New Digitization Procedures in Japan – Electronic Copy of Patent Certificate

Background

The Japan Patent Office (“JPO”) has been promoting digitization procedures of application documents in recent years.  For example, from the year 2022, it had not been required to submit an original copy of a signed Power of Attorney document with the JPO.

Japanese New Practice regarding Power of Attorney – Japanese Patent Attorneys | Allegro IP (allegropat.com)

Later in 2023, the JPO announced new digitization procedures regarding seven (7) types of shipped documents, which are documents that applicants receive from the JPO.  Among the seven types of documents, we believe that the new procedure regarding a Certificate of Patent would be relevant to our overseas clients.

Current Practice:

For ease of understanding, the following explanation refers to an ordinary patent case (i.e., a case that have not gone through an appeal against a decision of rejection).

As a result of examination, if the examiner considers that a patent application is in condition for allowance, we receive a Decision to Grant from the JPO.  Then, it is necessary to remit the first three annuities within 30 days from the date of dispatch.

[Practice Tip] Please note that it is possible to file a new divisional application which is divided out from the granted application and that this is the final opportunity to do so. We ask our clients whether they wish to (1) remit the first three annuities AND (2) file a new divisional application.

If we remit the first three annuities, the application is registered as a patent in about one week and a patent publication is issued in a few weeks. Then, we receive an original copy of a Certificate of Patent from the JPO.

Under the current practice, when we receive an original copy of a Certificate of Patent from the JPO, we send a scanned copy thereof to our clients via e-mail and also send the original copy by registered mail.

New Practice:

However, under the new practice, which will take effect on or after April 1, 2024, the JPO will no longer provide us with a paper copy of a Certificate of Patent, unless we specifically request the paper copy.

According to the JPO’s announcement, a Certificate of Patent will be available online within a few days after the registration (much shorter than the current practice). 

Under the circumstances, we will send an electronic copy of the certificate to our clients via e-mail as soon as we receive it.   Since we will no longer send an original copy of the certificate by mail, we will deduct postage from our fees.

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