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Japanese Patent FAQs

Entry of a PCT application in Japan

1. The deadline for entering the Japanese national phase has passed. Is there any remedy for entering the PCT application into the national phase in Japan?

Yes.  However, there is a very small chance that the JPO will accept a restoration request in a case where the PCT national phase 30 month date has already passed.

The restoration rules are more like the due care rules in the EPO rather than the rules of unintentional failure in the USPTO.  However, the JPO appears to apply the restoration rules more strictly than the EPO.

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2. A 30-month Japanese national phase deadline was missed due to an administrative error. Specifically, an incorrect PCT application No. was written when filing the Request of the PCT application. Is there any remedy for the failure of the 30-month deadline in Japan?

If the reason for writing the incorrect PCT application number is a simple oversight or mistake by a patent attorney, then the JPO will deem that the agent failed to take appropriate actions to enter the PCT national phase in Japan. However, if the error is due to an unavoidable reason, such as an earthquake, system problem, the JPO will deem that there is a reasonable justification for the failure.

If you would like to try to restore the PCT application in which the deadline was missed, it will be necessary to file a Japanese translation of the PCT application and a written explanation of the justification within 2 months from the date that the justification no longer exists.

Even if the PCT application in which the deadline was missed is filed together with a Japanese translation and the written explanation, note that the restoration may not be allowed by the JPO; that is, you may lose the fee without restoration (the official fee for filing a translation of 14,000 yen will be refunded).

Please also refer to the following page:
http://www.ondatechno.com/English/ip/patent/report/20120614.html

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3. What reasons were accepted as reasonable justification for the failure of the 30-month deadline of the national entry of PCT applications?

The following are examples in which there was a reasonable justification:

1. The applicant/agent uses a docketing-software of a system company.  Although the correct procedures had been performed, an unexpected system error occurred.  Thus, by submitting a certificate to prove a programing error by the system company and an explanation of the system and procedures, the failure of the 30-month deadline was justified.

2. Due to the applicant’s sudden illness, the 30-month deadline was missed.  By submitting a medical certificate issued by a medical institution and an argument of sufficiency of procedures and docketing system of the applicant’s agent, the failure of the 30-month deadline was justified.

The following are examples in which there was no reasonable justification:

1. Due to the time difference between where the applicant/agent is located and where a Japanese agent is located, the 30-month deadline was missed.  Since the applicant/agent sent filing instructions without considering the time difference, the Japanese agent did not receive the filing instructions in time. 

2. Due to miscommunication between the applicant/agent and a Japanese agent, the 30-month deadline was missed.  Although the applicant/agent sent filing instructions via e-mail to the Japanese agent, the Japanese agent could not confirm the necessity of the filing procedure in time since appropriate communications were not performed.

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4. The deadline for entering the Japanese national phase has passed. If we disclaim the earliest priority date and the 30 months deadline for the second priority has not yet passed, is it possible to enter the Japanese national phase?

There is no way to disclaim the earliest priority date at the national office level (at the Japanese Patent Office). Also, it is no longer possible to withdraw a claim of priority in the international stage according to PCT Rule 90 bis. 3. Such a request should have been filed within 30 months from the earliest priority date.

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