As the Amendment Act of 2021 was promulgated on May 21, 2021, regulations are introduced to relieve requirements for grant of restoration of patent right etc. in the case of lapse of patent right etc. in Japan due to expiration of a procedure time limit. The regulations will become effective (enforced) on April 1, 2023.

(1) Outline

(1-1) Relief of Requirements for Grant of Restoration of Patent Right etc.

  Previously, as for the requirements for grant of restoration of patent right etc. in Japan, a provision in the Patent Law Treaty (PLT) and the Singapore Treaty on the Law of Trademarks (STLT) specifying that “the failure to comply with the procedure time limit occurred in spite of due care required by the circumstances having been taken” (“Due Care Criterion”) was employed, and thus it was required that “a legitimate reason exists for the failure to complete a procedure within the time limit.”  The previous practice was stricter compared to other countries, in view of the very low acceptance rate (about 10% to 20%) and the mandatory submission of evidences.

  The recent amendment changes the requirements for grant of restoration of patent right etc. in Japan from the “Due Care Criterion” to “that the failure to comply with the procedure time limit was unintentional” (“Unintentionality Criterion”).  That is, the requirements are relieved to “that the failure to comply with the procedure time limit was unintentional.”  Consequently, for example, an expiration of the time limit as a result of input errors of a due date management software may be subject to the remedy.

(1-2) Collection of Restoration Commission Required for Restoration of Patent Right etc.

  In taking a procedure for restoration of patent right etc., payment of an official fee is required (Article 195(2) and Appended Table of Article 195 of Patent Act; Article 54(2) and Appended Table of Article 54 of Utility Model Act; Article 67(2) and Appended Table of Article 67 of Design Act; and Article 76(2) and Appended Table of Article 76 of Trademark Act).

  For example, the official fee per case is specified as follows: 212,100JPY for restoration of patent right; 21,800JPY for restoration of utility model right; 24,500JPY for restoration of design right; and 86,400JPY for trademark right, each subject to change.

(1-3) Regulation of Exemption of Restoration Commission Required for Restoration of Patent Right etc.

  A regulation is introduced for exemption of the restoration commission required for restoration of patent right etc.  It is specified that, if the reason for the failure to comply with the procedure time limit and the delay of payment is one which is beyond the control of a patentee etc. (e.g., occurrence of a disaster), the official fee payment can be exempted (Appended Table of Article 195 of Patent Act etc.).

  For example, if the patentee etc. cannot take a procedure within the procedure time limit as a result of occurrence of any unavoidable situations influenced by the spread of the COVID-19 infections etc., the payment of the official fee may be exempted.

(1-4) Documents Required for Restoration of Patent Right etc.

  In taking the procedure for restoration of patent right etc., while it is required to submit a statement to briefly explain “the reason why the failure to take a procedure was unintentional,” it will become unnecessary to submit documents of evidence.  However, at the moment, details for the documents required (e.g., extent of the explanation required in the statement) remain to be determined.

(2) Procedures Subject to the Right Restoration System

(2-1) Translations of an Application in a Foreign Language (Patent Act)

  An applicant who filed a patent application in a foreign language may submit Japanese translations of the specification etc. within one year and four months from the filing date (priority date) (Article 36-2(2) of Patent Act), and even after the expiration of the period, the applicant may submit the translations within a prescribed period from a notice that the translations remain to be submitted (Article 36-2(4) of Patent Act).  If the translations are not submitted within the prescribed period, the patent application is deemed to have been withdrawn (Article 36-2(5) of Patent Act).

  According to the recent amendment, if the failure to submit the translations within the prescribed period specified in Article 36-2(4) of Patent Act was unintentional, the applicant is permitted to submit the translations by taking a prescribed procedure within a certain period (Article 36-2(6) of Patent Act).

(2-2) Translations of an International Patent Application Filed in Foreign Language (Patent Act and Utility Model Act)

  An applicant who filed an international patent application in a foreign language may submit Japanese translations of the specification etc. within two years and six months from the international filing date (priority date) in a principle (Article 184-4(1) of Patent Act), but if the translations are not submitted within the period, the international patent application is deemed to be withdrawn (Article 184-4(3) of Patent Act).

  According to the recent amendment, if the failure to submit the translations within the period specified in Article 184-4(1) of Patent Act was unintentional, the applicant is permitted to submit the translations by taking a prescribed procedure within a certain period (Article 184-4(4) of Patent Act).  The same applies to the submission of translations in filing an international application for utility model registration in a foreign language (Article 48-4(4) of Utility Model Act).

(2-3) Priority Claim Based on a Patent Application etc. and Priority Claim under the Paris Convention (Patent Act, Utility Model Act, and Design Act)

  If, in filing a patent application etc. (patent application, utility model registration application, and design application) with priority claim, the failure to file the patent application etc. within the priority period is recognized to be unintentional, the applicant may claim priority based on a patent application etc. or priority under the Paris Convention, by taking a prescribed procedure within a certain period (Articles 41(1)(i), 43-2(1), and 43-3(3) of Patent Act; Article 8(1)(i) of Utility Model Act; Article 15(1) of Design Act, etc.).

(2-4) Request for Examination of Application (Patent Act)

  A request for examination of a patent application must be filed within three years from the filing date (Article 48-3(1) of Patent Act), and if the request for examination is not filed within the period, the patent application is deemed to be withdrawn (Article 48-3(4) of Patent Act).

