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Remedial Measures at the JPO in Circumstances Affected by COVID-19

Apr. 28, 2020 (Last Updated: May 28, 2020)

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) Suspension of Over-the-Counter Services at the JPO
As a general rule, over-the-counter services for procedures such as filing applications have been suspended*.  Only electronic filings (for those having a digital certificate) or filings by mail are now accepted by the JPO.  Further, it has been announced that interviews with Examiners or Trial Examiners will be conducted through TV interviews alone.
 
* We have made inquiries to the JPO regarding this matter and it has been suggested to us that over-the-counter services will, as a rule, not be available for procedures conducted by corporations, patent firms, patent attorneys or the like.
 
(Notes)
Procedures at the JPO can be conducted only electronically or via mail.  It should be noted that the service hours at Postal Offices have also been shortened.  Further, in the case of PCT applications to be filed in the JPO, it should be noted that such applications need to be posted at Postal Offices well ahead of the expiry date of the priority period, taking into account the required mailing time.
 
Updated on May 28, 2020
Following the lifting of the state of emergency in Tokyo on May 25, 2020, the JPO has announced that it will resume the over-the-counter services for official filings as of June 1, 2020.
 
(4)  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.
 
(5) 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.
 
For further details, please see the JPO website:
<Handling of procedures affected by COVID-19 Coronavirus>
https://www.jpo.go.jp/e/news/koho/saigai/covid19_procedures.html
<Application Procedures in relation to the Coronavirus disease 2019 (COVID-19)>
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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