Jun 30, 2023
Japan: Relaxation of requirements for restoration of rights due to the expiration of a procedural period
This section summarizes the relaxation of requirements for restoration of rights due to the expiration of a procedural period, which went into effect on April 1, 2023.
1. Summary
The requirements for the restoration of rights that have lapsed due to the expiration of a procedural period will be relaxed from having justifiable grounds to not being caused intentionally. Please note that a restoration fee (see 5.) must be paid.
Transitional Measures
The relaxation of the requirements for restoration rights is applicable to procedures that expired on or after April 1, 2023 (procedures that are due on or after April 1, 2023, on the day following the expiration date of the procedure). The procedure period will be extended until March 31, 2023, therefore, in cases where the last day of the period is March 31, 2023, but the expiration date is April 1, 2023, the newly relaxed unintentional standard will apply to the restoration of proceedings.
2. Reasons for relaxing the requirements for restoration of rights due to deadline expiration
(1) While the percentage of applications for restoration of rights in other countries is more than 90%, the percentage in Japan is remarkably low (10-20%), resulting in difficulty obtaining sufficient relief in Japan.
(2) In terms of procedures, Japan was more stringent than other countries in terms of requiring the submission of documentary evidence, therefore, in order to increase the approval rate of recovery, reduce the burden on applicants, and improve the predictability of recovery applications, the requirements have been relaxed.
3. Procedures subject to relaxation
(1) Translation of a written application in a foreign language (Patent Law)
If the application is filled in a foreign language, a translation and the abstract in a foreign language may be submitted only within a certain period*. The failure to submit the translation within the prescribed period is deemed unintentional (Special Article 36-2(6)). *Set period: Two months from the date on which the translation can be submitted as stipulated in Article 36-2⑤. However, if the last day of this period exceeds one year after the expiration of the period stipulated in Article 36-2④, then it will be up to one year after the expiration of the period stipulated in Article 36-2④.
(2) Translation of international patent application filed in a foreign language (Patent Law, Utility Model Law)
If the international patent application is filed in a foreign language, a translation of the description, etc., drawings and abstract may be submitted only within a certain period* if it is found that the failure to submit the translation within the prescribed period was unintentional (Article 184-4(4) of the Patent Act and Article 48-4(4) of the Patent Act).
*Set period: Two months from the date on which a translation of the description, etc. may be submitted as provided in Article 184-4(3) of the Patent Act (Article 48-4(4) of the Patent Act). However, if the last day of this period exceeds one year after the expiration of the period for submission of the domestic document (or the special period for submission of a translation), then it will be up to one year after the expiration of the period for submission of the domestic document (or the special period for submission of a translation).
(3) Priority claims based on patent applications, etc., and priority claims under the Paris Convention (Patent Law, Utility Model Law, Design Law)
In case of patent applications involving a priority claim, if the failure to file the patent application within the priority period is deemed to be unintentional, a priority claim based on a patent application, etc. or a priority claim under the Paris Convention may be made only within a certain period (two months) (Special Article 41(1)(i), 43-2(1)(i), 43-3(iii), 43-2(1)(i) and 43-3(iii) as applied mutatis mutandis under Article 8(1)(i) and 11(1)(i) of the Patent Act, and 43-2(1) and 43-3(iii) as applied mutatis mutandis under Article 15(1) of the Intellectual Property Act).
(4) Request for patent application examination (Patent Law)
If it is found that the failure to file a request for patent application examination within the request period was unintentional, such request may be filed only within a certain period * (Special Article 48-3⑤).
*Set period: Two months from the date on which a request for examination may be filed as provided in Article 48-3(1) of the Patent Act. However, if the last day of this period exceeds one year after the expiration of the period provided in Article 48-3(1), then it will be up to one year after the expiration of the period provided in Article 48-3(1).
