MADRID PROTOCOL: Responding to the Notification of the Provisional Refusal

1.     Deadline for Response

You are given Three-Months (3-months) from the date of pronouncement with a possibility for a one-month extension (1-month) to respond to the refusal.

Example:

*Note: If the deadline falls on a weekend or a Japanese National Holiday, the deadline will be the following business day.

2. Request for an Extension

As mentioned above, you are given a one-month extension if a request is made within the original deadline. No further extension is permitted beyond the one-month.

3. Required Information

We will need a copy of the Notification of Provisional Refusal to begin the process for responding to the JPO. We will then draft a Power of Attorney for you to sign and send back to us. If requested, we will provide an analysis of the reason for refusal and provide comments on ways to overcome it. Once you approve the content, we will submit a response to the JPO.

4. Fees

The cost for responding to a Notification of Provisional Refusal will vary depending upon the number of classifications for the goods and services and the reason for refusal.

By far the most common reason for refusal is on the grounds that an application does not comply with Section 6-1 of the Japanese Trademark Law, complying with the requirement for an ‘unambiguous and clear description of goods or services.’ If the refusal is accompanied by an examiner’s suggestion, and we need only to file an amendment based on her suggestion, Keisen offers a competitive "basic fee" of $600US for such a response, although the final cost will vary depending on the number of classes of goods/services.

For an estimate of cost for this and other reasons of refusal, please give our office a call.