On January 7, 2021, parts of the Tokyo metropolitan area were declared under a state of emergency by the Japanese government. The following day, the Japan Patent Office announced it would close its main entrance from January 12 and generally refuse in-person paper filings, and allow only video teleconferences for examination and appeals procedures, and simplified various procedures.
Below is our running summary carrying over from last year, as the JPO has developed its stances on various COVID-19 remedies. See also this JPO summary of COVID-19 responses regarding trials and appeals, comparing Japan side by side with China and Korea’s responses.
(1)Office Action Deadlines
If an applicant is unable to file a response before the Deadline set by the JPO due to the novel coronavirus outbreak for an application or trial case pending at the JPO, the applicant can prepare and attach an appropriate document explaining the applicant’s circumstances in which the response could not have been prepared in timely manner. If it is accepted by the JPO even if the Office Action Deadline has expired, the response shall be treated as if it has been filed before the deadline.
*April 14, 2020 addition: We contacted the JPO to inquire further about the Office Action Deadline. According to the JPO, the deadline for filing the argument/remarks will be handled as described above. However, the deadline for filing the amendment will not be extended. This more or less means that there is no emergency procedures in dealing with deadline for responding to the Office Action. We believe that this is not a viable solution for this problem and the deadline for filing the amendment should also be extended along with the argument.
*May 18, 2020 & January 14, 2021 update: The JPO announced on May 7, 2020 (and reiterated in January 2021) that it will allow applicants to respond to Office Actions for Super Accelerated Examination patent applications later than the 30-day deadline if the COVID-19 crisis caused delay, but warns its examinations also may be delayed.
(2) Statutory period
If the period of time required for the procedure is determined by law or an ordinance of the Ministry of Government, the person who is unable to do so within the prescribed period due to the novel coronavirus outbreak can take the procedure during the remedy procedure period. Applicant can prepare and attach an appropriate document explaining the applicant’s circumstances in which the response could not be prepared in timely manner. If it is accepted by the JPO, the procedure shall be treated as it is effective.
*April 28, 2020 addition: The JPO is lifting stricter requirements to demonstrate due care if the applicant can claim COVID-19 caused the delay; see more at our separate article here.
<1> Procedures Group 1
Remedies for the following procedures are granted when they are completed within 14 days after it becomes possible for the applicant to take the procedure ( in the case for overseas residents, within 2 months (for item (7), for overseas residents, within 1 month)).
The procedure has to be taken within 6 months after the specified statutory period has expired. (For item (6), within 9 months after the elapse of the specified period, (7), within two months after the elapse of the specified period, (21) and (23), within seven months after the elapse of the specified period).
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- (1) Submission of a certificate to receive the exceptional provisions of loss of novelty (Patent Law, Article 30, Paragraph 4; Design Law, Article 4.4, Paragraph 4) *April 28, 2020 update: The JPO announced on April 17 it was also suspending the requirement to submit signed or sealed documents if the applicant is not able to sign or seal the document due to COVID-19.
- (2) Submission of a certified copy of the priority document pertaining to a priority claim under the Paris Convention (Patent Law, Article 43, Paragraph 8; Utility Model Law, Article 11, Paragraph 1; Design Law, Article 15, Paragraph 1; Design Law, Article 60-10, Paragraph 2; Trademark Law, Article 13, Paragraph 1)
- (3) Filling of Divisional Patent application (Patent Law, Article 44, Paragraph 7; Utility Model Law, Article 11, Paragraph 1)
- (4) Conversion of utility model registration application or design registration application to patent application (Patent Law, Article 46, Paragraph 5)
- (5) Filling of Patent application based on utility model registration (Patent Law, Article 46-2, Paragraph 3)
- (6) Application for registration of extension of the term of patent right (Patent Law, Article 67-2, Paragraph 3 before the amendment, Article 3 proviso before the amendment)
- (7) Submission of a document pursuant to the provisions of Article 67-2 (1) of the Patent Act before Amendment (Patent Law, Article 67-2-2, Paragraph 4 before amendment)
- (8) Payment of patent fee (registration fee) (Patent Law, Article 108, Paragraph 4; Utility Model Law, Article 32, Paragraph 4; Design Law, Article 43, Paragraph 4; Trademark Law, Article 41, Paragraph 4, Article 41-2, Paragraph 4, and Article 65-8, Paragraph 5)
- (9) Request for refund of already paid patent fee (registration fee) (Patent Law, Article 111; Utility Model Law, Article 34; Paragraph 3; Design Law, Article 45; Trademark Law, Article 42, Paragraph 3, and Article 65-10, Paragraph 3)
- (10) Request for appeal against decision of refusal (Patent Law, Article 121, Paragraph 2; Design Law, Article 46, Paragraph 2; Trademark Law, Article 44, Paragraph 2)
- (11) Request for retrial (Patent Law, Article 173, Paragraph 2; Utility Model Law Article 45, Paragraph 1; Design Law, Article 58, Paragraph 1; Trademark Law, Article 61)
- (12) Request for refund of the fee for requesting examination of an application or the fee for erroneous payment (Patent Law, Article 195, Paragraph 13; Utility Model Law, Article 54-2, Paragraph 12; Design Law, Article 67, Paragraph 9; Trademark Law, Article 76, Paragraph 9)
- (13) Correction of the description etc. of utility model registration (Utility Model Law, Article 14-2, Paragraph 6)
- (14) Withdrawal of request for trial for invalidation of utility model registration (Utility Model Law, Article 39-2, Paragraph 5)
- (15) Withdrawal of application for intervention pertaining to refund of application for intervention fee (Utility Model Law, Article 54-2, Paragraph 6)
