Introduction of recent law revisions and operational changes related to the relaxation of formality requirements at the JPO [Japan Trademark & Design Update]

https://www.tmi.gr.jp/uploads/2021/07/26/jptu_issue18.pdf#page=1

Introduction

The "Regulatory Reform Implementation Plan" to promote the digitization of administrative procedures was decided by the Cabinet in July 2020. Followed by the decision, the Japan Patent Office (“JPO”) eased the formalities requirements for various documents and no longer require the signature or the company official seal (“HANKO”) of the applicant’s representative as of December 2020.

Further, the JPO also decided to relax the requirements for remedies when procedures are not handled within the prescribed period. In this article, we introduce in details the recent operational changes and revisions related to the relaxation of these formality requirements.

Relaxation of the formalities requirements for signatures on various documents

According to the JPO, approximately 800 procedures required signature of the applicant.

Followed by the recent Cabinet decision to promote the digitization of administrative procedures, the JPO has decided to waive the requirements of signature for approximately 770 procedures. 666 out of the 764 procedures were waived in December 2020, and 24 out of the 764 procedures were waived in June 2021.

(Source: The Japan Patent Office)

As shown in the above chart, 74 out of the 764 procedures are related to PCT applications, and now a scanned copy of the documents related to these procedures may be acceptable.

On the other hand, approximately 30 procedures continue to require signatures.

The procedures which still require handwritten signatures or Hanko on the relevant documents are those involved in the transfer of rights (e.g. transfer of registered rights, name/address change of applicant/registrant) since the damage to the applicant/registrant would be severe if a third party falsifies documents.

More specifically, the procedures that still require a handwritten signature or HANKO on the relevant documents are as follows:

1) Request for Transferring Rights of Applicant
2) Request for Name Change of Applicant
3) Request for Address Change of Applicant
4) Request for Transferring Rights of Registrant
5) Request for Name Change of Registrant
6) Request for Recordation of Pledge
7) Request for Recordation of Exclusive License
8) Request for Recordation of Provisionally Exclusive License
9) Request for Recordation of Non-Exclusive License for Trademark Rights
10) Request for Division of Trademark Rights
11) Request for Transferring Divisional Trademark Rights

With this operational change, for the majority of the procedures before the JPO, it is no longer necessary for applicants to sign various documents including a power of attorney.

However, it should be noted that the JPO still requires to submit an unsigned document with the name of the signatory. In other words, if the document is signed or sealed, the original hard copy of the signed/sealed document must be submitted to the JPO.

Relatedly, it also worth mentioning that it remains possible to submit an original hard copy of the signed document, if the applicant so wishes.

It is expected that the practice at the JPO may change at any time to further promote the digitalization and to meet the user’s requests, it is important to interact with the JPO to ensure smooth dealing under the new requirements.

Relaxation of remedies when procedures are not taken within the prescribed period

In order to avoid the loss of rights due to defects in formal or procedural requirements or non-compliance with the procedural period, under the Patent Law Treaty (PLT), it is stipulated that lost rights will be restored under certain conditions and that member states may adopt one of the following criteria:

(A) Failure to comply with the relevant period despite "substantial caution," as required by the situation (substantial standard of care)
(B) Delay was not "intentional" (intentional standard)

Under the revision of the law enacted in 2015, the JPO adopted (A). Accordingly, in Japan, in order for applicants who are unable to deal with specified procedures to be entitled to relief measures, they required “reasons beyond one’s control” or “legitimate reasons.”

However, the criteria for restoring rights adapted by the JPO was quite strict compared to the criteria of other major countries. In general, only limited situations involving "legitimate reasons," such as an unexpected system failure, illness, blackout, earthquake, etc., satisfied the requirement, and simple clerical errors were not considered to meet the standard of "substantial caution."

In order to apply for relief measures, the applicant had to perform the requisite actions and file a petition explaining the "legitimate reasons" within one (1) year after the expiration of the statutory period or two (2) months after the lapse of the legitimate reasons, whichever was earlier. The preparation of the petition and evidence to prove "substantial caution" was a huge burden on applicants.

In fact, the acceptance rate for rights restoration applications in other major PLT parties is more than 60% even in countries that adopted (A), while the acceptance rate in Japan stands out at about 10-20%.

In addition, when applying relief measures to applicants or their representatives who were unable to implement prescribed procedures within the time limits due to reasons beyond their control or legitimate reasons, the JPO asks them to submit substantial documentary evidence supporting the fact written in their documents to prove "substantial caution" has properly been paid.

[Remedies for restoration of rights in major countries]

(Source: The Japan Patent Office)

Under the circumstances, the JPO has decided to adapt the criteria (B) not only increase the acceptance rate but also to eliminate the procedural and administrative burden on the applicant.

The procedures for receiving restoration of rights are as follows:

1) Submission period for translation
2) Priority claim period
3) Request period for substantive examination
4) Restoration of patent rights
5) Restoration of trademark rights
6) Restoration of design rights

In line with this change, the JPO has also decided to collect a fee in order to prevent abuse of the system and to provide an incentive to comply with the procedure period, in the same manner as the US and other countries.

As the details of the new remedy system after relaxation including the fees will be decided approximately within a year, we will provide the updates as soon as available.

Conclusion

The relaxation of formal clerical requirements is welcome from a user perspective. In particular, the relaxation of the remedy requirements for the restoration of rights is preferable, because it is in harmony with other major countries. However, the JPO still has some unreasonable requirements, such as requesting the submission of an unsigned power of attorney. In this respect, more user-friendly improvements can be expected in the future.