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I Am the Resurrection

Even in the event of a failure to comply with a time limit for an action in a procedure before the Japan Patent Office (JPO), which leads to a loss of rights, reinstatement of rights is possible. However, the chances of success in this regard are believed to be very slim. For example, a loss of rights because of such a failure triggered by a simple human error is normally not considered to be eligible for reinstatement. However, the JPO recently announced that they will make a dramatic change in this respect to become more generous to users, perhaps bringing to mind the Stone Roses’ triumphant line “I am the resurrection and I am the life / I couldn’t ever bring myself to hate you as I’d like.”

Background

Article 12 of the Patent Law Treaty (PTL), adopted in 2000 with the aim of harmonizing and streamlining formal procedures and making such procedures more user friendly, stipulates that “[a] Contracting Party shall provide that, where an applicant or owner has failed to comply with a time limit for an action in a procedure before the Office, and that failure has the direct consequence of causing a loss of rights with respect to an application or patent, the Office shall reinstate the rights of the applicant or owner with respect to the application or patent concerned, if . . . the Office finds that the failure to comply with the time limit occurred in spite of due care required by the circumstances having been taken or, at the option of the Contracting Party, that any delay was unintentional.”

In order to comply with the above, the JPO, as an office of the PTL contracting party since 2016, does allow such a reinstatement of rights under certain conditions. In doing so, the JPO requires “Due Care” (in the same manner as the EPO), rather than “Unintentionality” (in the manner of the USPTO). In other words, in Japan, it must be shown that such a failure had occurred in spite of due care for a reinstatement of rights.

However, many users have expressed criticism that the burden of proof to show the required due care before the JPO is so heavy that the rate of allowance of reinstatement of rights at the JPO is considerably lower than other jurisdictions applying the “Due Care Criterion” (around 10-20% before the JPO, versus 60-70% before the EPO (source: the JPO)). Specifically, the level of due care required in Japan is believed to be higher than in other jurisdictions (however, as a temporal measure, a flexible and generous approach has been applied to any failures that occurred due to the COVID-19 pandemic). For example, according to Japanese judges, entrusting a patent prosecution procedure in question, such as an annuity payment, to a major patent law firm cannot alone be considered as taking required due care (H30 (Gyo-ke) 424, Tokyo District Court). Japanese judges further require showing that a disputed human error that occurred during a routine task, such as the input of a date into IP management software by an assistant, had occurred in spite of a cross-check, while regarding such a cross-check as a required due care (H27 Gyo-u) 623, Tokyo District Court).

What Will Change?

In response to such criticism, the JPO announced that from April 1, 2023, they will apply “Unintentionality Criterion” instead of “Due Care Criterion” for new requests for reinstatement of rights. For example, a loss of rights because of a failure to comply with a time limit, triggered by a human error in inputting a date into IP management software, will be eligible for reinstatement. Following this change, there will be no reasons to hate the JPO in this respect, right?

How Does it Work?

In the same manner as in the current system, any request for reinstatement of rights must be filed within a certain period (2 months for international users) from the date on which the reasons for the failure were removed, and within 1 year from the original deadline. Moreover, unlike in the current system, which has been criticized as too burdensome, the submission of a declaration or any other evidence in support of the reasons for the failure will, in general, not be required. This will bring a huge benefit to users.

In order to prevent abuse of the new system, however, and to spur users to comply with time limits as much as possible, the JPO will require an official fee for such a request (JPY 212,100 for patents, JPY 21,800 for utility models, JPY 24,500 for designs, and JPY 86,400 for trademarks). However, no official fee will be required if a failure to comply with a time limit occurred due to reasons not attributable to the requester, such as a pandemic, natural disaster, etc.

It should be noted that this new law change will basically only deal with procedures covered by Art. 12 of the PTL, which only relates to procedures wherein “failure has the direct consequence of causing a loss of rights with respect to an application or patent.” Thus, for example, a failure to file a divisional application in time will not be covered by the new system, since no rights regarding such a divisional application exist before the divisional application is actually filed, and such a failure is therefore not considered to cause any loss of rights. In this context, such a failure can be relieved under certain circumstances; however, this is governed by Japanese national law, which is considered to be even stricter than the JPO’s current level concerning reinstatement of rights. (However, in the same manner as above, regarding this national reinstatement system as well, a flexible and generous approach has been applied to any failures that occurred due to the COVID-19 pandemic.)

The procedures covered by the new system are shown below.

For Patents and Utility Models

a) Submission of the Japanese translation of the international application in foreign language
b) Submission of the Japanese translation of an application under the Paris convention
c) Request for examination (for patents only)
d) Late payment of registration fees to reinstate a patent that is lost because of earlier non-payment
e) Appointment of a local agent
f) Filing of an application claiming priority

In Japan, a PCT application designating Japan is deemed to be a national patent application; however, such an application will be deemed withdrawn if there is a failure to complete item a) above in time, in the case of a foreign-language PCT application. For this reason, item a) above is covered by the new law change. Therefore, under the new law, a JP phase entry of such a PCT application will still be possible even after 30 months from the priority date, as long as such a failure is unintentional.

Item f) above is also covered by the new law change, as this relates to Art. 13 of the PTL, which deals with restoration of priority right. Therefore, a patent application under the Paris convention will be able to be filed at the JPO even after 1 year from the priority date, as long as the failure to do so within 1 year is unintentional.

For Designs

a) Filing of an application claiming priority
b) Late payment of registration fees to reinstate a design right that is lost because of earlier non-payment

For Trademarks

a) Filing an application for registration of renewal of trademark right
b) Late payment of later half of the registration fee to reinstate a trademark right that is lost because of earlier non-payment
c) Filing an application for renewal of period of duration of trademark right (right based on defensive mark registration)
d) Request for reclassification of a registered trademark right