Q1 I unintentionally failed to enter the Japanese national phase within the 30-month time limit. Is there any way to reinstate my patent rights, and enter the Japanese national phase?
A1 There is a possibility, if your case falls under the below Article of the Patent Law Treaty (PLT). This came into effect in Japan on April 1, 2012.
Article 12: Reinstatement of Rights After a Finding of Due Care or Unintentionality by the Office
(1) [Request] A Contracting Party shall provide that, where an applicant or owner has failed to comply with a time limit for an action in a procedure before the Office, and that failure has the direct consequence of causing a loss of rights with respect to an application or patent, the Office shall reinstate the rights of the applicant or owner with respect to the application or patent concerned, if:
(i) a request to that effect is made to the Office in accordance with the requirements prescribed in the Regulations;
(ii) the request is filed, and all of the requirements in respect of which the time limit for the said action applied are complied with, within the time limit prescribed in the Regulations;
(iii) the request states the reasons for the failure to comply with the time limit; and
(iv) the Office finds that the failure to comply with the time limit occurred in spite of due care required by the circumstances having been taken or, at the option of the Contracting Party, that any delay was unintentional.
(2) [Exceptions] No Contracting Party shall be required to provide for the reinstatement of rights under paragraph (1) with respect to the exceptions prescribed in the Regulations.
(3) [Fees] A Contracting Party may require that a fee be paid in respect of a request under paragraph (1).
(4) [Evidence] A Contracting Party may require that a declaration or other evidence in support of the reasons referred to in paragraph (1)(iii) be filed with the Office within a time limit fixed by the Office.
(5) [Opportunity to Make Observations in Case of Intended Refusal] A request under paragraph (1) may not be refused, totally or in part, without the requesting party being given the opportunity to make observations on the intended refusal within a reasonable time limit.
Q2 I currently have a PCT international application, and am considering entering into the Japanese national phase. However, the time is running out and I am looking for the way to drop a priority claim without losing an opportunity in my patent rights. Please advise.
A2 The applicant may withdraw a priority claim, made in the international application under Article 8(1), at any time prior to the expiration of 30 months from the priority date, according to the PCT Rule 90bis.3. When the withdrawal of a priority claim causes a change in the priority date, any time limit that is computed from the original priority date and has not already expired shall be computed from the priority date resulting from that change. In other words, the new time limit will be 30 months from the new priority date.
(The information provided on this website is for informational purposes only and is not intended as legal advice. Feel free to consult us. You can read more about reinstatement after a missed deadline at our Reinstatement portal and normal PCT national phase entry to Japan at our Patents portal.)
