PA1100@jpo.go.jp