©phive2015/iStock

Because of the need to comply with the Trans-Pacific Partnership (TPP) Agreement endorsed by the Japanese government in 2017, in which parties agreed to provide a means to adjust the term of a patent when there are unreasonable delays in its issuance by the granting authority, Japan has introduced a patent term adjustment (PTA) system. Due to this background, the Japanese PTA is more similar to PTAs based on the TPP or on any other similar trade agreement in other jurisdictions such as Canada*, rather than to that of the US. As an additional term is available only for patents registered on or after March 10, 2025, we would like now to provide the following practical guide to this new system.

What Does the TPP Agreement Say?
Art. 18.46 of the Agreement states: “. . ., an unreasonable delay at least shall include a delay in the issuance of a patent of more than five years from the date of filing of the application in the territory of the Party, or three years after a request for examination of the application has been made, whichever is later. A Party may exclude, from the determination of such delays, periods of time that do not occur during the processing of, or the examination of, the patent application by the granting authority; periods of time that are not directly attributable to the granting authority; as well as periods of time that are attributable to the patent applicant” (emphasis added).

When Can a Term be Added?
In compliance with the TPP Agreement, an additional term for a patent may be granted if the patent was issued later than the later of the following Base Dates:
(a) Five years from the filing date; or
(b) Three years from the date of the request for examination.

For an effective divisional application, which is deemed to have been filed at the filing date of the parent application, the above “filing date” means the filing date of the parent application. Moreover, for a national phase entry of a PCT application, the above “filing date” means the international filing date.

An eligible patent application must have been filed on or after March 10, 2020. In theory, for the earliest eligible application (filed on March 10, 2020), an additional term is granted if the patent was issued at least later than five years from the filing date, i.e., March 10, 2025 (Base Date (a)). Therefore, it can be concluded that an additional term is available only for patents registered on or after March 10, 2025.

How to Calculate the Additional Term?
The duration of the additional term is calculated by summing the number of days beyond the relevant applicable Base Date and subtracting the number of days of excluded periods of time as defined in Art. 67(3)(i)-(xi), Patent Act. These excluded periods are considered to fall within any of “periods of time that do not occur during the processing of, or the examination of, the patent application by the granting authority,” “periods of time that are not directly attributable to the granting authority,” and “periods of time that are attributable to the patent applicant,” as stipulated in the TPP Agreement (see above). If a day is included in more than one period referred to in Art. 67(3)(i)-(xi), that day is included only once in the excluded periods.

What are the Excluded Periods?
In practice, the most important excluded periods are extended Office Action (OA) response periods requested by the Applicant (A. 67(3)(ii), Patent Act), and periods that have occurred due to filing an appeal against a rejection decision (A. 67(3)(vii), Patent Act). The latter includes periods from the date of delivery of the rejection decision to the date of a Decision of Grant by the Appeal Board or by the Primary Examiner (in the case of a pre-appeal reexamination), or to the date of a decision to demand the case back to the Examination Division.

Other excluded periods include periods that have occurred due to procedures to be executed by an Applicant in response to a notification or an order issued by the Commissioner of the Japan Patent Office (JPO) or the Examiner (A. 67(3)(i), Patent Act). Periods that have occurred due to a delay in executing such a procedure are also excluded (A. 67(3)(iii) and (iv), Patent Act). Such an order is issued when some formalistic error is included in a procedure executed by the Applicant. For example, since the Patent Act Regulation Rules stipulate that any written submission must be made in Japanese (A. 2(1)), if a written submission is made in another language, an order to rectify such an error is issued by the Commissioner.

Further excluded periods include:
– periods that have occurred due to a request for exemption or grace of fees (A. 67(3)(v), Patent Act);
– periods that have occurred due to a withdrawal of a written supplement of a specification (67(3)(vi), Patent Act);
– periods that have occurred due to filing complaints against the JPO under the Administrative Complaint Review Act (A. 67(3)(viii), Patent Act) or Administrative Case Litigation Act (A. 67(3)(ix), Patent Act);
– periods that have occurred due to a suspension of the proceedings when the Applicant must be replaced with a new Applicant because of death, merger, bankruptcy, etc. (A. 67(3)(x), Patent Act);
– periods that have occurred due to suspension of the proceedings when the JPO is unable to continue the proceedings because of a natural disaster, pandemic, court order, etc. (A. 67(3)(x), Patent Act); and
– periods that have occurred due to a secrecy order (A. 67(3)(xi), Patent Act).

How to Add a Term to a Patent?
The patent term is not automatically adjusted by the JPO; rather, a PTA must be actively applied for by the patentee by filing an application for a PTA. In the case of a co-owned patent, a PTA application must be filed jointly by all of the co-owners. A PTA application must be filed within 3 months after the registration of the patent. Although no extension of time for this filing period is possible, in the case of a failure to do so in time due to a reason that is not attributable to the patentee, late filing is possible within 14 days (2 months for a foreign patentee) after the date when such a reason is removed, as long as such a late filing is made within 9 months after the registration of the patent, and before the original patent term expires.

The requested additional term based on the patentee’s own calculation must be specified in a PTA application. If the Examiner determines that the requested additional term is somewhat longer than the additional term calculated by the Examiner, an OA is issued to provide the patentee with an opportunity to amend the requested additional term, or to submit counterarguments, in a similar manner to a response to an OA issued for a normal patent application. If the Examiner maintains the reason for rejection raised in the OA even in view of the patentee’s response, the PTA application will be rejected. The patent term is deemed to be extended as requested in the PTA application as soon as the PTA application is filed, and this fictitious effect will be lifted when the PTA application is rejected by the Examiner.

How Likely is it That a Term Will be Added to My Patent?
In view of the fact that the First OA pendency (the average number of months from the date of the request for examination to the date a First OA is mailed by the JPO) was only 9.5 months in 2023, in general it is quite unlikely that any term would be added to your patent.

* The Canadian PTA is based on the Canada-United States-Mexico Agreement (CUSMA) having Art. 20.44, which is almost a mirror of Art. 18.46, TPP Agreement.