Trademark Law updates

Starting from April 2023, Japan Patent Office (“JPO”) decide to relax standard for restoring expired patents, designs, trademarks, and utility models rights that have lapsed due to the expiration of a procedural period from “having justifiable grounds” to “not intentionally”.

It had been difficult to revive intellectual property that has expired after the owner failed to act in a timely manner, for example, failing to pay the maintenance fee for a patent in a timely fashion. In order to revive an IP that has failed to act in a timely manner must be due to a “valid reason”, which the standard of a “valid reason” has been extremely strict. However, the JPO has recently demonstrated a degree of flexibility for owners who are unable to act in a timely fashion due to the Covid-19 pandemic.

The JPO has announced that rather than requiring of a “valid reason”, owners will soon be able to revive expired IP by showing the failure to act in a timely manner was “unintentional”. This suggested that the standard for revival may be relaxed. In addition, for filing a request of revival of expired IP will be required 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/application).

The new standard and procedure will be come into effect on 1 April 2023.

Patent Law updates

Japan Patent Office (“JPO”) has decided to abolish pre-payment of official fees by revenue stamps till March 2023.

The JPO have been accepting pre-payment of patent fees and other fees to be made exclusively by patent revenue stamps (e.g. physical stamps). However, due to the administrative burden under the current system is heavy for both of the applicant and the JPO, instead of patent revenue stamps, pre-payment will be made in cash (e.g. by bank transfer) from now on.

Meanwhile, the JPO has decided that pre-payment by patent revenue stamps will still be accepted until 31 March 2023.

See also:
Japan Trademark Registration Costs and Procedures