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2021.11.30 Patent

Information on Legal Revision – Relaxation of requirements for restoration of rights – (follow-up report)

1. Introduction

In the Japanese Patent Law, Utility Model Law, Design Law, and Trademark Law, a system for restoring rights is established in which, when rights are lost following failure to comply with the designated/statutory time limit in the procedures before the Japan Patent Office (JPO), restoration of the lost rights is admitted. This year (in 2021), legal revision was made to change the standard for determination on restoration of rights based on this system from the “Due Diligence” standard to the “Unintentional” standard. This revision is to come into effect as of the date specified by Cabinet Order within a period not exceeding two years from the promulgation date of May 21, 2021. Earlier enforcement is much anticipated under current circumstances in which applicants/registrants are still at risk of failing to complete prescribed procedures within the designated/statutory time limits due to the influence of COVID-19 and may have an increased need for relief.

Therefore, the JPO has stipulated relief measures, in view of the influence of COVID-19, by restoration of rights lost following failure to comply with the statutory time limits, and is now implementing the relief measures. The JPO lists case examples as below in which the relief measures could be applied under the influence of COVID-19.

[Case Examples listed in the JPO website]

•  Applicants or their representatives were unable to implement procedures because they were infected with COVID-19.
•  Applicants or their representatives were unable to implement procedures because their offices were closed due to emergence of those who were infected with COVID-19.
•  Applicants or their representatives were unable to implement procedures because local governments in regions where they reside issued an order of or request for restrictions on movement due to the influence of COVID-19 and work at the office is restricted.
•  Applicants or their representatives were unable to implement procedures because they fell into financial difficulties due to the influence of COVID-19.
This newsletter will give you an overview of the relief measures.

 

2. Handling of Procedures Affected by COVID-19

2-1. Designated Time Limits (time limits designated in notices or orders issued by Commissioner, Chief Appeal Examiner, or Examiner at the JPO)

If prescribed procedures before the JPO cannot be carried out within the designated time limits due to the influence of COVID-19, the procedures could be considered to be valid even after the designated time limits lapsed, in accordance with the examples as below.
As for the procedures to respond to orders or notices for formality examinations by the JPO (except those for trials/appeals pending at the JPO), the procedures could be considered to be valid for an additional time period, such as the prescribed period in which “the requests for extension of the duration” can be filed plus two months, even after the designated time limits lapsed, without “the requests for extension of the duration”.
Methods for application are as below.
(1) In case of filing requests within the designated periods, the reasons are to be described in column “Details of statement” in Written Statements.
(2) In case of filing requests within a certain period of time, such as the prescribed period in which “the requests for extension of the duration” can be filed, after the designated periods lapsed with a document explaining the circumstances that prevented implementation of prescribed procedures, an “Others” column is to be added in a Written Argument etc., and the reasons for not having been able to implement the procedures are to be described in the column.

 

2-2. Statutory Time Limits (time limits the length of which is stipulated by law)

If the procedures listed below that should be carried out within the time limits specified by laws or governmental and ministerial ordinances cannot be carried out within such time limits due to the influence of COVID-19, the procedures can be carried out only within the relief period.
In conducting the procedures, a document explaining the circumstances that prevented implementation of prescribed procedures due to the influence of COVID-19 is to be attached.

 
<1> Procedures to which relief measures can be applied by carrying out the procedures within 14 days (Procedures for which relief from lapse of the time limits are statutorily stipulated on the ground of “Reasons beyond the Control”. The procedures need to be carried out within 14 days from the time it becomes possible (for overseas residents, within two months, or within one month for item (7) below).)

(Note: P, U, D, T, and IA in parentheses below represent Patent, Utility Model, Design, Trademark, and International Application, respectively.)

