Revision of the Trademark Act of Japan in 2015 and Change in Trademark Practice (Reduction of Official Fees and Changes in Extension of Time Limit for OA Response) – Effective on April 1, 2016

By Emi Aoshima

1.  Reduction of Official Fees

The official fees for Japanese trademark registrations and renewals are to be reduced by approximately 25% and 20%, respectively, as detailed below.

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

Targeting the accession of Singapore Treaty on the Laws of Trademarks (STLT), the Japan Patent Office (JPO) has announced operational changes regarding a request for extending the time limit for responding to office actions, as detailed below.

(1) A request for extending the time limit made “within the time limit for responding to the office action”

Under the current practice, only in cases where an applicant is a resident abroad, the time limit for responding to an office action can be extended by one month, one time only.

Under the new practice, regardless of whether the applicant is a domestic resident or a resident abroad, the time limit for responding to an office action can be extended by one month by filing a single request, without any reasonable reason being requested. The official fee for such a request is 2,100 yen as usual.

[In the case of the above (1)]             Domestic Resident: DR       Resident Abroad: RA

(2) A request for extending the time limit “after the time limit for responding to the office action”

Under the current practice, a request for extending the time limit after the time limit for responding to the office action is not available.

Under the new practice, even after the time limit for responding to the office action has lapsed, an extension is possible by filing a single request if it is made within a two-month period, regardless of whether the applicant is a domestic resident or a resident abroad. If such a request for extending the time limit is made, the time limit for responding to an office action can be extended by two months from the original deadline (by two months from the new deadline, if a request for an extension of the time limit as stated in the above (1) is made) by filing a single request, without any reasonable reason being requested. The official fee for such a request is 4,200 yen.

[In the case of the above (2)]             Domestic Resident: DR          Resident Abroad: RA

[In the case of a combination of the above (1) and (2)]

Domestic Resident: DR          Resident Abroad: RA

Please note that the change stated in the above (1) and (2) will be applied to provisional refusals issued against the Japan part of an International Registration filed under the Madrid Protocol as well as those issued against applications filed with the JPO directly.

The new operation will be applied only when the time limit for responding to an office action is after the enforcement date of the revised Trademark Act of 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 new operation is not applicable to the time limit for responding to an office action issued after filing an appeal trial against a decision of refusal.