Notification regarding Extension of Time Limit for Response to Office Action

The Japan Patent Office (JPO) announced on December 25, 2015, that it will relax the requirements for a patent applicant to obtain an extension of the time limit for responding to a Notice of Reasons for Rejection issued in the examination of a patent application, in line with the next revision to the Japan Patent Law, which was promulgated in 2015 and will likely come into effect on April 1, 2016.

(A) Current practice

(a1) Extension request before or on the normal due date
A foreign applicant can extend the due date for responding to a Notice of Reasons for Rejection (three months from the mailing date of the Office Action) by request in monthly increments, for a maximum of three months, while a domestic applicant can extend the due date (60 days from the mailing date of the Office Action) by request for only one month. In either case, a request is allowed only when there is a plausible reason that the applicant is unable to respond to the Office Action by the normal due date.

(a2) Extension request after the normal due date
Extension request after the normal due date is not allowed for any reason.

(B) New practice

(b1) Extension request before or on the normal due date
A foreign applicant will be able to extend the due date for responding to a Notice of Reasons for Rejection by filing a first request for a two-month extension and then filing a second request for an additional one-month extension, the maximum extension being three months in total, while a domestic applicant will be able to extend the due date by filing a single request for a two-month extension. In either case, no reason is necessary for obtaining such an extension.

(b2) Extension request after the expiry date of the normal time limit
If no response (amendment and/or argument) has been filed to an Office Action and no extension has been requested by the normal due date, the applicant (either foreign or domestic) will be able to retroactively request a two-month extension, by filing a request within two months from the normal due date.

(C) Effective date

Although the JPO has not yet issued a statement in this regard, the new practice is likely to be applied to any Notice of Reasons for Rejection of which the normal due date (three months from the mailing date for a foreign applicant, and 60 days from the mailing date for a domestic applicant) falls on or after April 1, 2016, and for which the applicant files an extension request on or after April 1, 2016.

(D) Extension request fee

The official fee for requesting extension of a due date has not yet been determined, although according to the JPO’s announcement, the fee for requesting an extension after the normal due date will likely be considerably higher than for requesting an extension before the normal due date.

(E) Others

This change in practice regarding extension of a due date for responding to a Notice of Reasons for Rejection will only apply to the examination stage. With regard to other types of Office Actions, such as Notices of Reasons for Rejection issued in the pretrial examination or appeal trial stage or Decisions of Final Rejection, no change will be made in the practice for extending the due date.

In any event, we will update you with further details as and when they are announced by the JPO.