- (16) Request for appeal against decision of dismissal of amendment (Design Law, Article 46, Paragraph 2 applied mutatis mutandis in Article 47, Paragraph 2; Trademark Law, Article 44, Paragraph 2 applied mutatis mutandis in Article 45, Paragraph 2)
- (17) A request for a refund of the individual designation fee for an international application deemed to be a design registration application pursuant to the provisions of Article 60-6, Paragraph 1 of the Design Law (hereinafter referred to as “international design registration application”) (Design Law, Article 60-22) Clause 3)
- (18) Submission of a certificate in accordance with special provisions at the time of the filing of a trademark application (Trademark Law, Article 9, Paragraph 4)
- (19) Application for trademark registration after cancellation of international registration (Trademark Law, Article 68-32, Paragraph 6)
- (20) Application for trademark registration after abandonment of Madrid Protocol (Trademark Law, Article 68-32, Paragraph 6 as applied mutatis mutandis Article 68-33 Paragraph 2)
- (21) Submission of a certificate to receive application of the exceptional provisions on loss of novelty of invention in an international patent application (Regulations under Patent Law, Article 38-6-3)
- (22) Submission of priority documents pertaining to a priority claim under the Paris Convention when filing an international patent application or a patent application under Article 184-20, Paragraph 1 of the Patent Law (Regulations under Patent Law, Article 38-14, Paragraph 1)
- (23) Submission of a certificate to receive application of the exceptional provisions on loss of novelty of a design in an international design registration application (Regulations under Design Law, Article 1-2)
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<2> Procedures Group 2:
The following Procedures are for which remedy can be granted for within two months from the date it becomes possible for the applicant to take the procedure, provided that the procedure was taken within one year after the specified statutory period has expired. (For item (7) to (9), within 6 months after the specified period has elapsed).
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- (1) Submission of a translation of a foreign language application (Patent Law, Article 36-2, Paragraph 6)
- (2) Request for examination (Patent Law, Article 48-3, Paragraph 5) *added April 14, 2020
- (3) Late payment of patent fee (registration fee) and surcharge patent fee (Patent Law, Article 112-2, Paragraph 1; Utility Model Law, Article 33-2, Paragraph 1, Design Law, Article 44-2, Paragraph 1)
- (4) Submission of translation of foreign language patent application (Patent Law, Article 184-4, Paragraph 4) *added April 14, 2020
- (5) Appointment of a foreign patent administrator in an international patent application (Patent Law, Article 184-11, Paragraph 6)
- (6) Submission of the translation of a foreign language utility model registration application (Utility Model Law, Article 48-4, Paragraph 4)
- (7) Application for renewal registration of the term of trademark right (Trademark Law, Article 21, Paragraph 1)
- (8) Late payment of registration fee and additional registration fee (Trademark Law, Article 41-3, Paragraph 1)
- (9) Application for renewal registration of the duration of the right based on the registration of a defensive mark (Trademark Law, Article 65-3, Paragraph 3)
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<3>Priority claim
Applicant must file the followings within 2 months after the expiration of the period in which the applicant can file an application with a priority claim.
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- (1) Domestic Priority claim based on patent application, etc. (Patent Law, Article 41, Paragraph 1 provided in parenthesis, Item 1; Utility Model Law, Article 8, Paragraph 1, Item 1 provided in parenthesis)
- (2) Priority claim based on the same rule as the Paris Convention (Patent Law, Article 43-2, Paragraph 1)
- (3) Priority claim for international applications based on the Patent Cooperation Treaty (International Application Law, Article 28-3, Paragraph 1)
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(3) Online Means of Prosecution
*May 18, 2020 addition: We noted that the JPO is more open to using videoconferencing tools now to conduct interviews remotely with applicants and inventors with their patent attorney. On May 8, the JPO also announced that applicants may skip the normal requirement for a signature on the official record of interviews. See more at our earlier article on remote video interviews with JPO examiners.
*January 14, 2021 addition: The JPO also stopped requiring official physical seal execution of statements for post-disclosure application grace periods under the Japanese Patent Act, Article 30 and Design Act, Article 4.
The Japan Patent Office (JPO) provides a wide range of remedies for most of the missed deadlines for those who have been affected by the COVID-19 related restrictions. It is still recommended for our client to take any necessary procedure before the existing deadline; however, various countermeasures are available at the JPO for delays caused by the current pandemic.
Initial post: April 3, 2020. Updates: April 14, April 28, 2020, May 18, 2020.
* The information provided on this website is for informational purposes only and is not intended as legal advice.
** For questions or consultation, please contact us for more information.
Taro Yaguchi
Sources
The January 7, 2021 state of emergency is covered in this JPO article: “新型コロナウイルス感染症拡大に伴う対応等について [Responses to the spread of the novel coronavirus].” Updated January 8, 2021. Accessed January 14, 2021.
Japan Patent Office. “日中韓の審判における新型コロナウイルス感染症対策の比較表 [Comparative chart for COVID-19 Countermeasures in Trial and Appeal taken by Japan, China and Korea].” https://www.jpo.go.jp/system/trial_appeal/nicchukan-covid19.html, source of chart of “COVID-19 Countermeasures in Trial and Appeal taken by Japan, China and Korea” (PDF). Both updated January 13, 2021. Accessed January 14, 2021.
Updates are primarily drawn from the JPO’s COVID-19 response page here: “新型コロナウイルス感染症拡大に伴う対応等について [Measures in response to the spread of the novel coronavirus],” dated April 8, 2020 and updated occasionally, and “新型コロナウイルス感染症により影響を受けた手続の取り扱いについて [Treatment of filings impacted by the novel coronavirus],” dated April 3, 2020 and updated occasionally.
