Reinstatement of an Application in Japan after the Filing Deadline

Is it possible to reinstate a lapsed application 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.

How do I reinstate my lapsed patent or application in Japan?

To reinstate a lapsed case in Japan, the applicant must file a Request for Reinstatement (kaifuku riyūsho) with the JPO along with all the applicable procedures for the missed deadline (for National Phase Entry for a PCT application, this also includes the Japanese translation) with the JPO within two months from “the date in which the cause of the failure to meet the deadline ceased.” What does this actually mean? This means that an applicant has two months to file a Request for Reinstatement from the time that the problem preventing the applicant from meeting the deadline was fixed.

Due Care and Reinstatement

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.

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

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.

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.

As seen above, 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 and a lack of acceptance for mistakes or human error within Japanese culture as a whole. Although Japan is moving towards a more global outlook for the JPO and its filing procedures, the standards concerning due care unfortunately remain extremely strict.

Essential Strategy for Reinstatement

Within the Request for Reinstatement, the applicant must provide both a timeline of events leading up to and including the lapse and filing for reinstatement, along with a written explanation of these events. In both the timeline and the written explanation in the Request, it is important for the applicant to build a narrative that puts the failure to meet the requisite deadline in the best possible light.

While the applicant must obviously not lie or fabricate evidence, they are under no obligation to disclose all the facts surrounding the lapse. Instead, the applicant must build a narrative, or story, around the most helpful facts. This narrative should describe the firm in a positive light and focus on the due care given to the lapsed case both before and after any incident. A strong narrative will demonstrate to the Examiner that the case was handled with sufficient due care under Japanese standards. So, a strong and convincing narrative in the Request for Reinstatement must:

  1. Describe the firm in adequate detail, including the experience and qualifications of all responsible individuals.
  2. Build a foundation of due care that the firm routinely operates in.
  3. Provide a reasonable explanation of how a mistake was made or error occurred under and in spite of this system of due care.
  4. Detail the steps leading up to the incident, how the incident occurred, and the steps taken immediately afterwards in the best possible light.

A strong and convincing narrative must also be supported by documented evidence. The Request should include solid documentation of normal handling of cases as well as documentation of the extenuating circumstances of the lapsed case. Helpful documentation can include:

  1. Screenshots of any system failures
  2. Doctor’s notes/hospital records confirming illness/hospitalization
  3. Examples of docketing system products (daily/weekly/monthly docketing reports, reminder emails to clients)
  4. Example emails and or instruction letters to national associates
  5. Copies of emails for the applicable case referenced within the Request for Reinstatement

Unfortunately, although affidavits can and are sometimes used as supporting evidence for reinstatement, they are generally not considered very strong evidence. The JPO (and Japanese culture as a whole) is generally both cynical, in that they do not take items or statements on good faith, and structured, in that they require proper records and documentation for any asserted facts. The JPO looks favorably on official documentation from a third party (such as hospital records for illness, etc.). As such, it is also helpful to notarize any evidence when appropriate, as this can lend credibility in the eyes of the Examiner.

What are my chances of success?

We are also often asked about the chances of successfully reinstating a particular case. In truth, it is difficult to say how the JPO will view a particular Request for Reinstatement. Japan as a society in general is very strict when it comes to error, and especially when it concerns human error such as docketing mistakes or communication errors.

However, at Keisen we feel that the above standards are both too strict and unfair to foreign applicants, and have argued that subjecting foreign applicants to the same rigorous standards as those of Japanese applicants effectively discriminates against foreign attorneys, whose own countries’ standards may not be as strict. We believe that the current standards are in violation of the PCT and Paris Convention, as well as the Patent Law Treaty (PLT), and we strongly believe that the standards of due care must be applied to attorneys and applicants based on their own countries of practice.

We also believe that IP is valuable, and every opportunity must be taken to protect it. The reinstatement process is appealable up through the JPO and into District Court and finally to the IP High Court of Japan, and although the JPO’s standards may deny various cases, the courts in Japan are freer in their interpretation and application of standards in Japan. Keisen is prepared to fight for and defend your rights before the JPO and, if necessary, appeal to the District Court and the IP High Court in Japan.

So what’s the Take-Away?

Japan is a country with a strict sense of responsibility, and this is reflected in their standards of reinstatement at the JPO. However, law and policy orientation in Japan is slowly changing towards a more globally inclusive posture. As any seasoned practitioner knows, mistakes will happen. These mistakes must be presented in the best possible light to the JPO when the applicant files a Request for Reinstatement. Do not lie, and tell the helpful truth about your story.

* The information provided on this website is for informational purposes only and is not intended as legal advice.

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