Japan has long been a difficult jurisdiction to revive intellectual property which expired after the applicant/right holder failed to act in a timely manner (e.g., by failing to pay the maintenance fee for a patent in a timely fashion). The standard in Japan to revive such IP has long been that the failure to act in a timely manner must be due to a "valid reason," and the JPO's interpretation of a "valid reason" has been extremely strict. Accordingly, revival of expired IP rights has been unlikely outside of extraordinary circumstances. The JPO recently demonstrated a degree of flexibility for rights holders who were unable to act in a timely fashion due to the coronavirus pandemic (see our July, 2020 newsletter).
The JPO has announced, however, that rather than requiring demonstration of a "valid reason," a rights holder will soon be able to revive expired IP by showing the failure to act in a timely manner was "unintentional."1 The language of this proposed standard is similar to that used in the United States (see 35 USC § 27), which suggests that the standard for revival may be relaxed. Filing for revival of expired IP in this manner will also require the payment of a fee (JPY 297,000 for a patent applicant/patent, JPY 25,000 for a design patent/application, JPY 50,000 for a utility model/application, and JPY 102,000 for a trademark/application2).
The new standard and procedure will come into effect April 1, 2023.
Specific information on this topic can be found here. (Japanese)
Footnotes
1 The details of the procedures for restoration of rights are stipulated in the METI Ordinance, so it is necessary to confirm the METI Ordinance that will be released in the future.
2 The restoration fee is waived in cases where the failure to pay in a timely fashion for processing is not attributable to the applicant, such as due to a disaster or infectious disease.
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