The Japan Patent Office (JPO) announced on April 3 the remedies for applicants and registrants who cannot proceed within the designated period caused by the COVID-19 coronavirus. The period designated by JPO is to be applied flexibly, but the statutory time limit is to be treated as “grounds not attributable to the applicant” as stipulated in the Trademark law. In other words, since no measures are taken to automatically extend the deadline, procedures must be taken within the following recovery periods.
Deadline: within 6 months from the filing date of an application in the first country
Extension: Not possible
ONM Tips: The priority claim period is not extended. It is mandatory to follow normal procedures.
Deadline: within 3 months from the filing date of an application in Japan
Extension: Possible. Within 2 months from the time it becomes possible, but within 6 months after the deadline passes.
ONM Tips: Please order the priority document to your Patent Office preferably within one month from the filing date of the Japanese trademark application for a safety purpose.
Deadline: Period specified by the examiner
Extension: If an application or an appeal case pending before the Patent Office becomes unable to be processed within the designated period due to the effect of a new type of coronavirus infectious disease, the application or appeal case shall be treated as a valid procedure even if the designated period is exceeded, if it is deemed necessary, by attaching a document explaining the circumstances under which the procedure could not be performed.
ONM Tips: The deadline to respond to an office action is designated by the Examiner. By filing simple request of extension, the examination could be withheld.
Deadline: from 6 months prior to the expiration date, and a six month grace period
Extension: Possible. Within 2 months from it becomes available. It is valid for only within 6 months after the lapse of the prescribed period
ONM Tips: Failure of renewal in the period could be rescued, but only within one year from the expiry date.
Deadline: within 3 months from the date of decision for refusal
Extension: Possible. Within 2 months from the time it becomes possible (2 months for overseas residents). It is limited to within 6 months after the lapse of the prescribed period
ONM Tips: Substantive grounds can be submitted later, but a stop-gap appeal should be filed before a deadline.
Deadline: within 30 days from the date of decision for registration
Extension: Possible. Within 2 months from the time it becomes possible (2 months for overseas residents). It is limited to within 6 months after the lapse of the prescribed period
ONM Tips: In practice, there is a two month grace period for the payment of the registration fee, so even if instructions cannot be issued within the time limit, a substantial grace period is possible.
Deadline: within 3 months from the date on which the international registration was rescinded
Extension: Possible. Within 2 months from the time it becomes possible. It is limited to within 6 months after the lapse of the prescribed period.
