Albert Einstein said “Man is an animal that makes mistakes,” Even a genius makes mistakes, and, of course, that includes Patent Attorneys. After a long period of divergence from foreign Patent Offices, the JPO is easing reinstatement of rights procedures.
Proceedings before the patent office are very strictly time-bound in all countries. In particular, until recently, the JPO did not have concepts such as `restoration of rights that had expired due to circumstances coming from the right holder” and `extension of the deadline for procedures upon request”.
At present, however, such systems are in place in almost every patent office in the world: the JPO seems to be one of the most stringent regarding this matter.
For example, Japan has the shortest refusal period for patents in the world. In other words, in the case of a domestic application, it is within 60 days (statutory response period) from the date of dispatch of a notice of reasons for refusal of a patent application. In recent years, it has become possible to extend this period by only 2 months (60 days), but still, it remains a maximum of only 120 days.
In contrast, the system of almost every foreign office allows 6 months (180 days) for response to a refusal notice. Japanese patent attorneys work under the most severe time pressure in the world. In addition, the period for responding to a refusal notice on applications from foreign countries is 3 months, plus a further 3 month-extension is admitted. Therefore, there is unequal treatment of Japanese and foreigners by the JPO.
Related is that in recent years the JPO has ratified revisions to the PLT (Patent Law Treaty), and remedies have finally been made regarding the loss of applications due to non-payment of annuities, expiration of examination request deadlines, expiration of refusal response deadlines, expiration of appeal deadlines, etc.
The JPO reports that “when the right was lost despite due care, the right and the application can be reinstated if the proof of due care is submitted within two months“. However, the judgment by the JPO on “whether or not due care is done” is extremely strict, and the rescue rate is 10-20%. Regarding this severity in Japan compared to other countries, there have been many arguments and challenging opinions expressed by Japanese patent attorneys.
In further comparisons, the systems of the EPO, which allows generous grounds for “Further Processing”, and of the USPTO which allows for “Unintentional” rights losses, in which the reinstatement of rights is automatically recognized upon payment of a fee without proving the due care.
Previously, when I was working in the Japan Patent Attorneys Association’s International Activity Center, I was the Chairperson in charge of dealing with this issue, we exchanged opinions with the people in the General Affairs Division of the JPO. At the beginning of one meeting, a Section Chief of a Patent Office Division once said, “Why do we have to help with patent attorneys’ mistakes?”
At a similar time, I attend an international conference on PLT held at the WIPO. In discussions at the WIPO, every delegate talked about the reinstatement of the rights from a “user-friendly” viewpoint that protects the rights of the applicant as much as possible.
I was surprised at the large gap between the atmosphere of WIPO and the JPO at the time. However, fortunately, we have been receiving notifications that after a long period of divergence from foreign Patent Offices, the JPO is easing reinstatement of rights procedures.