JPO Publishes Guidelines for New Relaxed Missed Deadline Remedies
February 22, 2023
As of April 1, 2023, the requirements for the restoration of patent, utility model, design, or trademark rights that have lapsed due to the expiration of a procedural period will be relaxed from “having justifiable grounds” to “not intentionally.” This remedy applies to cases where the missed deadline is on or after March 31, 2023.
A request for restoration must be filed within 2 months from the date on which the missed deadline is noticed, and no later than 1 year for patents (6 months for trademarks) after the missed deadline.
Regarding restoration of claiming priority, if the PCT application claiming the missed priority date within 14 months from the missed priority date in a non-Japanese country, the JPO will accept the request for restoration for the missed priority. In that case, the request must be filed with the JPO within 1 month from the deadline for submitting a Japanese translation of the PCT application (a Japanese translation must be filed within 2 months from the national entry).
For restoring a priority claim under the Paris Convention, a request for restoration of claiming priority must be filed within 14 months from the missed priority date. The Japanese application also can be filed together with the request within the 14 months.
The request for restoration must state:
(1) the reason why the applicant could not proceed within the prescribed period, and
(2) the date when the applicant became able to proceed.
For reinstatement of the request for examination, the failure to proceed must not have been for the purpose of delaying the request for examination.
The JPO will grant reinstatement proceedings in cases where the time periods are inadvertently missed, but NOT for the following reasons:
- Internal policy change after the deadline,
- Late payment (an advance payment is not paid by the deadline),
- Request from another company that is interested in the patent after the patent has lapsed,
- Business decisions due to financial circumstances, such as failure to obtain financing,
- Resumption of business by appointing a successor after closing the business,
- Excess due to lack of coordination with co-owners, and
- Procedures dismissed for failure to respond to official orders regarding incomplete payment forms.
<JPO’s fee for remedy for the failure to file by the deadline in Japan>
- Submission of a translation of a patent application in a foreign language (Patent)
- Claiming priority based on patent application, etc. (Patent)
- Claiming priority under the Paris Convention (Patent, Utility Model, Design)
- Request for examination (Patent)
- Payment of patent fees and surcharges (Patent)
- Submission of a translation of the international patent application filed in a foreign language (Patent)
- Notification of appointment of agent for an overseas resident in an international patent application (Patent, Utility Model)
- Claiming priority based on an application for a utility model registration, etc. (Utility Model)
- Payment of utility model registration fees and surcharges (Utility Model)
- Submission of a translation of an international utility model registration application filed in a foreign language (Utility Model)
- Payment of design registration fees and surcharges (Design)
- Restoration of trademark rights (Trademark)
- Restoration of a trademark right by late payment of a second-installment registration fee (Trademark)
- Registration of renewal of the duration of a right based on defensive mark registration (Trademark)
- Request for registration of re-classification of the designated goods (Trademark)