(New rules effective from April 2023)
July 2023
The expiration of a patent/application occurs when its valid term has expired, including the situation where a patent application is withdrawn or a patent right expires due to the failure to perform prescribed procedures necessary to maintain the patent within a specified period.
Under the existing system, in order to recover an expired patent application or patent right due to a missed deadline, it was necessary to prove the existence of “valid reasons” for the failure to perform the required procedure. However, this criterion was strictly applied in the JPO, which led to difficulties in recovery compared to other countries outside Japan.
Now, under the amended law, which will take effect from April 2023, the requirements for recovery of a lost application have been relaxed to include situations where the applicant did not intentionally cause the missed deadline. This means that by claiming that the deadline was not intentionally missed, it is now possible to recover rights for certain procedures by paying a recovery fee.
Specifically, if the inability to perform the procedure within the prescribed procedural period was not intentional, it is necessary to perform the missed procedure within the “relief procedural period”, i.e. within two months from the day when it became possible to perform the procedure after the deadline (when the unintentional inability to perform the procedure disappears), and within one year from the expiration of the procedural period (six months for trademark applications). In addition, it is necessary to submit a declaration of recovery, explaining the reasons for the inability to perform the procedure.
The purpose of this amendment to the law is to prevent the loss of protection for inventions and the like that should be protected on the merits but cannot be protected due to minor procedural errors. However, compliance with procedural deadlines remains important to prevent abuse of the system. It is also important to note that the re-establishment fee is significant. The recovery fee for a patent is set at JPY 212,100 and for a trademark at JPY 86,400.
Here are some of the procedures for which the relaxed recovery requirements apply
- Submission of Japanese translation of applications filed with foreign language documents (Patent Law)
- Submission of Japanese translations of international patent applications filed in a foreign language (Patent Law, Utility Model Law)
- Claiming priority based on a patent application or claiming priority under the Paris Convention (Patent Law, Utility Model Law, Design Law)
- Requesting examination of a patent application (Patent Law)
- Recovery of patent rights by payment of patent fees, etc. (Patent Law, Utility Model Law, Design Law)
- Application for renewal registration of trademark rights (Trademark Law)
Tsubame IP Law Firm can assist in the above recovery procedures and handle other tasks such as national phase procedures for PCT and management from filing to maintenance for patent/trademark.
Please feel free to contact us for further inquiries!