2023.06.21
RELIEF OF REQUIREMENTS FOR RESTORATION OF PATENT RIGHT ETC. (2nd Report)
PATENT
UTILITY MODEL
DESIGN
TRADEMARK
RELIEF OF REQUIREMENTS FOR RESTORATION OF PATENT RIGHT ETC. (2nd Report)
1. Introduction
In Japan, a legal revision was made to relieve requirements for obtaining a remedy in the case of expiration of a time limit for a procedure such as priority claim, payment of patent fee, etc. What is called "Unintentionality Criterion" is employed under the revised low, replacing what is called "Due Care Criterion" formerly employed. The new regulations have been enforced since April 1, 2023. We once reported this legal revision in our previous Newsletter (https://www.rc-iplaw.com/en/news/detail/55) issued before the enforcement. This time, we inform you of specific operational status of the new regulations after the enforcement thereof.
2. Background and Outline of the Legal Revision
Previously, in Japan, as for the requirements for obtaining the remedy in the case of expiration of a procedure time limit, a provision in the Patent Law Treaty (PLT) and the Singapore Treaty on the Law of Trademarks (STLT) specifying that so-called "Due Care Criterion"*1 was employed. The previous practice of the remedy in Japan was noted by domestic and foreign applicants etc. to be too strict as compared to the United States and European countries, in view of the criterion and the burden of proof for restoration of right etc. in Japan. Actually, the acceptance rate with respect to applications for restoration of right was very low in Japan (about 10% to 20%), while it was 90% or more in countries employing the "Unintentionality Criterion" and was 60% or more in countries employing the "Due Care Criterion", among foreign member countries of the PLT. Further, also in terms of proceedings, the previous practice was strict in that submission of evidences was mandatory.
Thus, in Japan, it was decided to change the requirements for obtaining the remedy from the "Due Care Criterion" to so-called "Unintentionality Criterion" *2. Note that payment of restoration fee is one of the requirements for the remedy, in order to prevent abuse of the system and promote the punctuality.
*1 "Due Care Criterion": Failures to comply with the procedure time limit occurred in spite of due care having been taken can be remedied.
*2 "Unintentionality Criterion": Unintentional failures to comply with the procedure time limit can be remedied.
3. Procedures Subject to the Remedy and Requirements for the Remedy
(1) Subject Procedures and Restoration Fees
Procedures subject to the remedy based on the "Unintentionality Criterion" are shown in the list below. For any of the procedures, a Statement of Grounds for Restoration is required to be submitted. Note that the restoration fees are prescribed depending on jurisdiction, as 212,100JPY for the Patent Act, 21,800JPY for the Utility Model Act, 24,500JPY for the Design Act, and 86,400JPY for the Trademark Act.
(2) Time Requirement
Procedures for which the procedure time limit expired on or after the enforcement date of the revised act (i.e., April 1, 2023) are subject to the remedy based on the “Unintentionality Criterion.” Thus, procedures for which the procedure time limit expired on and before March 31, 2023 are not subject to the remedy based on the “Unintentionality Criterion” even if proceedings for requesting the remedy are taken on or after April 1, 2023.
The Statement of Grounds for Restoration is required to be submitted within two months from the day when the procedure becomes possible after the expiration of the original time limit, and within one year (as for a trademark, within six months) after the expiration of the original time limit.
Note that exceptional time requirements are applied to the following procedures.
(3) Matters to be Described in the Statement of Grounds for Restoration
The Statement of Grounds for Restoration is required to include the following matters:
(Description Example) Description example in the case of requesting the remedy about the expiration of the time limit for filing a Request for Examination
As seen in the Description Example, regarding the “manifestation of unintentionality about the failure to take the procedure” and “the absence of intention to delay the request for examination,” describing simple wordings is sufficient. Further, as for either matter, submission of evidences etc. is not required.
Note that, however, the submission of evidences may be required later, if abuse of the system is suspected or there is a doubt about the matters described in the Statement of Grounds for Restoration.
(4) Exemption of Restoration Commission
When there is a reason not attributable to a person who takes a procedure (unattributable grounds) as for the reason of failure to take the procedure within the procedure time limit, and when the unattributable grounds can be proved by a documental evidence, restoration commission is exempted. In such a case, it is required to allege the request for the remedy based on the unattributable grounds at the same time as the filing of the Statement of Grounds for Restoration, and to submit evidences which support the unattributable grounds within two months from the submission of the Statement of Grounds for Restoration.
