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Japan April 1, 2022 Transitional measures for revision of patent, trademark registration, and renewal registration fees

Jan 28, 2022


Japan April 1, 2022 Transitional measures for revision of patent, trademark registration,
and renewal registration fees


 

With the enactment of the Act for Partial Revision of the Patent Act on April 1, 2022, patent fees, trademark, and renewal registration fees will be revised (increased). The transitional measures for the revision of these fees are summarized below for your reference.

 

Registration fee for establishment of patent right (annuity for the 1st-3d years)

 

Payment Date

Fee

Terms and Conditions

General rule

Until March 31, 2022

Old fee

 

  From April 1, 2022

New fee

 

Exceptions

 From April 1, 2022

Old fee

The old fee will apply if the date of service of the certified copy of decision to grant a patent is on or before February 28, 2022 and if there is an application for deferment (2-month grace period) or 6 months for reasons beyond one’s control

 

Maintenance annuity for patent rights (4th year and thereafter)

 

Payment Date

Fee

Terms and Conditions

General rule

Until March 31, 2022

Old fee

 

   From April 1, 2022

New fee

 

Exceptions

From April 1, 2022

Old fee

The old fee will apply if the due date is on or before March 31, 2022, and if the payment is made within 6 months after the due date (deferred payment period)

 

Registration fee for establishment of trademark right (for 10 years/payment by installments)

 

Payment Date

Fee

Terms and Conditions

General rule

Until March 31, 2022

Old fee

 

   From April 1, 2022

New fee

 

Exception 1

From April 1, 2022

Old fee

The old fee will apply if the date of service of the certified copy of decision to grant a patent is on or before February 28, 2022 and if there is an application for deferment (2-month grace period) or 6 months for reasons beyond one’s control

Exception 2

In case of late payment by instalments the old fee will apply if the date of service of the certified copy of decision to grant a patent is on or before February 28, 2022, and if the payment for the previous period was made at the old rate

 

Registration fee for renewal of the duration of a trademark (for 10 years/ payment in installments)

 

Date of application for renewal registration and date of payment

Fee

Terms and Conditions

General rule

Until March 31, 2022

Old fee

 

   From April 1, 2022

New fee

 

Exception 1

From April 1, 2022

Old fee

The old fee will apply if the expiration date (renewal deadline) is on or before March 31, 2022, and the Renewal is within 6 months after expiration (deferred payment period)

Exception 2

For the second half of the installment payment, the old fee will apply if the expiration date (renewal deadline) is on or before 3/31/2022, and if the payment for the first half is made on or before 3/31/2022

 

International search fees for PCT international applications, including additional charges

 

International
application date

Fee

Terms and Conditions

General rule

Until March 31, 2022

Old fee

 

From April 1, 2022

New fee

 

 

International preliminary examination fee for PCT international applications

 

Date of payment of the international preliminary examination fee

Fee

Terms and Conditions

General rule

Until March 31, 2022

Old fee

x

   From April 1, 2022

New fee

 

Exceptions

From April 1, 2022

Old fee

Additional fee will be applied if the international preliminary examination fee has been paid at the old rate

 

Please refer to the following figures for details.

 

Outline

Cases where the fees before the revision (old fees) are applied even if payment is made on or after April 1, 2022 (Article 2,3 and 4 of the Supplementary Provisions of the Revised Cabinet)

1. The due date for payment of the patent fee or registration fee is on or before April 1, 2022 (Payment of patent fee, Special Provisions, Article 108(1); Commercial Provisions, Article 18(2))

2. Patent and premium patent fees to be paid in addition if the due date for payment of the patent fee or registration fee is prior to April 1, 2022, (Special Provisions, Article 112; Commercial Provisions, Article 43)

3. If the installment payment of the registration fee (Article 41-2(1) of the Commercial Code) and the renewal registration fee (Article 41-2(7) of the Commercial Code) for the first semester are old fees, new fees will be applied for the second semester accordingly. (Payment by installments, (Article 41-2(1) and (7) of the Commercial Code)

4. International search fees for international applications (including additional fees)

(1) International search fee for international application (including additional fee) is determined based on the international filing date on which the international application was received (PCT Rule 14.1c, 15.3, 16.1f)), if that reference date is earlier than April 1, 2022.

 (2) Preliminary examination fee (including additional fee) is determined based on the payment date of the fees, where the reference date is on or before 1 April 2022.

