The JPO to serve official documents to some rights holders residing overseas by publication in the online patent gazette rather than by international mail.
The JPO has announced that, as of July 3, 2023, in the event of the suspension of international mail service for six months or more, official documents will be served to rights holders residing overseas by publication in the online patent gazette(1) rather than by international mail as was the case previously.
This new provision will only apply to non-resident IP rights holders (or those who do not have a business office in Japan) who have not assigned a registered patent agent or administrator in Japan to act on their behalf.
Why the revision?
Previously, the JPO delivered official documents to non-resident rights holders with no local agent by airmail or other physical means. Whilst this was not ideal, this approach was effective in normal times.
However, due to the global COVID-19 pandemic and the ongoing situation in Ukraine, some countries (including Japan) have suspended their international postal services including Japan) for significant periods, making it impossible for the JPO to send such documents and hampering the progress of examinations, office actions appeals and other proceedings.
New rule
The revision effectively anticipates such disruption to mail services in future. It allows the JPO to serve such documents to the persons concerned by publishing in the JPO’s Patent Gazette or other official JPO publications where “difficulty in the delivery of documents has continued for a period of six months”. Service by publication is deemed effective 20 days after publication in the gazette. Due dates are then unavoidably counted.
Get a Japanese patent attorney
We strongly advise any overseas applicants and rights holders who have not appointed a local patent attorney to do so for all their filings and registrations since the new rule only applies to people without local agents. There may be the case that overseas residents may fail to meet a deadline for responding to an appeal, decision, trademark cancellation, etc., due to not knowing an action has been served.
Where local agents have been appointed, they are expected to continue efforts to establish smooth communication with the overseas resident.
You can see more details on the JPO's website:
https://www.jpo.go.jp/e/system/laws/koji/index.html
https://www.jpo.go.jp/e/system/laws/sesaku/servicepub_intlmail/index.html
(1) Following the Revision of the Japan Patent (Art. 191(1) and Trademark Act (Art. 77(5) promulgated on June 14, 2023.
