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Pursuant to the provisions of the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (TPP 11), patent term extension as compensation for the curtailment of the term (abbreviated as “term compensation”,
hereinafter, for the scope of this newsletter) can be requested by filing an application for patent term extension.

(1) Applicable patent applications
In order to be eligible for this system, the patent application filing date ^[*1] must be on or after March 10, 2020, AND
the patent registration date must be after the “Reference Date” which is either the day five years past the
application filing date, or the day three years past the day of the examination request filing, whichever is later.
[*1]  The “patent application filing date” is the actual filing date, with following exceptions: in the case of divisional applications, converted applications, and patent applications which are based on utility model registrations, the
filing date of the original application is the “patent application filing date”.  In the case of applications whose
priority is claimed under the Paris Convention, or applications whose priority is claimed based on a Japanese
patent application, the actual filing date, rather than the priority date, is the “patent application filing date”.

(2) Length of extension period to be sought
The length of the extension applied for cannot exceed the maximum extension period which is calculated as
follows:
( Maximum Extension Period ) = ( Period between the Reference Date and the patent registration date ) minus ( Deduction period ^[*2] )
[*2] Deduction period is the sum of the 10 items listed in the Patent Act Article 67(3), and is subtracted in the
calculation of maximum extension period.
Notable deduction items include the length of the period consumed as a result of an extension of the period during which procedures made necessary should be carried out, and the length of the period arising from an appeal
against a decision of refusal.

(3) Procedure for requesting extension
An application to register a “term compensation” must be filed.

(4) Period during which an application to register a patent term extension can be filed
The application to register a “term compensation” must be filed within 3 months from the patent registration date.

(5) Points to note
– Even when extendable period exists, the patent term is not extended unless the application for the patent term
extension as compensation for the curtailment of the term is filed.
– JPO does not send notice regarding extendable period.
– The extension of patent term for pharmaceutical inventions (Article 67(4)) can be applied along with the “term
compensation” (Article 67(2)).
– The application to register a patent term extension will be rejected, if it is determined that the length of the
extension period being sought exceeds the maximum extension period allowable.
– When the deduction period is longer than the period between the reference date and the patent registration date, there is no period to be extended, and thus the patent term cannot be extended.

 For the details about this system, please refer to
Examination Guidelines for Patent and Utility Model  “Part IX Extension of Patent Term, Chapter 1“
Examination Handbook for Patent and Utility Model  “Part IX Extension of Patent Term, Chapter 1“

 Incidentally, according to the latest Japan Patent Office Annual Status Report, 2019, the average total pendency
for granted patents is 14.1 months (as of 2017), therefore, it is speculated that there are not many cases to which
the system for “term compensation” is applicable.