Although the coronavirus pandemic seems to have eased in some countries, it does not allow us to have an optimistic view toward resurgence of infection cases. In Japan, a two-month long state of emergency was lifted on May 26, and the government is now starting to phase out restrictions which constrain peoples' activities. Unlike lockdowns in many countries, Japan's state of emergency declaration is not legally enforceable. No fines or other penalties are imposed even if its nationals violate the order. Rather, the state of emergency authorizes municipal governors to implement concrete measures in their municipalities. The Tokyo Metropolitan Government made a request to suspend business to six different types of businesses and facilities, including commercial and entertainment facilities. Schools and universities were also closed. The Ministry of Economy, Trade and Industry requested the heads of associations of small- and medium-sized enterprises (SME) to (1) enable workers to work at home in principle and (2) even if they are obliged to show up at the office, the company has to reduce the number of workers who are in the office to 30%, except for jobs that are necessary to maintain social functions. These actions have had a significant impact on a wide range of corporate/social activities. Many companies are now looking for a new work style which can be adapted to a new normal life. This article describes the impact of coronavirus infections on corporate and intellectual property activities of Japanese companies and shows the JPO's response to the situation.

Changes in Corporate Activities

Firstly, what changes have occurred in companies' activities between February and June 2020? It seems that Japan lags behind Europe and the U.S. where telecommuting became popular much earlier, but the country is pouring efforts into promoting teleworking nationwide. Compared to February 2020, the acceptance rate of teleworking has increased significantly especially after the state of emergency was declared on April 8. The average rate in overall areas has increased by 14.3%, with a particularly large increase of 23.7% for administrative and technical workers. The rate is higher in large companies than in SMEs and is higher in the Tokyo metropolitan area than in others. Furthermore, when taking a look by industry, the academic research, professional and technical services industries have the second highest rate among all sectors. It is presumed that a new business style is being rapidly instilled in large companies and research institutes, which file many patent applications.

Regarding ways of getting into contact with customers/clients, another survey shows that 40% of respondents voluntarily refrained from visiting customers, and 60% voluntarily abstained from business trips. Some respondents commented that they use online systems for meetings. Furthermore, we can see that a number of companies were hit hard by the pandemic which led to a decline in earnings, office closures, plant shutdowns, and a delay in shareholder meetings. Although there seems to be no big impact on IP activities at this time, there is a possibility that R&D may not progress as planned. While teleworking, some members of intellectual property departments seem to be rethinking their existing IP strategies and/or reviewing inventions that have not been filed yet. Moreover, the labor productivity index by production for March 2020 turned negative compared to year-on-year data. The average in the manufacturing sector was down 4.7 percent.

[Reference]

Please be informed that reference sites are available only in Japanese.

Nippon Research Center, https://www.nrc.co.jp/report/200430_2.html

Ministry of Land, Infrastructure and Transport, https://www.mlit.go.jp/report/press/content/001338554.pdf

Nikkei Shimbun, https://www.nikkei.com/article/DGXMZO56156690Y0A220C2MM8000/

Japan Productivity Center, https://www.jpc-net.jp/research/rd/db/#anc-01

Operating status of the Japan Patent Office (JPO)

Not only the private sector but the public sector as well, such as the JPO, is required to operate under such circumstances. The number of patent applications received over the JPO counter continues to decline even after the state of emergency ended. E-filing or filing via mail is recommended and some examiners and appeal examiners work from home. Interviews are conducted via videoconference systems in principle.

The JPO provided the following remedial measures for cases which were affected by the coronavirus. Similar to other countries, prolonging these measures is being considered. There is no "highway" examination of patents related to medical treatments for COVID-19.

JPO Remedial measures for COVID-19 (as of July 6, 2020)

The JPO announced on their website remedial measures for COVID-19, which apply not only to applications but also appeals and oppositions. The below are details from the website.

  1. Designated Time Limits
  • When it comes to procedures to respond to orders or notices for formality examinations by the JPO (except those for trials/appeals pending at the JPO), the procedures will be considered to be valid for an additional time period, such as a prescribed period for filing a "request for extension of the duration" plus two months, even after the designated time limit expires, even if the "request for extension of the duration" has not been filed.
  • In regard to applicants' responses to Notices of Reasons for Rejection, if they request remedies in either of the following ways, the JPO will take flexible approaches to allow the procedures even after the designated time limits have expired.

Applying for Relief Measure

(1) File a request for relief within the designated periods: Describe the reasons therefor in the column "Details of statement" in a Petition.

(2) File a request for relief within a certain period of time after the designated period has expired, such as the prescribed period for filing a "request for extension of the duration", with an explanation of the circumstances that prevented you from carrying out the prescribed procedure: Add an "Other" column in Remarks, etc. and describe in that column the reasons for not having been able to implement the procedures.

  1. Statutory Time Limits

If you are unable to carry out a certain procedure due to COVID-19 within the procedural period specified by laws or governmental and ministerial ordinances, you can carry out the procedure only within the relief period.

Applying for Relief Measure

  • Attach a document explaining the circumstances that prevented you from conducting the procedure due to COVID-19. When providing relief measures for the following {TYPE 1}, {TYPE 2} and {TYPE 3}, the JPO will take a flexible approach until further notice.

* Normally, for remedies after a period of time has expired due to negligence or legitimate reasons, we ask for documentary evidence to support the stated facts, but this is not required only for this circumstance which is due to COVID-19.

{TYPE 1} Procedures to which relief measures can be applied by carrying out the procedures within 2 months from the time it becomes possible to carry out business (for overseas residents) (regarding (7) below, within one month for overseas residents).

