Q&A: Due Care and Late Filing (Reinstatement) of an Application in Japan

Is it possible to reinstate a lapsed patent application (including PCT application’s national phase) in Japan?

This is a question we are asked frequently at Keisen. The short answer is, Yes! It certainly is possible. The longer answer is that, although it is possible, the standards and procedures of the Japanese Patent Office (JPO) are very different than those of the USPTO. As of April 1, 2012, Japanese Patent Law allows for reinstatement of patent applications that have lapsed at deadlines for National Phase Entry, filing the Japanese translation. However, the applicant must file for reinstatement with the JPO within two months from “the date in which the cause of the failure to meet the deadline ceased.” At this time, it must also demonstrate that the case lapsed in spite of substantial “due care.”

What Does the JPO Deem “Due Care”?

Unfortunately, reinstating a lapsed case in Japan is neither as simple nor easy as in the United States. Japan’s Reinstatement procedures are modeled after the EPO and thus the Request for Reinstatement must show that the failure to meet the deadline occurred in spite of due care taken by the applicant. Whether or not sufficient due care was taken by the applicant will be determined by an Examiner at the JPO based on the JPO’s standard of due care and the facts presented in the Request for Reinstatement.

Although using standards generally similar to the EPO’s of reasonable due care (demonstration of sufficient cross-check), Japan tends to be severely strict with standards of reasonable due care. Below are some examples of successful and unsuccessful cases put forth for reinstatement with the JPO.

Examples of Successful Cases

  1. A case in which the deadline was missed due to an unforeseen and unpredictable technical malfunction with the deadline management system despite following normal operational procedure, which was further supported by a statement of proof from the system company confirming the relationship between the technical failure and the missed deadline.
  2. A case in which the deadline was missed due to the applicant’s sudden illness, which was further supported by proof of medical diagnosis supporting the relationship between the illness and the missed deadline.

Examples of Unsuccessful Cases

  1. A case in which the request from the applicant or local representative to those managing the patent did not include consideration for the time difference and thus those managing the patent case were unable to file within the deadline.
  2. A case in which the applicant or local representative sent an email requesting filing to those managing the patent, but the email was not delivered successfully and those managing the patent were not able to file the necessary paperwork within the deadline.

What Cultural Expectations Are There for Due Care in Japan?

Standards for due care and personal responsibility are much stricter in the JPO than in the USPTO, even stricter than the previous “unavoidable” standards employed by the USPTO. This is largely due to a strong culture of responsibility. Japanese people often are unwilling to overlook mistakes or human error.

Certainly, law and policy orientation in Japan is slowly changing towards a more globally inclusive posture. Yet the standards concerning due care remain extremely strict. If you have a case that has lapsed but is still worthy of protection in Japan, your case must be presented in the best possible light to the JPO when filing a Request for Reinstatement, as discussed in “Strategy for Requesting Late Filing (Reinstatement) of a Patent Application in Japan.”

* The information provided on this website is for informational purposes only and is not intended as legal advice.
** This article is based on “Reinstatement of an Application in Japan after the Filing Deadline.”

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