Revision of Fees for Patents and Trademarks and Handling of Extensions for Office Actions

Revision of Fees for Patents and Trademarks and Handling of Extensions for Office Actions

As part of the enforcement of the Amended Patent Act and Other Acts etc. of 2015, the official fees of the Japan Patent Office related to patents and trademarks were revised as of April 1, 2016 (the “Effective Date”). In addition, the handling of extensions of the responding period for Office Actions related to patent and trademark applications were also changed. We have highlighted the key revisions below.

 

I. Revision of Fees

(1) Patent-related fees

i) Filing fees

 

 

ii) Patent annual fees

a) Patents where the request for examination was filed on or after April 1, 2004

 

 

b) Patents where the request for examination was filed by March 31, 2004

(2) Trademarks

Trademark registration and renewal fees were reduced by approximately 25% and 20%, respectively.

Registration fees, renewal fees for Trademarks

Registration and renewal fees for trademarks

 

 

Individual fees for IR marks 

The revised fees apply to:

  • Registration fee payments (including for IR marks) where the due date had been extended, had become due on or after the Effective date of the law revision (April 1, 2016), and were to be made on or after the Effective Date;
  • Renewal applications (including for IR marks) that became due (i.e., where the valid period of trademark registrations expires) and were to be filed on or after the Effective Date; and
  • Renewal fee payments for the second term where the renewal applications had been filed (i.e., the first installment of the renewal fees has been paid) on or after the Effective Date.

 

In connection with the aforementioned revisions, we would also like to note that the previous fees still apply to:

  1. Registration fee payments (including those for which the due date has been extended) that became due before the Effective Date, or renewal applications that became due (i.e., the valid period of trademark registration has expired) before the Effective Date or were filed on or after the Effective Date with payment of double the ordinary renewal fees;
  2. Registration fee payments that were made before the Effective Date which were due on or after the Effective Date, or renewal applications made before the Effective Date which became due (i.e., the valid period of trademark registrations expires) on or after the Effective Date; and
  3. Renewal fee payments for the second term that became due on or after the Effective Date where the renewal applications have been filed (i.e., the payment of the first installment of the renewal fees has been made) before the Effective Date.

Requests for trademark registrations or renewal applications subject to the revised fees that have been received by our firm from January 19, 2016 (when the JPO announced the Effective Date) to March 31, 2016, will, in terms of cost efficiency, be carried out for payment or renewal procedures before the JPO on or after the Effective Date, unless otherwise requested by clients or there are special reasons not to do so.

 

(3) Fees applicable to individual cases

Please contact us if you have any questions or need clarification on actual fees applicable to individual cases.

 

II. Extensions of Response Periods to Notifications of Reasons for Refusal of Patent and Trademark Applications

1.       Patent applications

(1) Requesting an extension of time for a Notification of Reasons for Refusal
within the response period

Before April 1, 2016, extensions to response periods were allowable for a month per a request when there wass a justifiable reason for being unable to respond to a Notification of Reasons for Refusal within the time period. However, the extensions were changed as follows.

 

<For applicants residing abroad >

The response period may be extended for two months by submitting a first request, and may be further extended for another one month by submitting a second request (for a maximum time extension of three months). Both the first and second requests for extension may be submitted at the same time. Moreover, providing a justifiable reason for submitting a request will no longer be necessary.

 

(2) Requesting an extension of time for a Notification of Reasons for Refusal
whose response period has lapsed

After the Effective Date, an extension of time for a Notification of Reasons for Refusal whose response period has lapsed may be made if a request is submitted within an allowable time period (two months).  Regardless of whether the applicant resides in Japan or abroad, the response period may be extended for two months by submitting a request. Providing a justifiable reason for submitting a request is no longer necessary, and a fee (51,000 JPY) higher than the fee for an extension request (2,100 JPY) for (1) above is incurred when requesting this extension of time.

However, an extension under the lapsed response period cannot be requested when an extension of (1) above is granted; nor can it be requested when having responded within the original response period.

 

2.       Trademark applications

Requesting an extension of time for a Notification of Reasons for Refusal
whose response period has lapsed

Similar to patents, on the Effective Date, an extension of time for a Notification of Reasons for Refusal for trademark applications whose response period has lapsed can now be made if a request is submitted within an allowable time period (two months) by paying 4,200 JPY.  Refer to paragraph II. 1.(2) above for details.

 

(The aforementioned also now applies to requests for extensions of time for Notifications of Provisional Refusal of international trademark registration applications.)

 

3.       Cases to which the new changes will be applied

Paragraphs 1. and 2. above are applied to cases in which the response periods of Notifications of Reasons for Refusal (including those issued prior to the Effective Date) lapse on or after the Effective Date, and requests to extend a response period were submitted on or after the Effective Date (in the above 1.(1), this will be for the first request if the applicant resides abroad).

However, from the Effective Date and onwards, there will be no change to the current response periods for:

(i) Notifications of Reasons for Refusal issued after Appeal Requests against Decisions of Refusals (including those in the Internal Reconsideration Examination stage), and
(ii) Notifications of Reasons for Refusal issued against an Application for Registration of Extension of the Duration of a Patent Right.