Changes in Extension of Time Limit for OA Response – Effective on April 1, 2016

Japan Patent Information Committee
HIROSE, Shinobu (Ph.D., Ms.)  Patent Attorney of Patent Division

Regarding a request for extending the time limit for responding to the office action that is made after the enforcement of the Act to Partially Amend the Patent Law and Other Legislation 2015, the Japan Patent Office has announced operational changes, as set forth below.

(1) A request for extending the time limit made “within the time limit for responding to the office action”
In a case where an applicant is a resident abroad, the time limit for responding to an office action can be extended by two months upon a first request, and one more month upon a second request (a maximum of 3-month-extension is available). In addition, the two requests can be filed concurrently.  (This will be the change from the current operation, i.e. a one-month- extension is available by filing one request, which may be repeated three times to obtain an extension of up to 3 months.)

In a case where the applicant is a domestic resident, the time limit can only be extended by two months through filing a single request.

In either case, the applicant will be required to pay 2,100 yen to the Japan Patent Office upon filing one request for extending the time limit.

(2) A request for extending the time limit “after the time limit for responding to the office action”
In accordance with the stipulation of Article 5, item 3 of the Act to Partially Amend the Patent Law and Other Legislation 2015, even after the time limit for responding to the office action has lapsed, extension is possible by filing a request if it is made within a two-month period (a newly provided measure as a remedy for the failure to file a request for extending the time limit within the time limit for responding to the office action). However, if the extension described under (1) is already accepted, no request for extension under the provision of (2) can be made after the time limit for responding to an office action has lapsed.

Regardless of whether the applicant is a domestic resident or a resident abroad, the time limit for rresponding to an office action can be extended by two months through filing one request. No further extension is possible.

In the case of (2), the applicant will be required to pay a higher fee (51,000 yen) to the Japan Patent Office.

The new operation will be applied only when the time limit for responding to an office action is after the enforcement date of the Act to Partially Amend the Patent Law and Other Legislation 2015 (which is April 1, 2016) and if a request for extending the time limit for responding to an office action is made after this enforcement date.

Note that the existing operation will apply to all cases where a request for extension of the time limit is made before the enforcement date.

<CAUTION>
Furthermore, it should be carefully noted that the operation change explained above is not applied to the time limit for responding to an Office Action issued after filing of an appeal against a decision of rejection (including an Office Action issued during reconsideration by examiner before appeal) or to an Office Action rejecting an application for registration of patent term extension.

The existing operation is as follows: in a case where an applicant is a resident abroad, the time limit can be extended up to three times (one month per request and up to three months at the maximum) when the requirement (i) or (ii) below is satisfied, and in a case when an applicant is a domestic resident, the time limit can be extended once (one month at the maximum) when the requirement (i) below is satisfied:
(i) obtaining experimental data being compared with an invention disclosed in a citation cited in an Office Action;
(ii) translating a document.