The Japanese Patent Office Sets New Guidelines For Requesting an Extension to Reply to a ‘Notice of Reasons for Refusal’ Starting April 1, 2007

The Japanese Patent Office’s (JPO) has set new guidelines for applicants who request an extension on the time period to respond to a “Notice of Reasons for Refusal.” The new guidelines would apply not only to requests submitted on or after the enactment date of April 1, 2007, but also to applications for which a “Notice of Reasons for Refusal” has been issued on or before March 31, 2007.

The applicant must have sufficient cause to request an extension which must consist of one or both of the following: (Reason 1) An extension of time is needed to conduct experimentation to compare the claimed invention with the cited invention stated in the “Notice of Reasons for Refusal”; and/or (Reason 2) An extension of time is needed to translate the “Notice of Reasons for Refusal” and other documents to be submitted to the JPO (i.e., Written Opinion or Written Amendments, etc.)

The designated extension period and set fee is one month at 2,100 yen (about US$20) per request. For applicants who reside abroad (i.e., non- Japanese), only one request may be submitted for an extension due to Reason 1, and up to three requests for extensions due to Reason 2. (note: The majority of requests will fall into the latter category) On the other hand, applicants who reside in Japan can only submit one request due only to Reason 1.

Other office actions, such as responding to questioning or the “Notice of Reasons for Refusal” under the appeal examination system, must also include Reasons 1 and/or 2 mentioned above. It should also be noted that an appeal that has been requested an accelerated examination will be received as an ordinary appeal losing its accelerated status once an extension is granted.

All applicants are allotted three months to respond to a “Notice of Reasons for Refusal.” However, prior to these new guidelines, overseas applicants could extend that time period for up to three months with only one written request. (The new guidelines will require a separate letter for every month of extension.) The idea behind the soon-to-be-defunct allowance for overseas residence was a practical one; simply, non-Japanese applicants take longer to respond to office actions due to translations and other language-related hurdles. However, this special provision stirred some ire among Japanese residents who complained that they were not given equal treatment. JPO’s new guidelines are an unfortunate response to such complaints. As Keisen’s internal policy, we will continue to file for a three-month extension for all applications two weeks prior to the original deadline.

For more information on this topic, please go to the JPO’s website. (Posted February 20, 2007)

(Posted on February 20, 2007)

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