From April 1, 2023, an applicant can suspend an examination of a prescribed divisional application upon request until the result of the reexamination or the appeal of the parent application comes out.

Applications subject to this operation are divisional applications for which a request for examination is filed on and after April 1, 2023 and which is not yet examined, and which satisfy all the requirements below.

– The application is a divisional application filed after a decision of rejection of the parent application.

– An appeal against the decision of rejection of the parent application has been filed, and the parent application is pending in the reexamination or appeal against the decision.

– It is convenient to wait for the result of the reexamination or appeal of the parent application.

 

 

 

Applicant will be able to consider how to respond in a divisional application based on the result of the appeal against the decision of rejection of the parent application, and build a more efficient and effective strategy.

In examination, it may be more convenient to examine a divisional application in view of the result of the reexamination or appeal of the parent application. In that case, it can be expected that the burden of examination on the applicant side is reduced.

 

 

 

Applicants need to complete both of the following procedures for the divisional application subject to this operation within five business days from the date of request for examination of the divisional application.

(1)  Submission of a written statement explaining the circumstances regarding application of this operation (Article 54(1) of Patent Act)

(2)  Send through the dedicated form a statement explaining the circumstances regarding application of this operation (Article 54(1) of Patent Act)

 

 

 

If you have any questions or concerns regarding this operation, please feel free to contact us.

 

 

 

From April 1, 2023, the restoration requirements related to remedial provisions applicable after the expiration of a time limit will be revised from “existence of a legitimate reason (due care)” to “unintentional”. A request for the restoration requires payment of a restoration fee.

 

*Applications of which time limits are expired on or before March 31, 2023 require “existence of a legitimate reason (due care)” as the grounds for restoration as before.

 

 

 

The following 18 procedures will be subject to the revision.

 

(1)  Submission of a translation of a foreign-language application (Article 36-2 of Patent Act)

(2)  Priority claim based on a patent application (Article 41 of Patent Act)

(3)  Priority claims as under the Paris Convention (Article 43-2 of Patent Act)

(4)  Request for examination of an application (Article 48-3 of Patent Act)

(5)  Late payment of a patent fee and a patent surcharge (Article 112-2 of Patent Act)

(6)  Submission of a translation of an international patent application filed in a foreign language (Article 184-4 of Patent Act)

(7)  Notification of appointment of a patent administrator for an overseas resident filing an international patent application (Article 184-11 of Patent Act)

 

 

(8)  Priority claim based on an application for utility registration (Article 8 of Utility Model Act)

(9)  Priority claim as under the Paris Convention (Article 43-2 of Patent Act applied mutatis mutandis pursuant to Article 11 of Utility Model Act)

(10)  Late payment of a registration fee and a registration surcharge (Article 33-2 of Utility Model Act)

(11)  Submission of a translation of an international application for utility model registration filed in a foreign language (Article 48-4 of Utility Model Act)

(12)  Notification of appointment of an administrator for an overseas resident filing an international application for utility model registration (Article 184-11 of Patent Act applied mutatis mutandis pursuant to Article 48-15 of Utility Model Act)

 

 

(13)  Priority claims as under the Paris Convention (Article 43-2 of Patent Act applied mutatis mutandis pursuant to Article 15 of Design Act)

(14)  Late payment of a registration fee and a registration surcharge (Article 44-2 of Design Act)

 

 

(15)  Application for registration of renewal of a trademark right (Article 21 of Trademark Act)

(16)  Late payment of a second installment registration fee and a registration surcharge (Article 41-3 of Trademark Act)

(17)  Application for registration of renewal of duration of right based on defensive mark registration (Article 65-3 of Trademark Act)

(18)  Application for registration of reclassification (Article 3 of Supplementary Provision of Trademark Act)

 

 

 

Within two months from the date on which the remedial procedure after a time limit becomes available and within one year from the expiration of the procedure period (within six months in case of a procedure related to trademarks), an applicant, etc. must complete the procedure for which the prescribed time limit was not met and must submit a statement of the grounds for restoration that describes the reason for not having been able to complete the procedure within that time limit.

However, an applicant, etc. who seeks restoration of the right of priority must file an application and a priority claim within two months from the expiration of the time limit for filing the application claiming priority.

Also, an applicant, etc., who wishes to restore the right of priority claimed in an international patent/utility model application at the JPO as a designated Office, must submit a statement of the grounds for restoration within one month from the date on which the time limit for the submission of national documents expired (if a special time limit for submitting translations applies, one month from the expiration of the special time limit) (if a request for examination has been made within the time limit for the submission of national documents, one month from the date of request).

 

 

 

Restoration fees (official fee) required for filing a statement of the grounds for restoration are as follows.

Patent: JPY 212,100

Utility Model: JPY 21,800

Design: JPY 24,500

Trademark: JPY 86,400

 

 

 

Restoration fees will be waived if there is a reason that cannot be attributed to a person who performs the procedure (hereinafter, “reason beyond one’s control”) and the reason beyond one’s control can be confirmed by a document evidencing the fact.

When applying for remedy due to the reason beyond one’s control, the applicant, etc. must file a statement of the grounds for restoration together with a written statement that the reason for not having been able to perform the procedure falls under the reason beyond one’s control.

However, application for remedy due to the reason beyond one’s control may require relatively large workload and our fee may exceed the restoration fee to be waived. Therefore, please consult us in advance.

 

If you have any questions or concerns regarding this matter, please feel free to contact us.

 

 

Edited by Makoto Iwata