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?
There are two basic options for transferring patent rights in Japan: (i) an entity is transferring/assigning rights to (an)other entity(ies), or (ii) two or more entities are merging. This section explains the former.
Applicants are required to file an Assignment document and a Power of Attorney (POA) at the JPO.
Assignment
The Assignment needs to include stipulated information (see * below). It should be an original executed (signed) or notarized document, or a certified/notarized copy stating that the copy is a true copy of the original. The JPO will not accept photocopies.
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 a parent application may be applied to unlisted child cases.)
* Information required on assignment documents
An assignment must contain the following information (this requirement is strictly applied):
— Japanese Patent Number and/or Japanese Patent Application Number (or PCT application number)
— Names and Addresses of both assignor and assignee (which matches the information already on file at the JPO);
— Signatures from both assignor and assignee (at least from assignor). Note that the JPO currently does not allow e-signatures;
— The date of execution of the assignment.
The applicant can either submit the original assignment they have created (including if this includes details of patents 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 stating 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 need to be submitted by both the assignor and the 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 by the local representative in Japan.
KIPB can provide drafts of the POA if required.
(* FYI: POAs are only required for procedures such as appeals and assignments (they are not necessary for filing).
Further assignment questions
Further questions on assignor bankruptcy, e-signatures, timeframes, benefits/necessity of recordal, PCT applications, fees, the language of assignment, etc. follow below:
What happens if the assignor is bankrupt or has gone out of existence?
A trustee of the estate or bankruptcy proceedings may sign the assignment instead. This person/organization will need to provide certification that they are the lawful trustees.
Can e-signatures such as a DocuSign signature be used for assignment documents?
Unfortunately not. As of April 2022, the JPO does not allow e-signatures (including DocuSign) for most certificates, such as an assignment. 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.
When can I expect recordal of an assignment to be completed?
It takes about two months from filing to official recordal + notification. Patents are recorded fairly quickly - issued notifications taking up most of the time in this two-month period. Pending applications do not receive documentary notification of the ownership change from the JPO.
Are there any time limits on recording a change of ownership based on assignment?
There is no time limit to record the change per se.
It is obviously better to do so as soon as possible since there are scenarios when proof of ownership is required. For instance, if an applicant wants to file an appeal against a decision to reject, a power of attorney is required - necessitating recordal of the ownership assignment. Enforcement of patent rights also requires correct ownership details, since only owners or licensees can pursue infringement cases.
Will patent rights be lost or diminished if an assignment is not recorded or submitted to the JPO?
Whilst (a) 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.
In order to enforce the 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.
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 of Changes to WIPO during the international phase (before the 30 months after the priority date pass) if this is possible. This means the assignment can be automatically registered in whatever country the applicant decides to enter.
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 only received after the deadline.
What are the fees for assignments?
Official and attorney fees differ for pending and registered cases and are charged per case. Please contact us for details (we aim to respond within one working day - call us if more urgent.)
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 and English titles will necessarily 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.
How do I file a change of ownership based on a merger in Japan?
There are two basic options for transferring patent rights in Japan: (i) an entity is transferring/assigning rights to (an)other entity(ies), or (ii) two or more entities are merging. This section explains the latter.
Applicants are required to file a document showing 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 stating that the copy 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 cases**
If the applicant's application has been registered, a Power of Attorney is needed.
The POA must be an original, executed document. KIPB Japan can provide you with a draft copy for execution. Official and KIPB admin fees are per case. Please contact us for details.
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.