February 12, 2016

Trademark News

JPO Announces Decrease of Trademark Registration/Renewal Fee and Additional Options for Extending Deadline for Responding to Office Action

The Japan Patent Office (JPO) announced that it will decrease the trademark registration fee and the renewal fee. The JPO also announced that the applicants will have more options for extending deadlines for responding to office actions, by allowing an applicant to file a request for extension even after the deadline has passed. These changes will take effect on April 1, 2016.

Decrease of trademark registration/renewal fee

According to the JPO, the official fee that is payable to the JPO at the time of registration of a trademark, as well as the official fee payable to the JPO at the time of renewal of a trademark registration, will be decreased as follows:

The change of fees will take effect on April 1, 2016.

It should be noted that the new fees will apply to existing trademark applications and registrations, provided that:

(a)     The fee is paid on or after April 1, 2016; and

(b)(1)     In case of a registration fee, the fee is paid within:
          (A)     30 days of delivery of notice of allowance; or
          (B)     60 days of delivery of notice of allowance, if the applicant files a request for extension accompanied by an extension fee of 2,100 JPY; or

    (2)     In case of a renewal fee, the renewal due date (expiration date) is on or after April 1, 2016.

Therefore, if an applicant receives a notice of allowance from the JPO in February 2016, it would be less expensive if the applicant seeks an extension of the payment deadline (and pays 2,100 JPY) and then pays the registration fee on or after April 1, 2016.

Additional options for extending deadlines for responding to office actions

The JPO also announced that trademark applicants will have additional options for extending deadlines for responding to office actions.

Currently, if a trademark applicant domiciled outside Japan receives an office action from the JPO, the applicant is given 3 months from the issuance date of the office action. The applicant may further obtain a one-month extention, by filing a request for extension (accompanied by an extension fee of 2,100 JPY) by the initial deadline. This extension is granted only once.
Therefore, an applicant domiciled outside Japan currently has a maximum of 4 months for responding to an office action.


Effective on April 1, 2016, a trademark applicant would be able to seek a two-months extension. This two-months extension will be granted, if the applicant files a request for extension (accompanied by an extension fee of 4,200 JPY) within the two-months period following the initial deadline. This extension is granted only once.
Thus, an applicant who missed the initial deadline will nevertheless be saved, as long as the applicant files a response and a request for extension within two months from the initial deadline.


It should be noted that the one-month extension under the current system will still be available on and after April 1, 2016, and an applicant will be able to seek a two-months extension in addition to the one-month extension. Thus, an applicant domiciled outside Japan will have a maximum of 6 months for responding to an office action, by:

(a)     filing a first request for extension (and paying 2,100 JPY) within 3 months from the issuance date of the office action, which results in a one-month extension; and

(b)     filing a second request for extension (and paying 4,200 JPY) within 6 months from the issuance date of the office action, which results in an additional two-months extension.


Written by Mr. Yusuke Inui (Attorney at Law, Patent Attorney))