Applicant-Friendly Changes to Japanese Patent and Approved Trademark Practice

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On July 15, 2022, the Japanese Cabinet approved certain notable applicant-friendly changes to Japanese patent and trademark practices, which will come into effect on April 1, 2023.

Patents: When a patent right has expired due to the expiration of the procedural deadline, restoration may be requested. However, at present, it is not easy to obtain restoration because the requirement of legitimate reason is difficult to satisfy, the following types of reasons being generally insufficient: mismanagement of the deadline by a patent attorney; a coincidence of bad luck; or there were special circumstances.

From April 1, 2023, requests for restoration for failure to meet the procedural deadline will only have to meet the standard of not being caused by willful misconduct if, for one of the following actions, the status indicated on the 1st April 2023 or later is satisfied:

  • translation of a foreign language application or a PCT application (for pending applications);
  • patent application claiming priority (for applications filed on or after April 1, 2023);
  • application for examination; (where the request for examination was filed on or after April 1, 2023) or
  • late payment of annuity (patents).

Trademarks: Unlike most Madrid Protocol Contracting States, Japan requires fees to be paid via the International Bureau when granting protection in addition to payment for the designation when filing the application for international registration . Since not all applicants are familiar with the Japanese two-step fee payment system, many Japanese designations have lapsed due to non-payment of the grant fee.

From April 1, 2023, Japan will align with most other contracting states by only requiring payment at the filing stage. This means that the filing fee for Japan will increase, although the amount has not yet been specified. In the meantime, if an applicant misses the deadline for payment of the grant fee and the deadline is up to two months old, they may request further processing under Rule 5.bis of the Common Regulations. This will incur additional costs, but will be cheaper than a new deposit.

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