 

Cases when the revised (new) fees are applied

If the automatic payment system is used and the payment date is set on or after April 1, 2022, the new fees will be applied.

If the period extended by submitting a request for extension of time (max. 30 days) exceeds April 1, 2022, the patent fee and trademark registration fee to be paid on or after April 1, 2022. (Special Provisions, Article 108(3); Commercial Provisions, Article 41(2))

If the installment payment of the registration fee (Article 41-2(1) of the Commercial Code) and the renewal registration fee (Article 41-2(7) of the Commercial Code) for the first semester are new fees, they will be the same for the second semester accordingly. (Payment by installments, (Article 41-2(1) and (7) of the Commercial Code)

International search fees for international applications (including additional fees)

 (1) International search fee for international application (including additional fee) is determined based on the international filing date on which the international application was received (PCT Rule 14.1c, 15.3, 16.1f)), if that reference date is on or after April 1, 2022.

 (2) Preliminary examination fee (including additional fee) is determined based on the payment date of the fees, where the reference date is on or after 1 April 2022.

 

New and Old Fees Policy Guidance

 

Patent related

Patent fees (for the 1st-3d years) 

1. If the 30th day from the date of service of a certified copy of the patent decision is before April 1, 2022 (Article 108(1)), the fee before revision (old fee) shall be paid.



2. If the 30th day from the date of service of a certified copy of the patent decision is before April 1, 2022, and the 30th day of the term extended by a request for extension of the term (Article 108(3)) (hereinafter referred to as the “30-day extension term”) is before April 1, 2022, the following will apply:

  (1) For payments made during the extension period, the fees before the revision (old fees) will be applied.

  (2) If the payment is made within the 6-month grace period due to reasons beyond one’s control (Article 108(4) of the Special Provisions) (hereinafter referred to as “6 months for reasons beyond one’s control”)), the fee before the revision (old fee) will be applied regardless of whether the payment is made before or after April 1,2022.


3. If the 30th day from the date of service of a certified copy of the patent decision is prior to April 1, 2022, and the “30-day extension period” extends beyond April 1, 2022, the following will apply:

  (1) If the 30th day from the date of the notice is before April 1, 2022, the fee before the revision (old fee) shall be paid, and if it is after April 1, 2022, the fee after the revision (new fee) shall be paid.

  (2) If the payment is postponed for 6 months for reasons beyond one’s control (Article 108(4)), the revised fee (new fee) will be applied to the payment during that period.

 


4. If the 30th day from the date of service of a certified copy of the patent decision is before April 1, 2022, and the deferment of payment for 6 months for reasons beyond one’s control is granted, the fee before the revision (old fee) will be applied to the payment during that period (Article 3 of the Supplementary Provisions of the revised Cabinet Order). 


5. If the patent fee payment period extends beyond April 1, 2022, the fee before the revision (old fee) shall be paid until March 31, 2022. After April 1, 2022, the revised fee (new fee) shall be paid. However, if the patent fee is not paid during the patent fee payment period but is paid within either the 30-day extension period or the 6-month period for reasons beyond one’s control, the revised fee (new fee) will be applied.

 

Patent fee (for each year after the fourth year)

It is possible to pay for multiple years at once by the previous year at the old rate to reduce expenditures. If it is clear that the patent right will be maintained in the future, it is recommended to pay the annual fee (for each year after the fourth year) in advance. 

1. If the sixth month after the due date for payment of each year has passed but is still before April 1, 2022, for patent fees and surcharge (additional payment) for each year to be paid after the due date for payment, the fee before the revision (old fee) shall be paid.


2. If the due date of payment for each year is prior to April 1, 2022, but the six-month period for supplementary payment after the due date falls on or after April 1, 2022, for patent fees and surcharged patent fees (additional payment) to be paid within 6 months after the payment period, the fee before revision shall be paid regardless of whether it is paid before or after April 1, 2022 (Article 2 of the Supplementary Provisions of the revised Cabinet Order).


3. If the due date of payment for each year is on or after April 1, 2022, the following will apply:

Until March 31, 2022, payment will be made at the old rate.
During the period from April 1, 2022 to the payment due date, the revised fee (new fee) will be paid.

During the additional payment period of 6 months after the due date, the revised fee (new fee) will be applied for payment of patent fees and surcharge fees. 

Trademarks

1. If the 30th day from the date of service of the decision of trademark registration is before April 1, 2022, the fee before the revision (old fee) shall be paid.


