News & Topics

I. Recovery after Expiration of Periods for Filings and Payments

Following requests from applicants and owners of utility patents, design patents, utility models, and trademarks, the relevant Acts were revised to allow an applicant or owner thereof to file necessary documents, requests, information, etc. or make necessary payments to obtain or maintain an issued utility patent, design patent, or utility model, or a registered trademark, after expiration of the designated period to do so. The new procedures can avoid abandonment or loss of a certain benefit that might have resulted from such a delay before the revisions.

The revisions include a recovery of right for: (1) submitting a Japanese translation in a utility patent application¹  and utility model application; (2) claiming priority from an earlier filed application(s) in a utility patent application, design patent application, and utility model application; (3) requesting an examination of a utility patent application; (4) a payment of the maintenance fee  with surcharge for a utility patent, design patent, and utility model; (5) appointing a domestic representative of a foreign applicant of a utility patent application; and (6) renewing a trademark registration. The revisions were made in the following provisions:
    (1) for submitting a Japanese translation, Article 36-2(6) and Article 184-4(4) of the Patent Act, and Article 48-4(4) of the Utility Model Act;
    (2) for claiming priority, Article 41(1)(i) and 43-2(1) of the Patent Act, and Article 8(1)(i) of the Utility Model Act, and the provisions of the Patent Act are applied mutatis mutandis to Article 15(1) of the Design Act;
    (3) for requesting examination, Article 48-3(5) of the Patent Act;
    (4) for the  maintenance fee payment, Article 112-2(1) of the Patent Act, Article 33-2(1) of the Utility Model Act, Article 44-2(1) of the Design Act;
    (5) for appointing a domestic representative, Article 184-11(6) of the Patent Act; and
    (6) for renewing a trademark registration, Article 21(1), 41-3(1), 65-3(3) and Supplementary Provision, Article 3(3) of the Trademark Act.

Effective date:
The effective date of the revised provisions in the Acts will be designated by a cabinet order but no later than May 21, 2023. Currently, the revisions are expected to become effective on April 1, 2023.

Before the revisions, the recovery of the right after expiration of the designated periods has been allowed only when the delay is justifiable (i.e., the delay occurred even though reasonable care was exercised). There has been no JPO fee for requesting the recovery in these circumstances.  

Under the revisions, the right lost by expiration of the designated periods can be recovered if the delay is “unintentional” and if the request is filed with the government fee. The government fee for a request for a patent or patent application is JPY 297,000 (ca. $2700), that for a design patent or an application thereof is JPY 25,000 (ca. $230), that for a utility model or an application thereof is JPY 50,000 (ca. $460), that for a trademark is JPY 102,000 (ca. $930)².

This new procedure is similar to a procedure of filing a petition for revival of an unintentionally abandoned utility or design application or patent  or a petition for unintentionally delayed claim of benefit from a prior application, with the USPTO fee, in the US.   

Please note that the revisions apply to the expiration that occurs on or after the effective date of the revisions. The current law applies to the expiration that occurs before the effective date.

¹ The Patent Act of Japan provides that Japanese translation of the application of a PCT application must be filed within a period for entering a national phase (i.e., 30 months from the priority date or two months after the filing of an application form, whichever is later) .  If the translation is not filed within the period, the PCT application is deemed to be withdrawn (Article 184-4(3) of the Patent Act).  Thus, filing a request for recovery (id. at Article 184-4(4)) is necessary.

² See Appendix Table 11 of the Patent Act, Appended Table 7 of the Utility Model Act, Appendix Table 3 of the Design Act, and Appendix Table 5 of the Trademark Act, respectively for the government fee, and for details, the Ordinance of the Ministry of Economy, Trade and Industry. Please note that the amounts in USD are to provide an idea of the amounts and are not exact.
 
II. Elimination of Surcharge for Delayed Payment Caused by Pandemic, Natural Disasters, etc.

Prior to the revisions, if a payment of an issue fee or maintenance fee of a utility patent, design patent, utility model, or trademark was delayed due to a reason not attributable to the applicant or owner thereof, a surcharge in an amount equal to the fee was required as a surcharge for the delay of the payment. The revisions eliminate the surcharge if the payment is made within a reasonable time after expiration of the designated payment period. The revisions were made in the following provisions:
    (1) Article 112(2) of the Patent Act;
    (2) Article 33(2) of the Utility Model Act;
    (3) Article 44(2) of the Design Act; and
    (4) Articles 43(1) to 43(3) of the Trademark Act.

Effective date:
The effective date of the revised provisions in the Acts will be designated by a cabinet order but no later than November 21, 2021. Currently, the revisions are expected to become effective on October 1, 2021.

Please note that the revisions are applied to a payment for which the designated period has passed on or after the effective date of the revisions, and that the surcharge is applied to the payment for which the period has passed before the effective date.