  According to the recent amendment, if the failure to file the request for examination within the period specified in Article 48-3(1) of Patent Act was unintentional, the applicant is permitted to file the request for examination by taking a prescribed procedure within a certain period (Articles 48-3(5) and (7) of Patent Act).

(2-5) Restoration of Patent Right by Late Payment of Patent Fee etc. (Patent Act, Utility Model Act, and Design Act)

  The annual patent fee etc. (fees for patent right, utility model, and design right) for each of the fourth and subsequent years must be paid by the end of the previous year (Article 108(2) of Patent Act etc.), but after the expiration of the period, the applicant is permitted to make late payment of the patent fee etc. within a six-month period for late payment, by additionally paying a patent surcharge etc. (Articles 112(1) and (2) of Patent Act etc.).  If the patent fee etc. and the patent surcharge etc. are not paid within the late payment period, the patent right etc. is deemed to have been lapsed (Article 112(4) of Patent Act).

  According to the recent amendment, except for an intentional failure to pay the patent fee etc. and the patent surcharge etc. within the late payment period, the patentee etc. is permitted to make late payment by taking a prescribed procedure within a certain period (Article 112-2(1) of Patent Act; Article 33-2(1) of Utility Model Act; and Article 44-2(1) of Design Act).

(2-6) Special Provisions on Patent Administrators etc. for Overseas Residents (Patent Act and Utility Model Act)

  An overseas resident applicant filing an international patent application must appoint a patent administrator and notify the Commissioner of the Japan Patent Office of the fact within a prescribed period (Article 184-11(2) of Patent Act).  Even after the expiration of the period, the applicant is permitted to provide the notification within a prescribed period after the failure to notify the appointment of the patent administrator is noticed (Article 184-11(4) of Patent Act).  However, if the notification is not provided within such a prescribed period, the international patent application is deemed to be withdrawn (Article 184-11(5) of Patent Act).

  According to the recent amendment, if the failure to provide the notification of the appointment of the patent administrator within the prescribed period specified in Article 184-11(4) of Patent Act was unintentional, the applicant is permitted to provide the notification by taking a prescribed procedure within a certain period (Articles 184-11(6) of Patent Act).  Note that the same applies to the notification of appointment of a utility model administrator in the case of filing an international utility model registration application (Article 48-15(2) of Utility Model Act).

(2-7) Restoration of Trademark Right (Trademark Act)

  An application for renewal of trademark right must be filed during the period from six months prior to the expiration of the trademark right to the date of expiration thereof (Article 20(2) of Trademark Act), but within a six-month period for late payment from the expiration of the time limit, the trademark right holder is permitted to file the application for renewal of trademark right by taking a prescribed procedure (Article 20(3) of Trademark Act).  If the application for renewal is not filed within the late payment period, the trademark right is deemed to have been expired (Article 20(4) of Trademark Act).

  According to the recent amendment, except for an intentional failure to file the application for renewal within the late payment period, the right holder is permitted to file the application for renewal by taking a prescribed procedure within a certain period (Article 21(1) of Trademark Act).

(2-8) Restoration of Trademark Right by Late Payment of Second-installment Registration Fee (Trademark Act)

  A person seeking to register trademark right may pay a registration fee separately, i.e., as an earlier-installment registration fee and a second-installment registration fee.  The second-installment registration fee must be paid no later than five years prior to the expiration of the trademark right (Article 41-2(1) of Trademark Act).  Within a six-month period for late payment after the expiration of the time limit, that person is permitted to make late payment of the second-installment registration fee by additionally paying a registration fee surcharge (Articles 41-2(5) and 43(3) of Trademark Act).  If that person fails to pay the second-installment registration fee and the registration fee surcharge within the late payment period, the trademark right is deemed to have been expired (Article41-2(6) of Trademark Act).

  According to the recent amendment, except for an intentional failure to pay the second-installment registration fee and the registration fee surcharge within the late payment period, the late payment is permitted by taking a prescribed procedure within a certain period (Article 41-3(1) of Trademark Act).

(2-9) Application for Registration of Renewal of Duration of Right Based on Defensive Mark Registration (Trademark Act)

  An application for registration of renewal of duration of right based on defensive mark registration must be filed during the period from six months prior to the expiration of the right based on defensive mark registration to the date of expiration thereof (Article 65-3(2) of Trademark Act).

  According to the recent amendment, even in the case of a failure to file the application within the period, except for an intentional failure, the application for registration of renewal of the duration of right based on defensive mark registration may be filed, by taking a prescribed procedure within a certain period (Article 65-3(3) of Trademark Act).

(2-10) Application for Reclassification on Registered Trademark (Trademark Act)

  Regarding a failure to file an application for reclassification on registered trademark within a period for the filing thereof, if it is recognized that the failure was unintentional, the application for reclassification on registered trademark may be filed, by taking a prescribed procedure within a certain period (Article 3(3) of Supplementary Provisions of Trademark Act).

(3) Future Perspective

  The effective date (date of enforcement) of the regulations to be soon introduced to relieve the requirements for grant of the restoration of patent right etc. is April 1, 2023, but as of writing of this newsletter, details for filing of an application for restoration of patent right etc. (e.g., acceptable filing period, procedure required for filing the application, etc.) remain to be determined, and will be sequentially announced as the effective date approaches. We should pay attention to the movement.