March 10, 2020 marked the implementation of revised rules that allow for new Japanese patents in any field to be given extensions in protection, if they are allowed and registered unduly late. New filers may want to keep this change in mind in case their applications run into unusually long examination procedures in the Japan Patent Office (JPO).
As reported last year, the modified Trans-Pacific Partnership free trade agreement (“TPP-11”) required Japan and other signatories to provide more equivalent rules for IP protection. In this case, the Patent Act of Japan has given patent duration (term) extensions only for patents in fields where other governing bodies regulate the safety testing of invented pharmaceutical substances (i.e. fertilizers, drugs).
Now, however, for an application with a filing date on or after March 10, 2020 (filing at JPO or, for a PCT international application, at WIPO) may request extension of patent duration for any patent application that is registered more than 3 years after filing the Request for Examination or 5 years from initial filing. Pharmaceutical inventions whose use is delayed by regulatory testing may still receive extensions for that delay.
As noted in our article from last year, the JPO’s examinations are usually very fast, so few will need to seek an extension. Yet it can be comforting to know this “safety net” does cover all applications now. Note, however, that the patent application filing date (PCT international filing date for a PCT-JP national entry application) determines what rules will apply. Please consult with a Japanese patent attorney if you are unsure of your situation.
* The information provided on this website is for informational purposes only and is not intended as legal advice.
** Updated comments on the government’s rules regarding patent term duration and extensions can be found on our Q&A page “Japanese Patent Expiration Dates and Extensions.”
*** For questions or consultation, please contact us for more information.
Contact: Taro Yaguchi
Sources
E-Gov. Japan Patent Act, Article 67 original text. Text effective July 1, 2019. 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. “資料1 特許権の存続期間の延長登録出願に関する審査基準の改訂 [Handout 1: Revision to the examination procedures for patent duration extension requests].” No date. Accessed March 10, 2020.
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 “o_shitsumon_1903.html” rel=”noopener noreferrer” target=”_blank”>「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.
Further reading in English: JPO’s announcement from March 27, 2019.
