* Updated March 10, 2020 to reflect revised rules and practice.
A patent’s duration is fairly standard in Japan: 20 years from the filing date. (For a PCT international application that enters the national phase in Japan, that is 20 years from the international filing date.) Sometimes, though, an applicant might not be able to use the invention for some time and want to extend the expiration date of the patent. What then?
May I extend my patent’s term (duration), and if so, under what circumstances?
Unlike with the USPTO, the JPO does not automatically give an extension based on delays in the examination process. However, the Japanese Patent Act allows for an extension of the patent term if the applicant files appropriately. The Patent Act has been revised in July 2018 in accordance with the Trans-Pacific Partnership free trade agreement (“TPP-11”), so the answer to your question depends on when the application was filed in the JPO.
For applications filed before March 10, 2020
The extension is permitted only for applications involving pharmaceutical matter that is regulated by government bodies, i.e. medical drugs or chemical fertilizers, where the regulating bodies take so much time that the usable patent term is effectively diminished for the patent owner. The term may be extended for up to 5 years (Articles 67, 67-2 of the earlier Patent Act).
For applications filed on or after March 10, 2020
New: A patent application with or without regulated substances, filed in the JPO on or after March 10, 2020, may receive a term extension if the JPO registers it but only after more than 5 years since filing or 3 years since Request for Examination (whichever is later) have elapsed (generally within 3 month of the patent’s registration). The extension is calculated based on how long after the said period the patent is registered, with adjustments for certain procedures that may have taken place (Articles 67 and 67-2 of the 2018 revised Patent Act).
In addition, as was possible in the older Article 67, pharmaceutical patents that cannot be used for some time because of regulatory testing may also be given term extensions. Again, the maximum extension for this is 5 years (Article 67 [4] of the 2018 revised Patent Act).
In summary, see this table to see if an extension may be possible for your patent.
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| Not possible | Possible, if JPO registers late | |
| Possible | Possible |
What if I have multiple patents for one product that I was not able to work immediately, and want an extension on each patent? Will all the patents get the same extended duration?
Each application is considered and would be extended separately. That is, if multiple patents for the same product exist, each patent may be extended, based on Article 67 (2), based on its own application date alone. As a result, each patent may end up expiring on a different date, and the part of the invention whose patent expires earlier would no longer be protected.
Why Do (Did) the Old Rules Apply only to Some Patents?
Article 67 (2) of the Patent Act, prior to revision, stipulated the only grounds for extending a patent’s duration as follows (translation by Japanese Law Translation):
Where there is a period during which the patented invention is unable to be worked because approvals prescribed by relevant Acts that are intended to ensure the safely, etc. or any other disposition designated by Cabinet Order as requiring considerable time for the proper execution . . . upon the filing of a request for the registration of extension of the duration, by a period not exceeding 5 years.
Therefore, patent term extensions were available only for inventions held up by government safety testing, previous to the March 10, 2020 modification.
The details of calculating the extension may be complicated, so please contact your Japanese patent attorney concerning any particular case where you think you can win a patent term extension.
* 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.
Contact: Taro Yaguchi.
Sources
Japanese Law Translation Translated (old) Articles 67 (2), 67-2 of “Patent Act.” Accessed March 10, 2020.
E-Gov. Japan Patent Act. Accessed March 10, 2020.
Hourei, government law catalog. “特許法 [Patent Act].” Accessed March 10, 2020. (For date of revision of Patent Act under TPP-11)
Japan Patent Office. New version of “第IX部 特許権の存続期間の延長 [Section 11: Extension of duration of patent rights].” Downloaded from “「特許権の存続期間の延長に係る審査基準」の改訂について [Concerning Revision of ‘Examination standards for extension of patent durations].” Accessed March 10, 2020.
Japan Patent Office. Old version of “第IX部 特許権の存続期間の延長 [Section 11: Extension of duration of patent rights].” Downloaded from “令和2年3月9日までにした特許出願に係る特許権の存続期間の延長登録の出願の審査に適用される審査基準 [Examination standards for examination of requests for patent duration extensions of applications filed up to March 9, 2020].” Accessed March 10, 2020.
