When failed to enter the Japanese national phase within the 30-month time limit
(March 25, 2011)
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 Unfortunately, once the rights of the applicant in the international application are lost, he/she cannot reinstate the rights at that point. The new PCT49.6 rule has not been recognized in Japanese intellectual property law. The Japan Patent Office said that it would not be likely to accept this new rule in the near future.
For your information, under the PCT49.6 rule, when the effect of the international application provided for in Article 11(3) has ceased due to the applicant’s failure to perform the acts referred to in Article 22(1)* within the applicable time limit, the designated Office shall, upon request of the applicant, reinstate the rights of the applicant with respect to that international application if it finds that any delay in meeting that time limit was unintentional or, at the option of the designated Office, that the failure to meet that time limit occurred in spite of due care required by the circumstances having been taken.
* Article 22(1) of the Patent Corporation Treaty: The applicant shall furnish a copy of the international application and a translation thereof, and pay the national fee (if any), to each designated Office not later than at the expiration of 30 months from the priority date.
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.