(5) Restoration of patent right by additional payment of patent fees, etc. (Patent Law, Utility Model Law, Design Law)
In the case of late payment of patent fees, etc., if it is found that the failure to make the late payment within the prescribed period was unintentional, the said late payment may be made only within a certain period* (Special Article 112-2①, Jitsu 33-2①, Intention 44-2①).
*Set period: Two months from the date on which it became possible to make payment (additional payment) of the patent fee and the surcharge provided in Article 112(4) to (6) of the Patent Act. However, if the last day of this period exceeds one year after the expiration of the period during which the patent fees provided in Article 112(1) of the Patent Act may be paid in addition, then it will be one year after the expiration of that period.
(6) Relaxation of requirements for restoration of trademark rights, etc. (Trademark Law)
(i) Restoration of trademark right
If it is found that the failure to renew the duration of a trademark right within the period from six months prior to the expiration of the duration of the trademark right to the date of expiration was unintentional, such application may be filed only within a certain period* (Article 21(i) of the Commercial Code).
*Set period: two months from the date on which an application for registration of renewal of the duration of trademark right may be filed (Article 21(i) of the Commercial Code). However, if the last day of this fixed period exceeds six months after the expiration of the period during which an application for registration of renewal may be filed pursuant to Article 21(iii) of the Commercial Code, the period shall be six months after the expiration of such period.
(ii) Restoration of trademark rights by additional payment of late divisional registration fees, etc.
If it is found that the failure to pay the late registration fee for divisional registration and registration surcharge within 6 months after the expiration of 5 years before the expiration of trademark right was unintentional, the late registration fee for divisional registration and registration surcharge may be paid only within a certain period* (Article 41-3(i) of the Commercial Code).
*Fixed period: Two months from the date on which the late installment registration fee (Article 41-2(5) of the Commercial Code) and the surcharge (Article 43(iii) of the Commercial Code) may be paid. However, if the last day of this fixed period exceeds six months after the expiration of the period during which the late installment registration fee may be paid in addition pursuant to Article 41-2(5) of the Commercial Code, then it will be six months after the expiration of such period.
(iii) Application for registration of renewal of duration of right based on defensive mark registration
If it is found that the failure to file an application for registration of renewal during the period from 6 months prior to the expiration of the duration of the right based on defensive mark registration to the expiration date was unintentional, an application for registration of renewal may be filed only within a certain period* (Article 65-3(iii) of the Commercial Code).
*Fixed period: 2 months from the date on which an application for registration of renewal of the duration of a right based on a defensive mark registration may be filed (Article 65-3(i) of the Commercial Code). However, if the last day of this fixed period exceeds six months after the expiration of the period during which an application for registration of renewal may be filed pursuant to Article 65-3(ii) of the C.C., it will be six months after the expiration of such period.
(iv) Application for registration of rewriting
If it is recognized that the failure to file an application for registration of rewriting within the registration period was unintentional, an application for registration of rewriting may be filed only within a certain period* (Article 3(iii) of the Supplementary Provision of the Commercial Code).
*Fixed period: 2 months from the date on which an application for registration of rewriting became available (Article 3(i) of the Supplementary Provision of the Commercial Code).
However, if the last day of this fixed period exceeds 6 months after the expiration of the period stipulated in Article 3(ii) of the Supplementary Provision of the Commercial Code, then it will be 6 months after the expiration of that period.
(7) Special provisions concerning patent administrators for overseas residents (Patent Law, Utility Model Law)
If it is deemed that the failure to notify the appointment of a patent administrator in an international patent application within the prescribed period is unintentional, such notification may be made only within a certain period* (Article 184-11(6) of the Patent Act as applied mutatis mutandis under Article 184-11(6) of the Patent Act and Article 48-15(2) of the Patent Act).
*Set period: Two months from the date on which notification of the appointment of a patent administrator under Article 184-11(4) of the Patent Act may be filed. However, if the last day of this period exceeds one year after the expiration of the period provided in Article 184-11④, it will be one year after the expiration of the period provided in Article 184-11④.