*TYPE 1 means procedures for which relief measures are stipulated under the laws and regulations of Japan when prescribed procedures cannot be implemented within the time limits due to "Reasons beyond one's Control"

Note: there are limits for applying for this relief measure

This is limited to within six months after the lapse of the prescribed period. (Regarding (6), this is within nine months after the lapse of the prescribed period; regarding (7), this is within two months after the lapse of the prescribed period.)

(1) Submission of documents proving the facts when applying for exceptions to loss of novelty of invention

(2) Submission of priority certificate - a certificate about the grant of the right of priority - under the Paris Convention

(3) Division of patent application

(4) Conversion of application of utility model registration or application of design registration into patent application

(5) Patent application based on utility model registration

(6) Request for registration of extension of duration of patent right

(7) Submission of document under Article 67-2-2, Paragraph 1 of the Patent Act prior to revision by this Act

(8) Payment of patent fees (registration fees)

(9) Request for refund of patent fees (registration fees)

(10) Request for appeal against examiner's Decision of Rejection

(11) Request for retrial

(12) Request for refund of fees for request for examination of application or fees paid in excess

Applying for Relief Measure

Submit documents by: (i) adding an "Other" column in the documents to be submitted and describe in the documents the circumstances behind not having been able to implement the procedure within the time limit; or (ii) describing the above circumstances in the column "Details of statement" in a Petition.

{TYPE 2} Procedures to which relief measures can be applied when conducting prescribed procedures within two months

*TYPE 2 means procedures for which relief measures are stipulated under the laws and regulations of Japan when the prescribed procedures cannot be implemented within the time limits due to "Legitimate Reasons"

Please be sure to carry out the procedures within two months from when it becomes possible to do so.

Note: there are limits for applying for these relief measures

The procedure is valid only within one year after the lapse of the prescribed period.

(1) Submission of translation of foreign language application

(2) Request for examination of application

(3) Delayed payment of patent fees and patent surcharge

(4) Submission of translation of patent application in foreign language

(5) Appointment of patent administrator of international patent application for overseas resident

Applying for Relief Measure

Submit documents for a procedure showing that you were unable to implement the procedure within the prescribed period and statements of the grounds for restoration, which describe the reasons for the failure to meet the time limit.

{TYPE 3} Priority claim

*TYPE 3 means procedures for which relief measures are stipulated under the laws and regulations of Japan when prescribed procedures cannot be implemented within the time limits due to "Legitimate Reasons"

Please be sure to carry out the procedures within two months from the expiration of the period in which you can file an application with a priority claim.

(1) Priority claim based on patent application

(2) Priority claim as governed by the Paris Convention

(3) Claiming priority for an international application under the Patent Cooperation Treaty

Applying for Relief Measure

Submit documents for the procedure that you were unable to implement within the prescribed period and statements of the grounds for restoration, which describe the reasons for the failure to meet the time limit.

{TYPE 4} International applications under the Patent Cooperation Treaty

Carry out procedures as soon as it becomes possible.

Note: there are limits for applying for this relief measure

This is limited to within six months after the lapse of the prescribed period.

(1) Submission of documents pertaining to the procedure for an international application under the Patent Cooperation Treaty

Appeals and Oppositions

  1. Extension of the designation period

In an appeal case, a person who is unable to proceed within the specified period of time due to the coronavirus may request an extension of the specified period of time within the specified period. If the extension is approved by a prescribed request stating a specific reason, the maximum extension of one month will be permitted by the authority. The examiner or clerk in charge will contact you. After the extension of the designated period has been granted, due to the continuing effects of the coronavirus, if further extension of the designated period is necessary for the same procedure, the extension may be requested again.

  1. Application for Relief after Exceeding the Designated Period

In the same way as in "1. Extension of the designated period", submit a Petition, etc. stating the requested extension period and the specific reasons for the need of such extension. Based on the judgment of a panel, they will take measures based on the status of the trial and the reasons submitted.

Reference: Japan Patent Office, https://www.jpo.go.jp/e/news/koho/saigai/covid19_procedures.html

JPO's views on remedial measures

This is not the first time that the JPO has provided remedial measures. In the Great East Japan Earthquake of March 11, 2011, causing unprecedented catastrophic damages, remedial measures were taken in accordance with the Act on Special Measures to Protect the Rights and Interests of Victims of Specified Disasters (Act No. 85 of 1996. Hereinafter referred to as "Act on Special Measures"). Since the earthquake was designated as a specified emergency disaster as stipulated in Article 2, Paragraph 1, an extension of the procedure period by applicants/agents affected by the earthquake was allowed by making a request based on the provisions of Article 3, Paragraph 3 of said law. At that time, it was extended as follows:

  • Designated time limits: the procedures should be carried out as soon as possible for applications or appeals that are pending at the JPO and cannot be processed within the period designated by the JPO due to the earthquake.
  • Statutory time limits: Those who became unable to carry out the procedure within the prescribed period due to the earthquake would be allowed to do so within 14 days after the procedure became possible, but only within six months after the passage of the prescribed period (there were some exceptions). No separate procedures for each case are required for any of these procedures. According to the report, only a "request for measures by implementation" was filed.

While remedies are applicable to certain conditions, the JPO essentially holds a very strict view on deadlines, so whenever possible it is recommended that you adhere to the original deadlines.

Like other countries, Japanese companies and the JPO are exploring new business styles. The JPO is being asked to respond flexibly to the trends of the times. It is expected that the JPO will continue to update its policies and remedies in the future.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.