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) |