When you receive Office Action to Trademark Application from JPO – Request for Time Extension for Response to Office Action

Request for time extension of period specified by Japan Patent Office to file response to reasons for refusal to trademark application

I had received Notice of Reason for Refusal for my trademark application from the Japan Patent Office, and I just realized that the response deadline was yesterday. I was inattentive. I wonder if this application will be rejected and can’t be registered. The JPO is very strict about deadlines.
The JPO may allow you to request an extension of deadline to respond to the notice of reasons for refusal. If you follow the proper procedures, you can have the response period extended.
Can I do that? Tell me more specifically about that.
目次 Index
    1. Request for time extension of period specified by Japan Patent Office to file response to reasons for refusal to trademark application
  1. Extension of deadline for trademark application
    1. Extension of deadline to respond to Notice of reasons for refusal
    2. Extension of Deadline for Payment of Registration Fee
  2. Summary

Extension of deadline for trademark application

After an application for trademark registration is filed with the JPO, the JPO examines the application.

During the examination stage, if there are reasons that registration is not granted, the applicant will receive a notice of reasons for refusal.

In response to the notice, the applicant may file an amendment or a written opinion within a specified period.
If the examiner determines that the reasons for refusal have been overcome based on the content of the amendment or written opinion, the trademark is registered.

The response period for filing the response is set at 40 days (3 months for overseas applicants) from the date of dispatch of the notice of reasons for refusal.

Therefore, it is important to keep track of the deadline so that you can submit response within the response period upon receiving a notice of reasons for refusal.

Extension of deadline to respond to Notice of reasons for refusal

The response period can be extended by submitting a “request for extension of response period” to the JPO and paying a fee.

*Trademark applications for which a request for extension of response period can be filed include both national trademark applications and international applications for trademark registration.

There are two ways to request an extension: 1) within the response period, or 2) after the response period has elapsed.

1)Request for time extension within response period to Notice of reasons for refusal

To both applicant of a domestic resident and an overseas resident, an extension of one month of the response period is granted by submitting a single extension request within the response period to the Notice of Reasons for Refusal.
Even if the last day of the response period falls on a Sunday or any other day on which the Office is closed, the one-month extension will be granted from the day following the last day of the response period.

No reasonable grounds are required to request the extension.

In this case, the fee paid to the JPO for requesting the time extension is JPY2,100.

2)Request for time extension after expiration of response period to Notice of reasons for Refusal

To both applicant of a domestic resident and an overseas resident, an extension of two months of the response period is granted by submitting a single extension request after the expiration of the deadline for response to the Notice of Reasons for Refusal.

Even if the last day of the response period falls on a Sunday or an other day on which the Office is closed, the two-month extension will be granted from the day following the last day of the response period.

The request for extension may be filed within two months from the day following the last day of the response period.

No reasonable grounds are required to request the extension.

In this case, the fee paid to the JPO for requesting the time extension is JPY4,200.

3)Request for time extension both within and after expiration of response period

Both requests (1) and (2) may be used.

When the request (1) is filed to extend the response period, the request (2) for further extension can be filed within two months from the day following the last day of the response period after the extension.
Please note that the extension from the date of the request is not granted .

However, if the written opinion is filed within the initial response period or within the response period extended in (1), the request for an extension after the response period in (2) cannot be made.

Example

For example, let us assume that the date of dispatch of the notice of reasons for refusal is September 1, 2022.
In that case, the response period for domestic residents is 40 days after the day following September 1, i.e., October 11, 2022.

If you wish to request an extension using (1), you must submit a request for extension of time to the JPO by October 11, 2022.
The response period will then be extended to November 11, 2022.

If an extension is requested using (2), the response period will be extended by a total of three months, i.e., until January 11, 2023.

The above request for extension of the response period to a notice of reasons for refusal can be filed only at the examination stage of an application for trademark registration.

The deadline for responding to a notice of reasons for refusal after an appeal against examiner’s decision of refusal of a trademark application may be extended by up to one month for overseas residents only, by filing a request for extension within the time limit for responding.

Extension of Deadline for Payment of Registration Fee

When the JPO determines that there are no grounds for refusal after the examination of a trademark application, the applicant will receive a registration decision from the JPO.
If the registration fee is paid at that time, the trademark application will be registered.

Request for 30-day extension of deadline for payment of registration fee

In principle, the registration fee must be paid within 30 days of the receipt of the registration decision.

However, the deadline for payment of the registration fee may be extended for up to 30 days by submitting a “Request for Extension of Time Limit” within 30 days after the receipt of the registration decision.

In this case, the JPO fee for requesting time extension is 2,100 yen.

Request for two-month extension of deadline for payment of registration fee

For trademarks only, it is also possible to request a two-month extension of the deadline for payment of the registration fee.

The request can only be made within 2 months from the expiration of 30 days after the receipt of the registration decision (or within 2 months after the expiration of the extended period if the extension is requested within 30 days after the receipt of the registration decision as mentioned above).

In this case, the JPO fee for requesting an extension is 4,200 yen.

I see that I can extend the response deadline by submitting a request for extension of deadline to the Office. I’ll get right on it.

Summary

It is very important to keep track of deadlines to the JPO for a trademark application from filing to registration, as well as for renewals thereafter.
Even if you successfully file an application with the Patent Office on your own, failure to manage the subsequent deadlines can result in rejection of your application or even expiration of your trademark rights.

If you have any concerns or problems regarding deadlines for trademark applications with the JPO, please contact us using Request Form.

supervisor
Supervisor for the article:
HARAKENZO WORLD PATENT & TRADEMARK
大阪法務戦略部長 八谷 晃典
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