(5) Other Discussion
Although restoration of some cases can be requested by filing one Statement of Grounds for Restoration, the restoration commission must be paid for every case.
When requesting restoration of some priority claims for one application, the restoration commissions for the number of priority claims which are requested to be restored must be paid.
If the request for restoration is judged unapprovable due to the failure to satisfy the “Unintentionality Criterion,” an opportunity of explanation is given to the applicant. If the request for restoration is still unapprovable even with the explanation, the procedure for which the restoration was requested is rejected. The applicant etc. can request return of the restoration commission later. Note that, however, the return of the restoration commission cannot be requested if the procedure is rejected because an instruction of making amendment of the Statement of Grounds for Restoration was issued but the applicant etc. failed to respond to the instruction.
4. Case Where the Remedy is not Granted (Case Study)
The Japan Patent Office presents assumed cases where the remedy may be ungrantable as follows.
(1) In-house Policy Change after Expiration of the Time Limit
A patent application was filed. When it was discussed in the company whether the request for examination of the application was necessary before the time limit for the request for examination, it was determined unnecessary. After the expiration of the time limit for the request for examination, as a result of an in-house policy change, the company decided to request the examination of the application, and thus filed a Statement of Grounds for Restoration.
(2) Delayed Payment
This is a case in which an Applicant X takes a procedure for national entry into Japan (hereinafter, referred to as the “national-entry procedure”) by ordering an Agent B in Japan through another, overseas Agent A.
The Applicant X traditionally tends to delay in payment to the Agent A. So, in guiding the Applicant X about the national-entry procedure, the Agent A expressly asked to pay the charge previously before the time limit for the order, as a requirement for the Agent A to order the Agent B to take the national-entry procedure, via an e-mail. The Applicant X sent an e-mail to the Agent A, indicating “we will not pay previously the charge before the time limit for the order, if we decide not to take the national-entry procedure.” Then, the charge was not paid before the time limit for the order, and thus the Agent A did not order the Agent B to take the national-entry procedure, including submission of translations. Later, the Applicant X informed the Agent A that they decided to take the national-entry procedure after expiration of the time limit for the national entry in Japan, and thus they wish to request restoration. The charge was paid, and then the Agent A made an order so that the Agent B submitted a Statement of Grounds for Restoration.
(3) Inquiry from Other Company after Determination of Abandonment of Right As a result of discussion on the necessity of patent right in a company, it was decided not to maintain the patent right, and thus payment and late payment of the patent fee were not made. After expiration of the time limit for late payment, other company presented their interest in the abandoned patent right. Therefore, the policy was changed to maintain the right, and a Statement of Grounds for Restoration was filed.
(4) Management Decision due to Financial Affairs
A company faced a severe business condition, and applied for a loan from a financial institution, but the loan application was rejected. The company decided not to maintain the patent right in order to prioritize engagement of their employees so that they did not pay the patent fee. After expiration of the time limit for late payment, the loan application was approved and the business condition was improved. Thus, the policy was changed to maintain the patent right, and a Statement of Grounds for Restoration was filed.
(5) Resumption of Business by Appointment of a Successor after Business Closure
A requestor (service industry) had a trademark right, but decided to close the business because there was no successor. Since the requestor was going out of business, there was no need to apply for renewal of the trademark right, so the requestor did not take the procedure. After expiration of the time limit for an application for renewal, a successor was appointed and the business was decided to be continued. Therefore, the requestor filed a Statement of Grounds for Restoration.
(6) Expiration of Procedure Time Limit due to Insufficient Arrangement with Co-owner
Regarding patent right shared by right holders A and B, it was difficult to arrange the maintenance of the right between the two parties, and as a result, they decided to give up on maintaining the patent right. After the time limit for late payment expired, A and B changed their policy regarding the maintenance of the patent right, and reached an agreement on details, such as payment procedure, so they submitted a Statement of Grounds for Restoration.
