Enforcement of the revised patent law on relaxation of requirements for restoration of patent rights

The Japanese Patent Law as amended in 2021 (hereinafter referred to as the “Amended Japanese Patent Law”) will come into effect on 1 April 2023. Along with this amendment, the regulations under the Japanese Patent Law will also be revised.

The Japanese Patent Law amendment in 2021 was made within the scope allowed to the Contracting Parties of the Patent Law Treaty (PLT) and the Singapore Treaty on the Law of Trademarks (STLT).

Article 12(1) of PLT requires the Contracting Parties to reinstate the rights of the applicant or owner of a patent when the applicant or owner has failed to comply with a time limit for an action in a procedure. On the other hand, the PLT allows the Contracting Parties to selectively adopt one of the following criteria for reinstating the rights of the applicant or owner if:

i) the applicant or owner has failed to comply with the relevant period in spite of due care required by the circumstances (hereinafter referred to as the “due care criteria”);

ii) the delay was unintentional. (hereinafter referred to as the “unintentional criteria”).

STLT has similar articles.

When Japan joined PLT in 2016, Japan adopted the due care criteria in its Patent Law, Utility Model Law, Design Law and Trademark Law (hereinafter referred to as “Japanese Patent Laws”). In 2021, the Japanese Patent Laws were amended to shift from the due care criteria to the unintentional criteria. In particular, terms of the Japanese Patent Laws stipulating the condition for reinstating the rights of the applicant or owner, that is, “(if) there is a justifiable reason for being unable to file…” were changed to “(if the delay) was unintentional”.

However, the boundary of “unintentional” is still unclear. The Japanese Patent Office says it is difficult to show examples for now and promises to keep on collecting and analyzing the cases to clarify the boundary of “unintentional”. Nevertheless, delays due to computer system failures or human errors such as carelessness are likely to be considered “unintentional”.

Action by the applicant or owner for restoration of the right must take place within two months from the date on which the action was to be performed.

The restorations of the right to be covered are as follows:

(1) Rights related to submission of translations
Article 36-2(6) of the Patent Law, Article 184-4(4) of the Patent Law, and Article 48-4(4) of the Utility Model Law

(2) Rights related to priority claims
Article 41(1) of the Patent Law, Article 8(1) of the Utility Model Law, Article 43-2(1) of the Patent Law, Article 11(1) of the Utility Model Law, Article 15(1) of the Design Law

(3) Rights related to requests for examination
Article 48-3(5), (7) of the Patent Law

(4) Rights related to late payment of patent fees, etc.
Article 112-2(1) of the Patent Law, Article 33-2(1) of the Utility Model Law, Article 44-2(1) of the Design Law, Article 21(1) of the Trademark Law, Article 41-3(1), (3)  of the Trademark Law

(5) Rights related to submission of the notification of the appointment of a patent administrator
Article 184-11(6) of the Patent Law, Article 48-15(2) of the Utility Model Law

(6) Rights related to the renewal of a defensive mark registration
Article 65-3(3) of the Trademark Law

In addition, the applicant or owner must pay a restoration fee for the restoration of rights. Also, if it is deemed necessary, a document proving the unintentional reason must be submitted within two months after the procedure for restoration of rights.