2.
If the 30th day from the date of service of the examiner’s decision of trademark registration is before April 1, 2022, and the payment is made during any of the following periods, such as extended period of 30 days (Article 41(2)), 2-month grace period (Article 41(3)), or 6 months for reasons beyond one’s control (Article 41(4)), the rates before the revision (the old new rates) will apply regardless of whether the payment is made before or after April 1, 2022.


3. If the 30th day from the date of service of the examiner’s decision of trademark registration s before April 1, 2022, and

 (1) the extension period of 30 days extends beyond April 1, 2022, the registration fee before April 1, 2022 (old fee) shall be paid, and the fee after April 1, 2022 (new fee) shall be paid.

 (2) the registration fee payment period is extended for two months (two months of grace period), the fee before the revision (old fee) shall be paid (Article 3 of the Supplementary Provisions of the revised Cabinet Order).

 (3) the registration fee payment period is extended for 30 days and the payment is postponed for another 2 months, the revised fee (new fee) shall be paid.

 (4) the payment during the six-mtonh period for reasons beyond one’s control after the two-month grace period, the same fee (old or new fee) as the fee to be paid during the two-month grace period (old or new fee) shall be paid.


4. If the date of service of a certified copy of the decision of trademark registration is before April 1, 2022 and 30 days have elapsed since the date of service of the certified copy of the decision of trademark registration, which is on or after April 1, 2022, the following will apply:

  (1) Until April 1, 2022, the fee before the revision (old fee) shall be paid.

  (2) After April 1, 2022, the revised fee (new fee) shall be paid.

If the fee is not paid during the registration fee payment period but is paid within the extended period of 30 days, 2 months of grace period, or 6 months for reasons beyond one’s control, the revised fee (new fee) will be applied.

 

Renewal registration fee (The same applies to the renewal registration fee for the previous term in the case of installment payment)

1. If six months have elapsed since the expiration date of the renewal period, which is before April 1, 2022, the fee before the revision (old fee) shall be paid.


2. If the expiration date is prior to April 1, 2022, but six months have elapsed since the expiration date, the registration fee shall be paid on or after April 1, 2022. Please note that the registration fee and the registration surcharge (deferred payment) to be paid within 6 months after the expiration date of the duration shall be the fee before the revision (old fee) regardless of whether it is paid before or after April 1, 2022 (Article 3 of the Supplementary Provisions of the revised Cabinet Order).


3. If the renewal registration fee payment commencement date is prior to April 1, 2022 and the expiration date is on or after April 1, 2022, the following will apply:

Payment of the renewal registration fee shall be made at the fee before revision (old fee) until March 31, 2022.
During the period from April 1, 2022 to the expiration date, the revised fee (new fee) shall be paid.

Please note that within 6 months after the expiration date, the registration fee and the surcharge (deferred payment) shall be paid at the revised fee (new fee).

Renewal registration fee for the second term in the case of installment payment

1. If the due date of the first term payment is before April 1, 2022, the fee for the first one will be the fee before the revision. The fee for the latter half, which is to be paid within 5 years before the expiration of the term, shall be the fee before the revision (old fee), regardless of whether it is paid before or after April 1, 2022 (Article 3 of the Supplementary Provisions of the revised Cabinet Order).


2. If the due date for the previous term is on or after April 1, 2022, but the payment is made before April 1, 2022, for the first half, the fee before the revision (old fee) will be paid. For the latter half, the fee before the revision (old fee) will be paid regardless of whether the payment is made before or after April 1, 2022.

 


3. If the due date of the payment for the previous term is on or after April 1, 2022, and the payment is made on or after April 1, 2022, for the first installment, the revised fee (new fee) will be paid. The revised fee (new fee) will also be paid for the latter half.

1. Fees for PCT international applications

International search fee and additional charges

If the international filing date (the date on which the international application was received (PCT Rule 14.1(c), 15.3, 16.1(f)) is before the effective date (April 1, 2022), the fees before the revision (old fees) will apply. If the international filing date is on or after the effective date (April 1, 2022), the revised fee (new fee) will be applied.


2.Preliminary examination fee and additional charges

If the date of payment of the fee for preliminary examination is before the effective date (April 1, 2022), the fee before the revision (old fee) will be applied. If the date of payment of the preliminary examination fee is on or after the effective date (April 1, 2022), the revised fee (the new fee) will be applied.

(Excerpted and edited from Notice of Revision of Fees in Accordance with the Patent Law Amendment of 2022 (effective April 1, 2022), JPO)