JPO’s Updated Extension Guidelines Provides Second-Chance, Post-Deadline Extension: Grace Periods for OAs

Missed the first deadline for an Office Action response? Since the Revision to Japanese Patent Law effective from April 2016, the JPO has modified rules for extending the deadline for responding to Pre-Appeal Office Actions*, both minor and major. Of greatest significance, the JPO no longer maintains the strict rule that requests for an extension of time must be made on or prior to the original response deadline.

The JPO now allows a two-month extension to be filed (with requisite official fees) after the original response deadline has elapsed and at the time of filing the response. The catch is that the deadline may only be extended by two months, not the three months allowed under normal extension filing.

As a result, while it is generally advantageous (in view of the additional month one may extend the deadline) to continue to file a Request for Extension before the original deadline to respond to the JPO’s Office Action, there is more leeway to get a two-month extension at the time of filing the Response, without the additional work of filing the Request separately from the Response and in case one unexpectedly misses the original deadline.

The specific options for Patent Applications are broken down below:

For extensions made within the designated response period by overseas applicants

Although formerly, one-month extensions of the response period would be granted up to three times with rationale provided, now a first two-month extension and a second one-month extension are available, for a total possible three-month extension of the response deadline.** Each “Request for the Extension of Time” must be timely filed by their respective deadlines, and accompanied by the official fee of JPY2,100 (approximately US$24) per request. Additionally, a rationale for the extension is no longer required.

For extensions made after the designated response period

As we noted above, the JPO has created a new exception to their rule that requests for an extension of time must be made on or prior to the response period deadline.

If the Request for the Extension of Time for two months is filed after the original response deadline but on or before five months from the transmittal date of the Office Action, the application may be maintained (no rationale for extension is required). Please keep in mind that the two months’ extension is set from the original response deadline, not from the date of filing the request, and a further extension for the third month would NOT be permitted. An additional JPO fee of JPY51,000 (approximately US$550) would be incurred for filing a Request for the Extension of Time after the original response deadline.

Notes

* For Appeal Stage Office Actions, the earlier extension rules still apply.
** In the case that a first Request for the Extension of Time for two months were timely filed by the original deadline, but the second Request for the Extension of Time for the third month was not filed by the two month extended deadline, applying for the above exception would NOT be permitted.

Reference

https://www.jpo.go.jp/torikumi/t_torikumi/kyozetu_entyou_160401.htm (April 1, 2016; updated June 30, 2016)

By Mari Sanchez Yamagishi. Edited by Josiah T. Momose.
(The information provided on this website is for informational purposes only and is not intended as legal advice. For questions or inquiries, please contact us for more information.)

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