4. Time limit for submitting a statement of reasons for recovery (summary)
If the failure to perform the procedure within the prescribed time limit is unintentional, the applicant must perform the procedure that could not be performed within the prescribed time limit within 2 months from the date when the procedure can be performed after the expiration of the time limit, and within 1 year (6 months for trademarks) after the expiration of the time limit (the relief procedure period) and submit a statement of reasons for recovery.
Please refer to the chart below:
Excessive period procedure in case of priority claim
An application with a priority claim should be filed within two months after the expiration of the time limit
Time limit for submission of a statement of reasons for restoration in the case where an international application for a patent or an international application for a utility model registration claims priority and the applicant intends to restore the right of priority in the Patent Office as the designated Office is within one month (or one month from the date of request for examination if the request for examination is filed within the time limit for submission of national documents) from the date on which the time limit for submission of national documents (where the special time limit for submission of translations applies, the special time limit for submission of translations) expires.
5. Restoration procedures
Submission of a Statement of Reasons for Recovery (Form 36-3)
Submit a Statement of Reasons for Restoration, stating the reasons why the procedure could not be performed.
Submission of a document certifying the reasons for restoration
The JPO Commissioner may order the submission of a document certifying the reasons for restoration if deemed necessary in relation to the matters stated in the statement of reasons for restoration.
Submission of a written request
Due to reasons not attributable to the person filing the procedure (reasons for non-responsibility), a statement to that effect and a written statement of reasons for non-responsibility (a document stating the reasons for non-responsibility) shall be submitted at the same time as the statement of reasons for restoration. The submission of the statement of reasons for restoration may be omitted if it is mentioned in the statement of reasons for restoration.
Submission of written proof of reasons for non-responsibility
A written statement of reasons for non-responsibility is to be submitted within two months, however, if the JPO Commissioner deems it unnecessary, it does no need to be submitted.
6. Restoration fee
A restoration fee must be paid when submitting a statement of reasons for restoration.
(Special Schedule (related to Article 195) 11, Actual Schedule (related to Article 54) 7, Intent Schedule (related to Article 67) 3, Commercial Schedule (related to Article 76) 5)
|
Patent: |
212,000 JPY |
|
Utility Model: |
21,800 JPY |
|
Design: |
24,500 JPY |
|
Trademark: |
86,400 JPY |
If an application is filed for the restoration of multiple priority claims in one application, a fee will be required for the number of priority claims to be restored.
6.1 Procedures for Exemption from Restoration Fee
The restoration fee will be waived if there are grounds for non-responsibility as to why the procedure could not be completed within the procedural period, and if the grounds for non-responsibility can be confirmed by a document proving such fact.
When filing a request for relief on grounds of non-responsibility, at the same time as submitting the Statement of Reasons for Restoration, the applicant shall either submit a specific and sufficient statement in the [Contents of appeal] column of the written appeal stating the reason for not being able to perform the relevant procedures that fall under grounds of non-responsibility or submit a statement in the [Others] column following the [Reasons for restoration] column in the Statement of Reasons for Restoration, stating such reasons. In addition, within two months of the said procedure, documentary evidence supporting the stated facts must be submitted (submit a written appeal). Please note that relief on the grounds of non-responsibility is often very hard to obtain (not granted).
7.Change of requirements for restoration of rights of priority for international applications based on the Patent Cooperation Treaty
The requirements for the system of restoration of rights of priority for international applications under the Patent Cooperation Treaty have also been relaxed to “unintentional”.
Any applicant who has failed to file an international application within the priority period despite having attempted to claim a priority right with respect to an international patent application or an international application for utility model registration may file a request for restoration of rights of priority with the Patent Office as the designated Office if the international application is filed within two months after the expiration of the priority period. However, this does not apply to international applications that were intentionally not filed within the priority period (Article 28-3 of the Ordinance for Enforcement of the Law Concerning International Applications, etc. under the Patent Cooperation Treaty). For details of the procedure, please refer to the JPO website regarding the restoration of rights of priority for international applications whose priority period expired on or after April 1, 2023 (unintentional criteria).
