When a patent application one wanted to file in Japan is filed late, how can the applicant win approval for late filing (Reinstatement)? They may file a Request for Reinstatement. In Due Care and Late Filing (Reinstatement) of an Application in Japan, we explained that the applicant needs to demonstrate it used “Due Care” leading up to a failure to file, and was unable to file due to some firm technical or personal problem, and that Japanese legal culture can be suspicious of human error and mistakes.
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 (but true!) light.
What Strategy May an Applicant Take to Win Acceptance of Late Filing?
While the applicant obviously must not lie or fabricate evidence, they are not obliged legally to disclose all the facts surrounding the lapse. Instead, the applicant may establish their case through the narrative, or story, surrounding 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 by Japanese standards. So, a strong and convincing narrative in the Request for Reinstatement must:
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:
Unfortunately, although affidavits can be, 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 acceptable 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 the Chances of Success?
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, in light of patent practice in other countries, Japanese practice is arguably unfair to foreign applicants, in 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. In other words, some of the rigor of Japanese requirements may be in violation of the PCT and Paris Convention, as well as the Patent Law Treaty (PLT), and it may be asserted that the standards of due care should better reflect those established in the countries of practice where the attorneys and applicants are based.
The reinstatement process may be appealed up through the JPO to the District Court and finally to the IP High Court of Japan, and although the JPO’s standards may block various cases, the courts in Japan are freer in their interpretation and application of standards 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.”