Japanese Patent FAQs
Office ActionUpdate 2020.11.5
Q.When is the deadline for filing a response to an office action?
If you receive a Notification of Reasons for Rejection, it is necessary to file a response to the office action within three month from the forwarding date of the notice.
If you receive a Decision of Rejection, it is necessary to file an appeal together with an amendment (and an appeal brief) within four months from the forwarding date of the notice. Although an amendment must be filed together with the appeal, it is possible to defer the filing of an appeal brief for approximately one month or so. In this case, the JPO will issue an official order, normally within approximately two weeks, stating that the applicant must submit an appeal brief within 30 days from the forwarding date of the official order.
Q.Is it possible to extend the deadline for filing a response to the office action?
Yes, three months extension is available when the extension is filed proactively before the initial deadline for responding to a Notification of Reasons for Rejection. It is first possible to obtain a two-months extension by a single request. Thereafter, applicants who reside outside Japan may file one additional request for a one-month extension of time, if necessary. The applicant may also file the two requests simultaneously, i.e., thereby receiving the maximum three months extension of time.
On the other hand, it is not possible to extend the deadline for responding to a Decision of Rejection.
Q.Is it possible to extend the deadline for filing a response to the office action after the deadline?
Yes, the JPO accepts a request for extension of time even after the deadline, if it is within two months from the deadline. For applicants who reside outside Japan, one request for extension of time extends the time for two months. No specific reason will be required even though the request is filed after the deadline. The official fee for such a request is 51,000 yen.
Once an appeal is filed, it is not possible to file a request for extension of time for office actions after the deadline has passed.
Q.What is the JPO’s fee for requesting an extension of time for filing a response to the office action?
The following is a table of the JPO’s fee for filing a response to the office action, in which the USPTO’s fee is also listed for comparison:
|Two Month Extension of Time||Three Month Extension of Time|
|2,100 JPY (Approx. 20 USD)||4,200 JPY (Approx. 40 USD)|
USPTO Patent Extension of Time Fees
|Description||Fee (USD)||Small Entity Fee (USD)||Micro Entity Fee (USD)|
|Extension for response within first month||$220||$110||$55|
|Extension for response within second month||$640||$320||$160|
|Extension for response within third month||$1,480||$740||$370|