(1)   Submission of document proving the fact to seek application of exceptions to lack of novelty (P, D)
(2)   Submission of a priority certificate for claiming priority under the Paris Convention (P, U, D, T)
(3)   Division of patent applications (P, U)
(4)   Conversion of application of utility model registration or application of design registration into patent application (P)
(5)   Patent applications based on utility model registration (P)
(6)   Request for registration of extension of duration of patent right (P)
(7)   Submission of document under Article 67-2-2, paragraph (1) of the Patent Act prior to revision by this Act (registration of extension of duration) (P)
(8)   Payment of patent fees (registration fees) (P, U, D, T)
(9)   Request for refund of paid patent fees (registration fees) (P, U, D, T)
(10) Request for appeal against examiner’s decision of refusal (P, D, T)
(11) Request for retrial (P, U, D, T)
(12) Request for refund of fees for request for examination of application or fees paid in excess (P, U, D, T)
(13) Correction of Description etc. of an application for utility model registration (U)
(14) Withdrawal of demand for invalidation trial against utility model registration (U)
(15) Withdrawal of application for intervention concerning refund of fees for such application for intervention (U)
(16) Request for trial against examiner’s ruling dismissing amendment (D, T)
(17) Request for refund of individual designation fees for international application regarded as design registration application under Article 60-6, paragraph (1) of the Design Act (hereinafter referred to as “international design registration application”) (D)
(18) Submission of certificate to receive special provisions concerning time of filing of trademark application (T)
(19) Application for trademark registration after revocation of international registration (T)
(20) Application for trademark registration after denunciation of Madrid Protocol (T)
(21) Submission of document proving the fact to seek application of exceptions to lack of novelty of invention in international patent application (P)
(22) Submission of priority document certifying a priority claim under the Paris Convention when filing an international patent application or a request under Article 184-20, paragraph (1) of the Patent Act (P)
(23) Submission of document proving the fact to seek application of exceptions to lack of novelty of design in international design registration application (D)

 
<2> Procedures to which relief measures can be applied by carrying out the procedures within two months (Procedures for which relief from lapse of the time limits are statutorily stipulated on the ground of “Legitimate Reasons”. The procedures need to be carried out within two months from the time it becomes possible.)

(1)   Submission of translation of foreign language application (P)
(2)   Request for examination of application (P)
(3)   Delayed payment of patent fees (registration fees) and patent surcharge (P, U, D)
(4)   Submission of translation of patent application in foreign language (P)
(5)   Appointment of patent administrator of international patent application (application of utility model registration) for overseas resident (P, U)
(6)   Submission of translation of a utility model registration application in foreign language (U)
(7)   Application for registration of renewal of duration of a trademark right (T)
(8)   Delayed payment of later installment registration fee and registration surcharge (T)
(9)   Application for registration of renewal of duration of a right based on defensive mark registration (T)

 
<3> Priority claim (Procedures for which relief from lapse of the time limits are statutorily stipulated on the ground of “Legitimate Reasons”. The procedures need to be carried out within two months from the lapse of the priority period.)

(1)   Priority claim based on patent applications, etc. (P, U)
(2)   Priority claim as governed by the Paris Convention (P, U, D)
(3)   Claiming priority for an international application under the Patent Cooperation Treaty (IA)

 
<4> International applications under the Patent Cooperation Treaty (The procedures need to be carried out as soon as it becomes possible.)

(1)   Submission of a document pertaining to the procedure for an international application under the Patent Cooperation Treaty (IA)

 
<5> Payment procedures in which exemption of the patent (registration) surcharges is granted after lapse of the payment period of patent (registration) fees (Procedures for which exemption of the patent (registration) surcharges after lapse of the payment period are statutorily stipulated on the ground of “Reasons beyond the Control” (applicable to rights for which the payment period has lapsed on or after October 1, 2021). The procedures need to be carried out within two months from the date it becomes possible.)

3. Concluding Remarks

In addition to the above-described conditions for obtaining relief in the respective procedures, particulars of the procedures, the absolute time limits by which the procedures can be carried out based on the relief measures, and so on are stipulated in detail. Therefore, if you are faced with a situation where any relief measures for lapse of the time limit for prescribed procedures should be taken, or if you are anticipating such a situation, please contact us at the earliest possible stage. We would be grateful if we could propose most effective means for you.

 

Edited by Seiji Kimura

名古屋国際特許業務法人

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