(7) Rejection of Procedure due to Failure to Respond to an Instruction Related to Deficiencies in Statement of Payment
There was deficiency in the contents of the statement of patent annuity payment, and an instruction for supplementation was issued. The right holder, however, did not take the supplementation procedure because the right became unnecessary to be maintained, and the statement of payment was rejected. After expiration of the time limit for late payment, the right holder changed the mind, and seeking to maintain the right, filed a Statement of Grounds for Restoration.
5. Summary
It is believed that, as a result of the change to the “Unintentional Criterion,” expiration of the time limit due to input errors in a due date management software, poor communication between an agent in Japan and an agent outside Japan, will be eligible for the remedy.
On the other hand, as seen in the case study, if the applicant once decided on its own initiative not to carry out the procedure and then changed the decision, the expiration of the time limit will not be eligible for the remedy.
If you have any questions about whether individual cases are eligible for the remedy, please feel free to contact us.
In Japan, a legal revision was made to relieve requirements for obtaining a remedy in the case of expiration of a time limit for a procedure such as priority claim, payment of patent fee, etc. What is called "Unintentionality Criterion" is employed under the revised low, replacing what is called "Due Care Criterion" formerly employed. The new regulations have been enforced since April 1, 2023. We once reported this legal revision in our previous Newsletter (https://www.rc-iplaw.com/en/news/detail/55) issued before the enforcement. This time, we inform you of specific operational status of the new regulations after the enforcement thereof.
2. Background and Outline of the Legal Revision
Previously, in Japan, as for the requirements for obtaining the remedy in the case of expiration of a procedure time limit, a provision in the Patent Law Treaty (PLT) and the Singapore Treaty on the Law of Trademarks (STLT) specifying that so-called "Due Care Criterion"*1 was employed. The previous practice of the remedy in Japan was noted by domestic and foreign applicants etc. to be too strict as compared to the United States and European countries, in view of the criterion and the burden of proof for restoration of right etc. in Japan. Actually, the acceptance rate with respect to applications for restoration of right was very low in Japan (about 10% to 20%), while it was 90% or more in countries employing the "Unintentionality Criterion" and was 60% or more in countries employing the "Due Care Criterion", among foreign member countries of the PLT. Further, also in terms of proceedings, the previous practice was strict in that submission of evidences was mandatory.
Thus, in Japan, it was decided to change the requirements for obtaining the remedy from the "Due Care Criterion" to so-called "Unintentionality Criterion" *2. Note that payment of restoration fee is one of the requirements for the remedy, in order to prevent abuse of the system and promote the punctuality.
*1 "Due Care Criterion": Failures to comply with the procedure time limit occurred in spite of due care having been taken can be remedied.
*2 "Unintentionality Criterion": Unintentional failures to comply with the procedure time limit can be remedied.
3. Procedures Subject to the Remedy and Requirements for the Remedy
(1) Subject Procedures and Restoration Fees
Procedures subject to the remedy based on the "Unintentionality Criterion" are shown in the list below. For any of the procedures, a Statement of Grounds for Restoration is required to be submitted. Note that the restoration fees are prescribed depending on jurisdiction, as 212,100JPY for the Patent Act, 21,800JPY for the Utility Model Act, 24,500JPY for the Design Act, and 86,400JPY for the Trademark Act.
| Patent Act (Restoration fee: 212,100JPY) |
Submission of translations of an application in a foreign language (Article 36-2) |
| Priority claim based on a patent application etc. (Article 41) | |
| Priority claim under the Paris Convention (Article 43-2) | |
| Request for examination of an application (Article 48-3) | |
| Late payment of a patent fee and a patent surcharge (Article 112-2 ) | |
| Submission of translations of an international patent application in a foreign language (Article 184-4) | |
| Notification of an appointed patent administrator for an overseas resident filing an international patent application (Article 184-11) | |
| Utility Model Act (Restoration fee: 21,800JPY) |
Priority claim based on a utility model registration application etc. (Article 8) |
| Priority claim under the Paris Convention (Article 43-2 of Patent Act mutatis mutandis in Article 11) | |
| Late payment of a utility model registration fee and a registration surcharge (Article 33-2) | |
| Submission of translations of an international utility model registration application in a foreign language (Article 48-4) | |
| Notification of an appointed utility model administrator for an overseas resident filing an international utility model registration application (Article 184-11 of Patent Act mutatis mutandis in Article 48-15) | |
| Design Act (Restoration fee: 24,500JPY) |
Priority claim under the Paris Convention (Article 43-2 of Patent Act mutatis mutandis in Article 15) |
| Late payment of a design registration fee and a registration surcharge (Article 44-2) | |
| Trademark Act (Restoration fee: 86,400JPY) |
Application for renewal of trademark right (Article 21) |
| Late payment of second-installment registration fee and a registration surcharge (Article 41-3) | |
| Application for registration of renewal of duration of right based on defensive mark registration (Article 65-3) | |
| Application for reclassification on registered trademark (Article 3 of Supplementary Provisions of Trademark Act) |
(2) Time Requirement
Procedures for which the procedure time limit expired on or after the enforcement date of the revised act (i.e., April 1, 2023) are subject to the remedy based on the “Unintentionality Criterion.” Thus, procedures for which the procedure time limit expired on and before March 31, 2023 are not subject to the remedy based on the “Unintentionality Criterion” even if proceedings for requesting the remedy are taken on or after April 1, 2023.
