Current Practice:

There is a rule in Japanese patent practice regarding unintentional missing of deadlines.  However, the JPO requires that the failure should be due to a “justifiable cause”, which is generally very restrictive.

As you may know, since 2020, the JPO has been accepting special restoration requests due to disruptions in business activity due to the Coronavirus, and the chance of success has become much higher than that for normal requests based on “justifiable cause”.  At our firm, the success rate in restorations has been 100% to date.

However, the chance of success in receiving permission from the JPO for late filings based on reasons other than Coronavirus is extremely low.  The JPO announces that the permission rate is around 10-20%, while it is about 60-70% at the EPO and 90-95% at the USPTO.

New Practice:

Under the above circumstances, the JPO will relax the requirement for restoration for applications filed on or after April 1, 2023.

Under the new practice, it will be possible to restore patents/applications which have lapsed due to missing deadlines, if the failure is “unintentional”.  

The new practice covers, for example, the following procedures:

1. Japanese translations of PCT applications;
2. Claims to priority;
3. Requests for examination.

As a result, the new requirement will apply to restoration of missing deadlines caused by human error, such as input errors in term management software, or procedural management errors, such as defects in the management system, which had not been remedied before.  The request for restoration must be filed within one year from the end of the original deadline.

However, please note that the JPO will require a substantial fee for the restoration procedure.  Although the amount has not yet been determined, the JPO states that “the fee is equivalent to the amount that would have to be paid to the JPO (the average fee required from the filing of an application to obtainment of patent rights) if it is presumed that the lapsed right was reacquired by filing an application”.

Official Fee [Update on February 13, 2023]:

The JPO announced that the Official Fees required for the restoration procedures are as follows: 

• Patent: JPY 212,100
• Utility Model: JPY 21,800
• Design: JPY 24,500
• Trademark: JPY 86,400

Notification from the Japan Patent Office [Update on December 13, 2023]:

In accordance with our clients’ instructions, we have filed several requests for restoration under the new guidelines.

Regarding the late filing of a request for examination, we receive a notification from the Japan Patent Office very early, usually within one (1) month, informing us that the case is eligible for restoration for the late filing .

Meanwhile, regarding the late filing of a national phase entry into Japan based on a PCT application, we receive such a notification relatively later, sometimes more than four (4) months.

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