Japanese Patent FAQs
Change of Ownership, AssignmentUpdate 2022.12.22
Q.What documents are required for recording a change in ownership based on an assignment?
To record a change in ownership, it is necessary to file an assignment document and a power of attorney with the Japanese Patent Office.
The Japanese Patent Office will not accept a photocopy of an assignment document. If you would like to use an assignment document that was used in your country, please provide us with the original assignment document or a certified copy of the assignment document, i.e., a copy of the original accompanied by a notarial certificate stating that the copy is a true copy of the original. In that case, the full address of the assignor and Japanese patent application number (or PCT application number) should be indicated in the assignment document. Otherwise, the Japanese Patent Office will not accept the assignment document.
Q.The full address of the assignor is not indicated in the assignment document and no one is available to sign a new assignment document. What should we do?
In addition to an assignment document and a power of attorney, it is necessary to file a notarized copy of a certificate proving that the assignor had an address at the recorded address in the Japanese Patent Office and that the corporation is identical to the one in the assignment document.
Q.The applicant no longer exists as it became bankrupt. What types of documents are required to record the change of ownership?
If a bankruptcy trustee can sign an assignment document, such an assignment document is acceptable to the Japanese Patent Office. In that case, it is necessary to file a certificate to prove the trustee is a lawful representative for the assignor as well as the assignment document and a power of attorney.
Q.Is there any time period within which an assignment must be recorded?
There is no set time frame for recordation of an assignment.
However, if during prosecution the applicant wishes to file an appeal, a Power of Attorney must be submitted and in order to submit the power of attorney it is necessary to record the assignment.
Further, if your client would like to enforce the patent rights, any change of ownership first must be recorded at the JPO.
We recommend an assignment be recorded at your earliest convenience, since sometimes the original assignment document executed between the parties is insufficient to file with the JPO and we need to obtain a newly signed assignment for recordation purpose.
Q.How long does it take to record an assignment at the JPO?
For issued patents, it takes about two weeks from the date the assignment is filed until it is recorded and about one month until we receive notice thereof from the JPO.
For patent applications, it takes about two months from the date the assignment is filed until it is recorded (the JPO will not issue any notice thereof for patent applications).
Q.Does the JPO issue an official notification when recordation of change of ownership is completed?
For issued patents, the JPO will issue a Notification of Completion of Patent Registration when a transfer of the patent right has been registered at the JPO. Such a confirmation document will not be issued for patent applications.
Q.Does the JPO allow e-signatures for submitted documents, such as assignment documents?
No. Unlike the USPTO, the JPO will not accept legal change of ownership documents utilizing an electronic signature. The signature must be original.
However, the Power of Attorney document can be either an original or an e-signed document (i.e., an electronic signature in the form of “/name/” and a typed date will be accepted in the signature box of the Power of Attorney document). As part of COVID-19 relief measures, the JPO also accepts a Power of Attorney document with no electronic signature (blank signature lines) but with the typed name of the signatory and the date. However, please note that the JPO does not accept a scan of handwritten signature.
Q.If an assignment document is filed with the JPO, will the assignment document become publicly available?
Yes. If an assignment document has been filed with the JPO, anyone will be able to gain access to the information by obtaining the file history through the JPO website or the file wrapper from the JPO database.
Q.Does the JPO accept a “DocuSign” signature and certificate of signature in place of a wet signature (original, printed, and mailed)? We would like to use the platform “DocuSign” to aid in the ease of obtaining inventor signatures.
No. The JPO normally does not accept e-signatures for certificates, such as an assignment document. Accordingly, a document with only the DocuSign signature will not be accepted by the JPO.
Please also refer to the following URLs regarding Assignment and Power of Attorney documents:
Q.Are there any future plans for the Japanese Patent Office to change its position and move toward accepting electronic signatures?
No. The JPO’s website indicates that the JPO will continue to require original documents for procedures that would be highly compromised by forged documents. Therefore, it is unlikely e-signatures for certificates will be accepted by the JPO in near future.
Q.There was a succession of the right to obtain a patent after a Decision of Rejection has been issued, and the applicant is considering filing an Appeal. When should the change of ownership be recorded with the JPO?
If the Assignee files an Appeal, the ownership change should be recorded on or before the date the Appeal is filed.
However, if an Appeal is filed under the name of the Assignor (i.e., before recording the change of the ownership), a Power of Attorney from the Assignor must be filed with the JPO. Otherwise, the Appeal will be rejected.