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Issue 140 | December 8, 2003
Important Changes to Japanese Patent Law Effective April 1, 2004


Application, Examination and Annuity Fee Changes
The Japanese Patent Office has made significant changes in fee structure in an attempt to balance the cost of filing, examination and maintenance and encourage strategic acquisition of patents in Japan. Under the new scenario, while the cost of requesting examination will increase 100% and the first few years of maintenance fees will decrease as much as 80%, the overall effect will be to lower the total cost of obtaining a patent in Japan by about 20%.

New Refund System for Examination Fees
Unlike the United States, Japan has a deferred examination system. A request for examination must be filed within three years of filing. However, statistics show that the current “wait time” between request for examination and issuance of the first office action is nearly two years.

The new law will introduce a system for requesting a refund of part of the examination fees upon withdrawal of an application after a request for examination has been made but before substantive examination has begun. The amount of the refund is expected to be 50%. The request for refund must be made within six months of the date of withdrawal. Therefore, requests for refunds may be made after April 1, 2004 for applications withdrawn within the six months prior to the effective date of the law change, i.e. after October 1, 2003.

Valuable Practice Tips
The increased examination fees and reduced maintenance fees apply to patents filed after April 1, 2004. Note, however, there is no need to rush to file requests for examination before the April 1, 2004 deadline. As long as the filing date is prior to April 1, 2004, the lower examination fees will apply.

In fact, because the reduced annuities only take effect for cases in which the request for examination is made after April 1, 2004, it makes sense to wait to request examination until after April 1, 2004 where possible.

Note particularly that applications filed before April 1, 2004 are entitled to both the lower examination fee and the lower maintenance fees, as long as examination is requested after April 1, 2004. For this reason, where possible it may make sense to rush to file Japanese patent applications before April 1, 2004.

For more information on international filing strategies for your staff and clients, contact the author of this issue, Marie Gilfillan (mgilfillan@darbylaw.com), at Darby & Darby P.C. in New York, New York.

The information contained in this email is provided for informational purposes only and does not represent legal advice. Neither the APLF nor the author intends to create an attorney client relationship by providing this information to you through this message.

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