Restoration of IP Rights in KR/US/JP/EP
1. South Korea (KIPO)
Comparing with the systems in others countries, the Korean Patent Act applies strict standards for restoration of patent rights, which must meet both substantive and procedural requirements.
(1) Substantive Requirements: There must be a justifiable reason for failing to comply with the relevant time limit due to “a cause not attributable to a party”. While there are various interpretations of the phrase “cause not attributable to a party”, the definition refers to cases where the failure to comply with the time limit is due to objective and obvious reasons, or any unavoidable reason, while making assurance doubly sure with due diligence. For example, KIPO’s examination guidelines exemplify natural disasters and missed deliveries of any notice or document as “a cause not attributable to a party”.
(2) Procedural Requirements: Under the current Patent Act, actions to re-establish patent rights should be filed within two months from the date on which the justifiable reason for non-compliance with the original time limit expires, and at the latest within one year after the original time limit. (In this regard, the procedural requirements are identical to Japan and the EPO.) Even if the reason for failing to comply with the time limit is accepted as a cause not attributable to a party, the restoration of the right cannot be achieved unless the proper actions are taken within these designated periods.
2. The United States (USPTO)
The USPTO has various rights recovery systems throughout all procedural phases such as application, examination, registration of rights establishment, and payment of fees in order to ensure maximum benefit to a party.
(1) Substantive Requirements: There must be an “unintentional” failure to comply with the relevant time limit. If the delay in reply by an applicant was unintentional, a petition may be filed in order to revive an abandoned application. Thus, compared with South Korea’s “cause not attributable” standard, the USPTO’s threshold is significantly lower. Most petitions to revive abandoned applications are accepted.
(2) Procedural Requirements: There is no specific time limit stated by the USPTO. While most patent offices around the world have a specific deadline to take actions to restore IP rights, the USPTO allows applicants to file petitions to revive applications even in cases where more than twelve months have passed from the original time limit. This can be understood as a patent system that operates in the interests of the applicant, rather than purely with legal stability in mind.
3. Japan (JPO)
Japan’s system is similar to the Korean system, but with a wider scope of recognition.
(1) Substantive Requirements: There must be a “justifiable reason” for failing to comply with the relevant time limit. The determination of whether the reason was justifiable is based on evidence stated in the application for restoration. The JPO’s interpretation of “justifiable reason” can be considered similar to the “due care” criteria adopted by the European Patent Office (EPO). First, whether the reason for missing a deadline is justifiable depends on whether the reason was predictable and whether sufficient measures were taken before and immediately after the incident. If the reason is predictable, it cannot be considered justifiable. That is, a lapsed patent right cannot be restored when the reason for missing the deadline was predictable. Conversely, if the reason for missing the deadline was unpredictable, the lapsed patent right may be restored provided that the applicant took all necessary measures to avoid any mistakes.
(2) Procedural Requirements: An application for the restoration of rights should be filed within two months from the date on which the justifiable reason for non-compliance with the original time limit expires, and at the latest within one year after the original time limit. (In this regard, the procedural requirements are identical to South Korea and the EPO.)
4. European Patent Office (EPO)
The re-establishment of rights under Article 122 of the European Patent Convention can be used to recover rights lost as a result of missing a deadline set by the EPO. Unlike other countries, a unique legal remedy called ‘further processing’ allows applications to proceed if the applicant makes a request for further processing of the application within two months of the communication concerning either the failure to observe a time limit or a loss of rights.
(1) Substantive Requirements: The EPO shall re-establish rights if a party can demonstrate that they were unable to observe the missed time limit in spite of all due care required by the circumstances having been taken. The key requirement, therefore, is to prove that “due care” was taken. The obligation to exercise due care must be considered in light of the situation as it stood before the missed time limit expired. “All due care” means all reasonable care, i.e., the standard of care that a reasonably competent patentee, applicant, or representative would employ in all the relevant circumstances.
(2) Procedural Requirements: An application for the restoration of rights should be filed within two months from the date on which the justifiable reason for non-compliance with the original time limit expires, and at the latest within one year after the original time limit. (In this regard, the procedural requirements are identical to South Korea and Japan.) ‘Further processing’ must be requested within two months of the date on which the communication concerning either the failure to observe a time limit or a loss of rights is notified.