8.Relief for reasons of non-responsibility in proceedings affected by new coronavirus infection
Please refer to Application Procedures relation to the Coronavirus disease 2019 (COVID-19) | Japan Patent Office (jpo.go.jp) for more details.
9.Cases in which relief may not be granted
The following is a list of cases in which relief may not be granted for the reasons such as exceeding the time limit that is deemed to be “willful failure to comply with the procedures”.
Please note that there is no guarantee that relief will be granted in cases that do not correspond to the cases listed below.
Case 1: Change of internal policy after expiration of term
Procedure for requesting application examination
A patent application was filed, but as a result of an internal review of whether or not a request for application examination was necessary by the time limit for requesting application examination, it was determined that a request for application examination was not necessary.
After the expiration of the time limit for requesting application examination, the company decided to request application examination due to a change in internal policy and submitted a statement of reasons for the decision to request application examination.
Case 2: Delayed payment by local agent
Domestic Transfer Procedures
In guiding the overseas applicant through the procedure for transferring the application to Japan, the local agent requested the applicant by e-mail, as a condition for requesting the domestic transfer procedure to the agent in the designated country, to pay the fee in advance by the request deadline, since the applicant has traditionally tended to be late in paying the fee. The local representative received an e-mail from the applicant stating that if the applicant made a decision not to proceed with the national phase-in procedure, the applicant would not make an advance payment of the fee by the request deadline.
Since the fee payment was not made by the request deadline, the applicant did not request the designated national agent to perform the national procedure for entry into the national phase, including submission of the translation. Subsequently, the applicant informed of the wish to file a request for reinstatement because he had made a decision to perform the national phase procedure after the deadline for national phase procedures had been overstayed, and since the fee had been paid, an agent submitted a statement of reasons for reinstatement.
Case 3: Inquiry from another company after waiver decision
Patent fee payment procedure
After examining the necessity of the patent right within the company, the company decided not to maintain the right and did not pay the patent fee or make an additional payment. After the deadline for additional payment had passed, another company showed interest in the lapsed patent right, so the initial company changed its policy to maintain the right and submitted a statement of reasons for reinstatement.
Case 4: Business decision based on financial circumstances
Patent fee payment procedure
Due to difficult business conditions, the company applied for a loan from a financial institution but did not receive it. The company decided not to maintain the patent rights in order to prioritize the employment of employees and did not pay the patent fees. After the deadline for additional payment had passed, the company received a loan and its business situation improved, so it changed its policy to maintain the patent right and submitted a statement of reasons for restoration.
Case 5: Resumption of business by appointment of successor after closure of business
Renewal procedure for trademark right
The applicant (a service company) had trademark rights but decided to close the business due to the lack of a successor. The applicant (service business) did not file an application for renewal of trademark right because there was no need to file such an application since the business was closed. After the deadline for filing an application for renewal had passed, a successor was appointed and the business was reinstated, so a statement of reasons for recovery was submitted.
Case 6: Excessive delay due to lack of coordination with co-owners
Patent fee payment procedure
Regarding a patent right co-owned by two right holders, A and B, they had difficulty in coordinating with each other regarding the maintenance of the right, and as a result, they decided to give up the maintenance of the patent right. After the overdue payment, A and B changed their policy on the maintenance of the patent right and reached an agreement on detailed payment procedures, etc., and submitted a statement of reasons for recovery.
Case 7: Procedures dismissed without responding to a directive concerning an incomplete payment form
Patent fee payment procedure
The applicant received a supplemental order for incompleteness in the annuity payment form for patent fee but did not follow the supplemental procedure because there was no longer a need to maintain the right, and the payment form was rejected for the procedure. After the overdue additional payment, the applicant changed his mind about maintaining his rights and submitted a statement of reasons for reinstatement.