The Statement of Grounds for Restoration is required to be submitted within two months from the day when the procedure becomes possible after the expiration of the original time limit, and within one year (as for a trademark, within six months) after the expiration of the original time limit.
Note that exceptional time requirements are applied to the following procedures.
| Priority Claim | After the expiration of the time limit by which an application with a priority claim should be filed, the application concerned is required to be filed within two months. |
| Priority claim based on an international patent application or an international utility model registration application for restoration of priority in Japan | (Principle) Within one month after the date on which the time limit for the submission of national documents expires (two years and six months from the priority date) (Exception 1) If the special time limit for the submission of translations is applied, within one month after the date on which the special time limit for the submission of translations expires (Exception 2) If a Request for Examination of the application was filed within the time limit for the submission of national documents, within one month from the date of filing the Request for Examination |
(3) Matters to be Described in the Statement of Grounds for Restoration
The Statement of Grounds for Restoration is required to include the following matters:
• reason of the failure to take the procedure within the prescribed time limit;
• date on which the procedure became possible;
• manifestation of unintentionality about the failure to take the procedure; and
• (in the case of filing the Statement of Grounds for Restoration for the filing of the Request for Examination) the absence of intention to delay the request for examination.
• date on which the procedure became possible;
• manifestation of unintentionality about the failure to take the procedure; and
• (in the case of filing the Statement of Grounds for Restoration for the filing of the Request for Examination) the absence of intention to delay the request for examination.
(Description Example) Description example in the case of requesting the remedy about the expiration of the time limit for filing a Request for Examination
| We carelessly forgot the deadline for filing the Request for Examination, and failed to complete the procedure within the prescribed time limit. We noticed later that the deadline had expired on the date * (month) * (day), Reiwa * (year 20**), and we take the procedure now. The failure to take the procedure within the prescribed time limit was unintentional. Please note that we have no intention to delay the request for examination of the application. |
As seen in the Description Example, regarding the “manifestation of unintentionality about the failure to take the procedure” and “the absence of intention to delay the request for examination,” describing simple wordings is sufficient. Further, as for either matter, submission of evidences etc. is not required.
Note that, however, the submission of evidences may be required later, if abuse of the system is suspected or there is a doubt about the matters described in the Statement of Grounds for Restoration.
(4) Exemption of Restoration Commission
When there is a reason not attributable to a person who takes a procedure (unattributable grounds) as for the reason of failure to take the procedure within the procedure time limit, and when the unattributable grounds can be proved by a documental evidence, restoration commission is exempted. In such a case, it is required to allege the request for the remedy based on the unattributable grounds at the same time as the filing of the Statement of Grounds for Restoration, and to submit evidences which support the unattributable grounds within two months from the submission of the Statement of Grounds for Restoration.
(5) Other Discussion
Although restoration of some cases can be requested by filing one Statement of Grounds for Restoration, the restoration commission must be paid for every case.
When requesting restoration of some priority claims for one application, the restoration commissions for the number of priority claims which are requested to be restored must be paid.
If the request for restoration is judged unapprovable due to the failure to satisfy the “Unintentionality Criterion,” an opportunity of explanation is given to the applicant. If the request for restoration is still unapprovable even with the explanation, the procedure for which the restoration was requested is rejected. The applicant etc. can request return of the restoration commission later. Note that, however, the return of the restoration commission cannot be requested if the procedure is rejected because an instruction of making amendment of the Statement of Grounds for Restoration was issued but the applicant etc. failed to respond to the instruction.
