“If I missed the 30-month deadline for filing a PCT Japan National Phase application, can I still reinstate it?”
This is a question often asked by clients here at Keisen. Typically, the international application phase under a Patent Cooperation Treaty (PCT) has a window of 30 months from the original priority date. Within that time, the applicant must request to file the application in Japan.
The 30-month deadline can be missed for a host of reasons, but fortunately, Japan is one of the countries where restoration of rights for abandoned applications are possible under PLT Article 12, “Reinstatement of Rights After a Finding of Due Care or Unintentionality by the Office.”
If you inadvertently failed to file by the deadline, you can restore the application by filing the following:
- A written statement with an explanation of justifiable reasons for missing the deadline in spite of due care;
- Proof of (1) above;
- Japanese Translation of the PCT application
The definition of “in spite of due care” means failing to meet the deadline despite having taken all of the prescribed steps for the PCT national phase entry. The examples of justifiable reasons for having missed the deadline includes, systems failure, earthquakes and other natural disasters, power outages, hospitalization of responsible personnel, and human error by non-legal support staff.
The deadline for the reinstatement is the earlier of two months from the date the cause for the failure to meet the deadline no longer exists or within one year from the 30-month deadline.
The burden of proof is stricter in Japan compared to the US, which allows for a good faith statement of “unintentionality.” Ultimately, the decision to allow the reinstatement of the application rests on the discretion of the examiner whose decision can be appealed.