Japanese Patent FAQs
Change of Ownership, Merger
Q.What documents are required for recording a change in ownership based on a merger?
An original certificate of merger document or a notarized copy of the merger document and a power of attorney are required. In the merger certificate, the full addresses and names of the parties must be indicated. We will provide you with our corporate merger form, if necessary.
Q.What are the problems for patent applications that could occur from not recording an ownership change based on a merger?
The problems that could be arise for not recording the ownership change are difficulties in licensing or assigning the patents, or in enforcement since only a patent owner or exclusive licensee may file a suit for patent infringement.
It is less expensive if the recordation of change of ownership is done while the applications are pending, as opposed to after issuance.
If you wish to file an appeal or a divisional application, it may be necessary to record the change of ownership since a new power of attorney by the new owner must be filed with the JPO.
Japanese formality examination standards for patents are stricter than the same for patent applications. An original certificate of merger document or a notarized copy of the merger document is more difficult to have accepted by the JPO and it may be difficult to obtain a signature for a new merger form at a later stage.
If you do not record the change of ownership on or before paying the registration fee, the name of the successor will not be listed as the patentee on the Certificate of Patent.