The Japan Patent Office (JPO) has announced the following relief measures regarding the handling of procedures related to patents, utility models, designs and trademarks that are affected by the novel coronavirus, COVID-19.
 
Although the following measures (1) and (2) are consistent with the relief measures that have been generally available under the respective laws, and are not newly established, the announcement has clarified that these measures may be available in COVID-19-related circumstances.

(1) Designated Periods
Procedures that were completed after the expiry of designated periods may be deemed effective, depending on specific circumstances, if a document is attached explaining the reasons that it was not possible to complete the procedure within the designated period owing to the effects of COVID-19.
 
(2) Statutory Periods
Procedures that failed to be completed within statutory periods may be completed within the remedial periods*, depending on specific circumstances, if a document is submitted explaining the reasons that it was not possible to complete the procedure owing to the effects of COVID-19.
 
*Remedial periods are provided individually for respective procedures.  Please refer to the JPO website for more details (please see the link below).
 
For example, in the case of a Response to a Notice of Reasons for Rejection, while the period for filing a Written Argument, which is a designated period, is covered by the above remedial measure (1), the period for filing an Amendment, which is a statutory period and for which the remedial period is not provided, is excluded from remedial measures (1) and (2).  We have made inquiries to the JPO regarding this matter and it has been suggested to us that the Examiner in charge of an individual case should be consulted regarding the possibility of remedial measures for the period for filing an Amendment in that specific case.
 
(3)  Procedures for Cases in which Stamps or Signatures Required on Certificates for Receiving Exceptions to Lack of Novelty Cannot Be Obtained in Time
In cases in which stamps or signatures for certificates for receiving exceptions to lack of novelty cannot be obtained in time as a result of the effects of COVID-19, the document with the proper stamps or signatures can be filed subsequently to preliminary submission of the document without any stamps or signatures by the due date, together with a Statement, as soon as the document with stamps or signatures becomes available.
 
Updated on Jan 13, 2021
As of December 2020, the JPO has simplified the procedure for claiming exceptions to lack of novelty so as to dispense with the official seals and written signatures that were previously required for the certificates. This also applies to cases in which the submission of certificates with official seals and written signatures has been deferred due to the effects of COVID-19, and any applicants who have already provisionally filed a certificate without said official seals and signatures no longer need to supplement the document with official seals and signatures.
 
(4) Extensions of Designated Periods and Remedial Measures for Trial/Opposition Cases
For procedures related to trial or opposition cases, a request can be filed for an extension of a designated period by up to one month.  In a case in which a further extension of the period is needed, a further request may be filed for the same case.  When a request is filed seeking remedy for failing to complete a procedure within the designated period, the Trial Board will assess each case based on the status of the proceedings, the reasons for the petition and any other relevant factors.
 
The following examples of situations in which extensions are unavoidable owing to the effects of COVID-19 have been presented:
- when a corporation (claimant) or agent was closed for business;
- when a library holding a document required for a procedure was closed;
- when a research center or the like for collecting experimental data required for a procedure was closed; and
- when an additional period is required for completing a procedure due to the introduction of remote work (telework) in a corporation (claimant) or agent, as a result of which additional time is required for mutual communications / establishment of the remote working environment / printing out of meeting materials, and the like.
 
(5) Procedure for Receiving Fee Reductions (Updated on Jan 13, 2021)
As of December 2020, the official seals and written signatures that were previously required on documentation for requesting fee reductions for examination/patent fees, are no longer required.
 
(6) Procedures Requiring Official Seals (Updated on Jan 13, 2021)
In addition to the procedures for receiving exceptions to lack of novelty and for receiving fee reductions, the JPO has eliminated or is planning to eliminate the need for official seals in many procedures that have hitherto required them, except for those that would be seriously susceptible to forgery, such as procedures for changing the name of an applicant or for assigning rights to a third party, and those in which official seals are required by international treaty.
 
For further details, please see the JPO website:

https://www.jpo.go.jp/e/news/koho/saigai/covid19_procedures.html

https://www.jpo.go.jp/e/news/koho/covid19.html
 
 
Related articles:
Apr. 3, 2020   Remedies for procedures before the Japan Patent Office affected by COVID-19

 
Summary prepared by International Information Group
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