Applicant Friendly Changes to Japanese Patent and Trade Mark Practice Approved

On 15th July 2022 the Japanese Cabinet approved some notable applicant friendly changes to Japanese patent and trade mark practice, which will take effect from 1st April 2023.

Patents: Where a patent right has lapsed due to the expiring of the procedural period restoration can be requested. However, currently it is not easy to obtain restoration as the requirement of having a legitimate reason is hard to satisfy, with the following types of reasons generally being insufficient: improper management of deadline by a patent attorney; a coincidence of bad luck; or there were special circumstances.

From 1st April 2023 restoration requests in respect of failure to meet the procedural period will only need to meet the standard of not being caused by wilful misconduct if in respect of any of the following actions where the indicated status on or after 1st April 2023 is satisfied:

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

Trade Marks: Unlike most contracting states to the Madrid Protocol, Japan requires fees to be paid via the International Bureau when grant of protection is issued in addition to the designation payment at the time the application for International Registration is filed. As not all applicants are aware of Japan’s two-stage fee payment system many Japanese designations have lapsed on account of failure to pay the grant fee.

From 1st April 2023 Japan will align with most other contracting states by only requiring payment at the filing stage. This will mean the filing fee for Japan will increase, although the amount has yet to be specified. In the interim, if an applicant misses the payment deadline for the grant fee and that deadline was up to two-months ago, they can request continued processing under rule 5bis of the Common Regulations. This will involve an addition fee, but will be cheaper than refiling.

Author: Quinn Miller

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