JPO to simplify criteria for restoration of IP rights after expiry of a deadline
Restoration of IP rights in Japan
The Japan Patent Office will simplify the requirements for applications seeking restoration / recovery of patents and other types of IP applications after the expiry of a time limit. The relaxed requirements are expected to reduce the procedural burden on such applicants as well as significantly increase the JPO’s acceptance rate of recovery requests.
The new rule is scheduled to come into effect from April 1, 2023*, after amendments to Japanese IP laws were enacted last year. It will apply to all types of IP application** and various statutory time limits during standard IP prosecution, such as a filing deadline or due date for annuities etc.
Recovery requirements previously too strict
Setting aside the temporarily rules for recovery during the global Covid-19 pandemic for one moment (see below), the general requirements for successful recovery after an expired deadline has been very difficult to meet up to this point. An applicant was required to submit “legitimate reasons” (outside of reasonable control) for failing to meet a deadline and proof that the failure occurred despite “due care” by appropriate patent management systems and qualified management staff. Detailed supporting evidence of these “unavoidable” circumstances was also mandatory – human error was not an admissible reason.
It is generally accepted that this strict interpretation of “legitimate reasons” and “due care” and the mandatory documentary evidence placed an unfair burden on applicants, that has contributed to much lower recovery acceptance rates in Japan (10-20%) compared to other jurisdictions (e.g., US–90%; EU–60-70%).
Rule revisions
The new rule reduces the recovery standard from “legitimate reasons” and “due care” to “unintentional” reasons for missing a deadline. The scope of admissible reasons also now
includes human error as well as procedural management error. The submission of evidential documents will also be
voluntary rather than mandatory.
New fees
The JPO has also introduced official fees for filing a request for recovery under the new rules. These are as follows: Patents - 297,000 yen; Utility Models - 50,000 yen; Designs - 25,000 yen; and Trademarks - 102,000 yen. The new fees are expected to encourage only applicants with genuine reasons for missing a deadline, rather than reliance on the new rule as a general strategy.
Recovery Request citing Covid-19
Due to the impact of the Covid-19 global pandemic, the JPO has temporarily relaxed the requirements for requesting recovery. Thus, at the time of writing and until the new rules come into force, if an application simply states that the reason for failure to meet a deadline was as a result of Covid -19 (e.g., lockdown, illness etc), recovery will generally be granted. No supporting evidence is necessary.
For your reference, please see our explanation of the current Covid-19 related recovery requirements (go to M.4 Recovery of Application After Missed Deadline):
KIPB is here to help
The upshot of all this is that recovery is likely to become easier than has previously been the case. If you would like KIPB to help you with a case that needs restoration, please feel free to contact us.
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* Date has not been formally announced.
** Scope of applications expected to include both PCT filings (e.g. failure to meet the 30-month Japan national entry deadline) and Paris Convention filings, and well as trademark, utility model and design filings.
*** Above Table compiled from data provided by the Japan Patent Attorneys Association (JPAA).