4. Case Where the Remedy is not Granted (Case Study)
The Japan Patent Office presents assumed cases where the remedy may be ungrantable as follows.
(1) In-house Policy Change after Expiration of the Time Limit
A patent application was filed. When it was discussed in the company whether the request for examination of the application was necessary before the time limit for the request for examination, it was determined unnecessary. After the expiration of the time limit for the request for examination, as a result of an in-house policy change, the company decided to request the examination of the application, and thus filed a Statement of Grounds for Restoration.
(2) Delayed Payment
This is a case in which an Applicant X takes a procedure for national entry into Japan (hereinafter, referred to as the “national-entry procedure”) by ordering an Agent B in Japan through another, overseas Agent A.
The Applicant X traditionally tends to delay in payment to the Agent A. So, in guiding the Applicant X about the national-entry procedure, the Agent A expressly asked to pay the charge previously before the time limit for the order, as a requirement for the Agent A to order the Agent B to take the national-entry procedure, via an e-mail. The Applicant X sent an e-mail to the Agent A, indicating “we will not pay previously the charge before the time limit for the order, if we decide not to take the national-entry procedure.” Then, the charge was not paid before the time limit for the order, and thus the Agent A did not order the Agent B to take the national-entry procedure, including submission of translations. Later, the Applicant X informed the Agent A that they decided to take the national-entry procedure after expiration of the time limit for the national entry in Japan, and thus they wish to request restoration. The charge was paid, and then the Agent A made an order so that the Agent B submitted a Statement of Grounds for Restoration.
(3) Inquiry from Other Company after Determination of Abandonment of Right As a result of discussion on the necessity of patent right in a company, it was decided not to maintain the patent right, and thus payment and late payment of the patent fee were not made. After expiration of the time limit for late payment, other company presented their interest in the abandoned patent right. Therefore, the policy was changed to maintain the right, and a Statement of Grounds for Restoration was filed.
(4) Management Decision due to Financial Affairs
A company faced a severe business condition, and applied for a loan from a financial institution, but the loan application was rejected. The company decided not to maintain the patent right in order to prioritize engagement of their employees so that they did not pay the patent fee. After expiration of the time limit for late payment, the loan application was approved and the business condition was improved. Thus, the policy was changed to maintain the patent right, and a Statement of Grounds for Restoration was filed.
(5) Resumption of Business by Appointment of a Successor after Business Closure
A requestor (service industry) had a trademark right, but decided to close the business because there was no successor. Since the requestor was going out of business, there was no need to apply for renewal of the trademark right, so the requestor did not take the procedure. After expiration of the time limit for an application for renewal, a successor was appointed and the business was decided to be continued. Therefore, the requestor filed a Statement of Grounds for Restoration.
(6) Expiration of Procedure Time Limit due to Insufficient Arrangement with Co-owner
Regarding patent right shared by right holders A and B, it was difficult to arrange the maintenance of the right between the two parties, and as a result, they decided to give up on maintaining the patent right. After the time limit for late payment expired, A and B changed their policy regarding the maintenance of the patent right, and reached an agreement on details, such as payment procedure, so they submitted a Statement of Grounds for Restoration.
(7) Rejection of Procedure due to Failure to Respond to an Instruction Related to Deficiencies in Statement of Payment
There was deficiency in the contents of the statement of patent annuity payment, and an instruction for supplementation was issued. The right holder, however, did not take the supplementation procedure because the right became unnecessary to be maintained, and the statement of payment was rejected. After expiration of the time limit for late payment, the right holder changed the mind, and seeking to maintain the right, filed a Statement of Grounds for Restoration.
5. Summary
It is believed that, as a result of the change to the “Unintentional Criterion,” expiration of the time limit due to input errors in a due date management software, poor communication between an agent in Japan and an agent outside Japan, will be eligible for the remedy.
On the other hand, as seen in the case study, if the applicant once decided on its own initiative not to carry out the procedure and then changed the decision, the expiration of the time limit will not be eligible for the remedy.
If you have any questions about whether individual cases are eligible for the remedy, please feel free to contact us.
