JPO Issuance and Post-Issuance Fees Increases from April 2022: Early Bird Payment Plan Deadline Fast Approaching

2022.01NEW

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Summary of the Fee Changes
From April 1, 2022, issuance and maintenance fees (grant and renewal fees) for patents and trademarks at the Japan Patent Office (JPO) will increase. The JPO indicates that these fee increases are necessary to meet an increased examination burden due to the rapidly growing necessity of searching and analyzing foreign-language prior art documents (especially non-English-language prior art documents), as well as digitization of their operations etc. In principle, the updated fee schedule will be applied to any fees paid on or after the above date. A table of all of the changes is available here (Japanese-language only), and a table summarizing the fees for patents is shown below.

Table 1: Comparison of Current and New Fees for Patents

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A Quick Guide to Issuance and Post-issuance Fees
Before going into detail regarding the new fee schedule, an understanding of the fee structure for issuance and post-issuance fees is necessary. Regarding patents, an issuance fee (grant fee) must be paid within 30 days after grant, followed by payments of maintenance fees (renewal fees) annually from the 4th year; however, maintenance fees can be paid in advance. For a model patent with a standard size and lifespan, having the following profile (these fees depend on the number of claims, and the lifespan of the patent depends on the timing of the following events), new issuance and maintenance fees can be calculated as shown in the following table, wherein the USPTO’s fees for a patent of the same size is shown for reference. As you will note, the JPO’s new fees are still cheaper than those of the USPTO.

Profile of a Model Patent with a Standard Size and Lifespan:
 –  Based on the national phase entry of a PCT application with the request for examination filed shortly before the deadline (3 years from the PCT-filing date)
 -  Granted after 1 year from the date of requesting examination (according to recent official statistics, the average duration of an examination until it reaches a final outcome, including a grant of a patent, is about 15 months from the request for examination)
 -  15 granted claims (according to private studies such as this one, the average number of granted claims at the USPTO is around 16 in recent years)


Table 2: New issuance and maintenance fees for the model patent in comparison with the USPTO’s fees (calculated based on the exchange rate as of January 4, 2022)

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Early Bird Payment Plan
For the above model patent, the new issuance fee is about USD 100 (or EUR 90) higher than the current fee, whereas the total new maintenance fees (from the 4th to 16th years) are about USD 1,000 (or EUR 900) higher than those in the current fee schedule (these can be precisely calculated as shown in Table 1).

By paying fees, prior to April 1, 2022, that are due on or after April 1, 2022, these payment increases can be avoided. For example, if the issuance fee is paid for the above model patent before April 1, 2022, even if the deadline falls on or after that date, you will be able to save nearly USD 100 (or EUR 90). Similarly, if the total maintenance fees are paid in advance, you will be able to do so for about USD 1,000 USD (or EUR 900). As these benefits do not appear to be negligible, deciding whether to perform such an early bird payment (and deciding whether paying all or part of the remaining maintenance fees in advance) for each of your (or your client’s) patents requires careful analysis. We hope that this article will be helpful in solving this difficult puzzle.