Japan Patent Office no longer requires original documents?

As reported previously, the Japan Patent Office (JPO) no longer requires handwritten signatures and/or original copies for most of the documents including Power of Attorney.  

Meanwhile, please note that the JPO still requires original copies of the signed documents that are material to the patent right, position of the application, etc. 

Assignment Documents:

We have handled various assignment procedures for foreign applicants/owners. In most cases, the documents, such as assignment document, merger certificate, etc., we receive from the clients are unfortunately not acceptable under the Japanese practice.  For example, the addresses of both sides and the application/patent number should specifically be recited on each document, while we understand many countries do not require such specific information therein. In addition, we have to prepare a Japanese translation for each document. 

Hence, we usually prepare draft documents at our end so that we can avoid incurring any unnecessary expenses including translation fees.

In this respect, unlike the Power of Attorney document, we need an original copy of the signed document to be filed before the JPO. 

New Practice on or after January 1, 2022:

Please be informed that the Japanese practice regarding the assignment procedures will soon be revised. Under the new practice, we will have to confirm the intention of the assignor. Although the documents to be filed before the JPO remain the same, we will have to additionally explain such a confirmation in our request. The new practice applies to the assignment procedures accomplished on or after January 1, 2022.

Under the above circumstances,  there are no additional documents to be prepared at the clients’ end. However, if we receive a request to record assignment from foreign representative, that is, not directly from the applicant/right holder, please understand that we will complete the procedures before the JPO on the assumption that the intention of the assignor has been confirmed through the foreign representative.

We believe the above comments will be clear to you.  Should you have any further questions, please do not hesitate to contact us at info@allegropat.com