Procedures for getting permission from the Japan Patent Office for the late filing of a PCT National Phase Entry into Japan

This article is to follow up our previous article “How To Get Permission For The Late Filing On The Basis Of Coronavius Disruption?“, in which we basically proposed to file a request for permission before the Japan Patent Office within 2 months from the original 30 months deadline. However, we recently receive  inquiries from overseas applicants regarding PCT national phase entries into Japan for which even the above 2 months period already expired. Hence, we would like to add some supplemental comments to the previous information.

1) Normal Procedure based on Legitimate Reasons:

As you may know, there is a rule in Japanese patent practice about unintentional missing of deadlines. It covers the deadline to submit national phase entry of a PCT application. In order to validly enter the national phase of a PCT application into Japan after the lapse of 30 months, it must be verified that there is a “legitimate reason” for the lapse of the 30 months. In this respect, simply inadvertent failure to enter the national phase does not meet the requirements.

In general, the legitimate reason is very restricted and the chance of success in getting permission from the JPO for the late filing after the deadline already lapsed is extremely low. For your information, the JPO lists examples of the justifiable cause (although you might have already checked them):

• Absence of the agent due to his/her unexpected hospitalization · Absence of the agent due to his/her scheduled hospitalization · Absence of the person in charge of the procedure due to an accident, etc. in the case where the applicant, etc. is a legal person · Absence of the person in charge of the procedure due to compulsory retirement in the case where the applicant, etc. is a legal person · Collapse of a company building due to an earthquake · Destruction of an old company building before constructing a new one · Unavailability of online filing due to a blackout caused by lightning · Unavailability of online filing due to a scheduled blackout · Notification of an incorrect time limit due to a system error

2) New Procedure based on Coronavirus Pandemic:

Meanwhile, the Japan Patent Office revised the guideline last year regarding the procedure to get permission based on the Coronavirus pandemic, and under the new guideline, it is NOT required to submit any certificate. Further, the chance of success in getting permission is expected to be much higher than the normal process.

Hence, if you wish for us to file the national phase entry of the captioned PCT application into Japan, we think it advisable to file a request for the permission on the basis of Coronavirus. 

Please note that the request for such permission should be filed within two months from the time the cause disappeared. We believe it advisable to file the following documents within the two months period at the same time, to be on the safe side.

1. Request for permission;
2. Petition for entry; and
3. Japanese translation of the PCT application.

3) Required Information for the New Procedure:

Although it is not required to submit any certificate, we still need some information to find whether each case will be entitled to such permission.

In order to find whether this case will be entitled to such permission, we need to check the reasons and processes why and how the applicant did not timely file the national phase entry. The reasons and the processes must be explained in detail. Please provide us with such information, for example, “the applicant’s offices were closed until …”, “the applicant’s legal department began working from home from … to …”, etc. In addition, if the applicant took the above measures to meet the order/request issued by the government, we would appreciate it if you could provide us with the information regarding such order/request (for example, the issuance date, start/end date, brief content (restriction on movement, lockdown, etc.).

In the past cases, we sometimes submitted copies of certificates, such as a medical certificate for individual, to strengthen our arguments and successfully got permission from the JPO. 

We believe the above comments will be clear to you.  Should you have any further questions, please do not hesitate to contact us at info@allegropat.com