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The Patent Act Revision effective from April 1, 2023 will make recovery from unintentionally missed deadlines on or after April 1, 2023 possible if an action is taken within a specific period, subject to the payment of surcharge.

For the recovery, a declaration stating that the delay was unintentional must be submitted. There is no specific evidence required to prove that the delay was unintentional.

Surcharges for recovery from missed deadlines will be JPY 212,100 for patents, JPY 21,800 for utility models, JPY 24,500 for designs, and JPY 86,400 for trademarks.

The recoverable deadlines are specified in the revised Patent Act. We have listed some typical recoverable deadlines below.

Patents

• Late application claiming priority

For a late application (filed more than 12 months from Priority Date), the priority claim will be accepted if the application is filed within 14 months of the priority date and the delay was unintentional.

• Late PCT entry

A late PCT entry (later than 30 months) will be accepted if the entry is taken within two months from the date on which the applicant noticed the missed deadline, and no later than one year from the missed deadline.

• Late Request for Examination

A request for examination must be filed within 3 years of the legal filing date. If the RFE is not timely filed, the application is deemed to be withdrawn. However, the request will be accepted if filed within two months of the date on which the Applicant noticed the missed deadline, and no later than one year from the missed deadline.

• Late Annuity payment

If an annuity is not paid by the extended deadline, which is six months from the original deadline, the patent will be considered expired. However, late annuity payment will be accepted if the late payment is made within two months of the date on which the Patentee noticed the missed extended deadline, and no later than one year from the missed extended deadline.

Utility Model

The same remedies as those available for patent cases are available for utility model cases.

Design

The same remedies as those available for patent cases are available for design cases.

Trademark

After expiration of a trademark registration due to non-renewal of the registration, the registration will be restored if renewal is requested within two months of the date on which the trademark owner noticed the missed deadline, and no later than 6 months from the missed deadline.

These changes to the law will become effective April 1, 2023. Please let us know should you have any questions.