日本語
Patent System Q&A
Opening up a world of opportunity
1. "INVENTIONS" AND THE PATENT SYSTEM IN JAPAN
How do I file an assignment in Japan?
For transferring patent rights from one entity/person to another, applicants will need to file an Assignment document and a Power of Attorney (POA) at the JPO.
Assignment Document
The Assignment document must include the information mentioned below. It should also be an original, executed (signed) or notarized document or a certified/notarized copy, with a statement that it is a true copy of the original. The JPO will not accept photocopies.
* Information required on assignment documents
(This requirement is strictly applied):
(1) --> The Japanese patent/application numbers of all patents/applications to be transferred (or the PCT application number if no JPO number has been assigned yet.)
If there are multiple patents/applications to be transferred, a schedule listing the patent /application numbers should be attached to the assignment document. The list should include the numbers of all child cases and parent cases (there is no rule like the US where an assignment that includes a parent application may be applied to unlisted child cases.)
(2) --> Names and Addresses of both assignor and assignee, which match the information already on file at the JPO.
If names/addresses do not match, a change of name/address will also need to be submitted with the assignment.
(3) --> Signatures from both assignor and assignee (at least from the assignor). Note that the JPO currently does not allow e-signatures.
(4) --> The date of execution of the assignment.
The applicant can either submit an original assignment they have created (even if this includes details of patents to be assigned in other jurisdictions), or KIPB can prepare a document which includes only the Japanese patents, for exclusive use in Japan (please inquire).
(Transferring to a foreign entity)
Note also that if a Japanese entity is transferring rights to a foreign entity, the assignment document should include a basic statement describing whether a fee was paid for the transfer or it was done free of charge. (e.g. Assignee has paid a sum of USD/YEN to the Assignor for the patents including X, Y, Z.) This amount can be an estimate and does not have to be accurate (the JPO is only interested if there was a fee or not).
Power of Attorney (POA)
POA documents are needed from both the assignor and the assignee.
The JPO does not currently require original, signed POAs for assignments or most other procedures at the prosecution stage.
The POA should include (i) the name of a representative officer at the entity involved, (ii) his/her job title and (iii) the date. This can be printed on the POA by the local representative in Japan and submitted to the JPO on the applicant's behalf.
It is also possible to submit original, executed POAs if you wish. In that case, KIPB can provide drafts of the POA as required.
Further assignment questions
Further questions on assignor bankruptcy, e-signatures, timing, benefits/necessity of recordal, PCT applications, fees, the language of assignment, chain of title assignments, etc. follow below:
(Q1) What happens if the assignor (a) has filed for bankruptcy, or (b) is bankrupt or has gone out of existence?
(a) If the assignor has filed for bankruptcy, the patent right should be transferred from the assignor to the new owner before the liquidation process is completed, and the creation date of the Deed of Assignment must be prior to the completion of the liquidation.
(b) If the assignor is already bankrupt, etc., a trustee /curator of the estate or bankruptcy proceedings may sign the assignment instead. This person/organization must also provide a certifying document ("Certificate of Authorization") indicating that they are the lawful trustees.
(Q2) Can e-signatures such as a DocuSign signature be used for assignment documents?
Unfortunately, not. As of April 2024, the JPO does not allow e-signatures (including DocuSign) for most legal certificates, including assignments. Signatures should be original or a notarized true copy of the original. There are no plans for this policy to change in the foreseeable future.
Note that, as stated above, the JPO does not currently require an original or e-signature on the Power of Attorney document.
(Q3) When can I expect recordal of an assignment to be completed?
For patented cases, it takes about two months from filing to official recordal and official notification. Recordal is reasonably quick-notification takes up most of this two-month period. Pending applications do not receive documentary notification of the ownership change from the JPO after recordal.
(Q4) Are there any time limits on recording a change of ownership based on assignment?
There is no time limit to record a change per se. However, it is better to do so as soon as possible since there are situations when proof of ownership is required.
For instance, an appeal can only be filed in the name of the current recorded owner at the JPO, and there may not be enough time to complete an ownership change before the deadline for filing the appeal. In this case, whilst the patent rights of the new owner are not affected, it can be inconvenient in terms of correspondence between parties, etc. Enforcement of patent rights also requires correct ownership details, since only owners or licensees can pursue infringement cases. (See also answers to (Q5) and (Q9) below.)
(Q5) Will patent rights be lost or diminished if an assignment is not recorded or submitted to the JPO?
Whilst it is not mandatory to record or submit an assignment indicating the change of patent ownership with the Japanese Patent Office and patent rights will remain unaffected, we very much recommend such recordation at the JPO.
To enforce patent rights, any change of ownership must first be recorded at the JPO. Further, if the JPO needs to contact the patent holder concerning any possible future proceedings (invalidation, etc.), they may attempt to contact the patent owner directly (if representation is unavailable) and will need proper contact details.
(Q6) PCT applications. How does the JPO deal with assignments occurring during the PCT International phase?
For PCT cases, it is simpler for applicants to submit a 92bis Recording a Change of Applicant (assignment) to WIPO during the international phase. This must be submitted to the International Bureau (IB) at WIPO before the expiration of the 30-month period from the priority date.
In this case, the IB will notify the applicant by Form PCT/IB/306. If this has been issued, we can file the Japanese national phase entry in the name of the new applicant and no fees are incurred.
If the applicant has submitted a Change of Applicant request during the international phase, but WIPO has yet to issue Form PCT/IB/306 by the national entry deadline, it may still be possible to enter the applicant in Japan in the name of the new applicant if the following is provided: additional official/attorney fees; a POA from the assignee; and an original assignment document executed by the assignor.
After the application has entered the Japan national phase, individual JPO assignment procedures will apply even in cases when a 92bis was submitted to WIPO before the 30-month deadline but received after the deadline.
(Q7) What are the fees for assignments?
Official and attorney fees differ for pending and registered cases and are levied per case. Please contact us for details (we aim to respond within one working day - call us if more urgent.)
(Q8) Can I file a deed of assignment in English?
Between two foreign entities, this is no problem.
It is also possible to submit a deed of assignment in English when transferring trademark rights between a Japanese entity and a foreign entity. However, the JPO will also require documents proving (1) the identity of the Japanese entity (since the Japanese language and English language titles will generally be different) and (2) the effectiveness of the signature (i.e. whether the person signing has the authority to sign).
Since a deed of assignment can also be executed with just the assignor's seal and signature, it may be quicker and simpler to have the assignor execute the deed of assignment if the assignor is Japanese. If agreeable, we can coordinate with them on our foreign client's (assignee) behalf.
(Q9) The assignee wants to file an appeal against a Decision of Rejection, but the assignment has not been recorded at the JPO yet. What happens?
An appeal must be filed in the name of the current recorded owner. If the deadline for the appeal is imminent, it is unlikely that the assignment will be safely completed/recorded in time.
In that case, the appeal can be filed in the assignor's name. The assignor must file a Power of Attorney as is the rule for filing an appeal. The assignment can then be filed/recorded after the appeal has begun with no legal disadvantage to the assignee.
(Q10) How do you record an assignment when ownership has changed more than once /several times?
In general, assignments for each of these ownership changes ("chain of title") will be required for the assignment to be effective. This can be difficult given that assignment documents must be original or a notarized copy of an original. It is therefore advisable to record ownership changes as soon as they occur.
It is sometimes possible to omit ownership changes in the chain of title. However, this depends on the specific circumstances in each case. Please provide KIPB or your Japanese agent with sufficient information to assist us in understanding the history of the changes and the documentation the JPO will require.
How do I file a change of ownership based on a merger in Japan?
When a change of ownership is due to a merger between two or more entities, applicants must file a document indicating the merger (and/or a Declaration of the Merger) and a Power of Attorney (POA).
Merger document
Like assignments, this should be an original, executed (signed) or notarized document, or a certified/notarized copy with a statement that it is a true copy of the original. The JPO will not accept photocopies.
You will need to include the names and addresses of the parties involved.
If there are multiple patents/applications involved, the document should include a schedule attached that expressly lists each patent (Japanese or PCT application number). This includes the details of all parent and child cases (there is no rule as in the US where an assignment that includes parent application may be applied to unlisted child cases.)
Power of Attorney (POA)
POA documents need to be submitted by both the assignor and assignee.
The JPO does not currently require original, signed POAs for this or other procedures*.
The POA should include (i) the name of a representative officer at the entity involved, (ii) his/her job title and (iii) the date. This can be printed on the POA at the local representative in Japan.
(* FYI: POAs are only required for procedures such as appeals and assignments (they are not necessary for filing).
KIPB Japan can provide drafts of these documents if required.
Further merger questions
Further questions on e-signatures, benefits/necessity of recordal, fees, etc. follow below:
Can e-signatures such as a DocuSign signature be used for merger documents?
Unfortunately not. As of April 2022, the JPO does not allow e-signatures (including DocuSign) for most certificates, such as a merger document. Signatures should be an original or notarized true copy of the original.
Note that the JPO does not currently require an original or e-signature on the Power of Attorney document.
Are there any time limits on recording a change of ownership based on a merger?
Like assignments, there is no time limit to record the change per se.
However, we strongly recommend doing so at the earliest opportunity. Enforcement can only be pursued by the correct owner or their designated licensee. Appeals will also require power of attorneys to be submitted by the owner of the rights.
Will patent rights be lost or diminished if a merger is not recorded or submitted to the JPO?
Whilst (a) it is not mandatory to record or submit documents indicating a merger with the Japanese Patent Office and patent rights will remain unaffected, we very much recommend such recordation at the JPO.
In order to enforce the patent rights, any change of ownership first must be recorded at the JPO. Further, if the JPO needs to contact the patent holder concerning any possible future proceedings (invalidation, etc.), they may attempt to contact the patent owner directly (if representation is unavailable) and will need proper contact details.
What are the fees for recording a merger?
Official and attorney fees differ for pending and registered cases, and are charged per case (note there are no fees for pending cases). Please contact us for details (we aim to respond within one working day - call us if more urgent.)
What are the procedures for filing a name and/or address change of an applicant?
Pending cases*
For still pending cases, it is possible to change the applicant’s name and address name without submission of any executed documents. KIPB Japan can complete this procedure for a small one-time admin fee for all cases requested (attorney fee only; no official fee).
Registered/patented cases**
For patented cases, official and KIPB admin fees are applied per case. Please contact us for details.
A Power of Attorney is also required for patented cases. This does not need to be an original or executed document. The JPO only requires the name and job title of a representative working at the entity involved to be printed on the POA. KIPB Japan can submit this on the client's behalf.
Relevance of applicant's JPO ID number
All applicants in Japan have an applicant ID number registered at the JPO.
*For pending cases, the name/address change of the applicant applies to the applicant’s ID number, not each individual case. Therefore, if an applicant has multiple pending cases, the name/address change will automatically apply to all these cases.
**However, name/address changes for registered cases apply to each case individually regardless of the ID number.
Can we add or delete the number of inventors after filing?
Before patent registration
Yes. We are required to submit an Inventor Declaration form executed by all the inventors (i.e., signed and dated by all continuing inventors + all inventors to be excluded or added).
On the form, additional inventors and the continuing inventors should state they are all the original and joint inventors for the application.
Excluded inventors should state that they are not the inventors, and the continuing inventors should state they are the only original (and joint) inventors.
KIPB can provide you with a draft of the Inventor Declaration forms for execution (we are required to submit the original documents).
There is no official fee for this procedure. KIPB will issue a minimal transaction fee.
After patent registration
Inventors cannot be changed after patenting. Information about inventors is not included in the package of registered items in the JPO’s official register.
Can we change inventor addresses?
Generally, no. Inventor addresses are deemed to be those provided in the application at the time of filing in Japan. Corrections to an inventor's address are only allowed when (for example) the registered address contains a typographical error, etc.
However, registered inventor addresses are not considered an essential matter by the JPO and do not affect the IP rights associated with the application/patent.