New Rule Regarding Assignment
What Will Remain Unchanged?
In order to assign a patent, utility model, trademark, or design right, or an application for any of these IP rights, the original copy of the assignment document must be submitted to the Japan
Patent Office (JPO) along with a written request for a record of the assignment. The JPO requires the handwritten signatures of the assignors to be appended to the assignment document.
What Will Change?
From January 1, 2022, the JPO will require the authenticity of foreign assignors’ signatures to be certified by specific methods defined by the JPO. Specifically, this certification can be accomplished by:
(a) directly confirming the determination to make the assignment in question with the person named as the assignor in the assignment document;
(b) notarizing the assignment document; or
(c) obtaining a certificate for the signatures issued by the local authorities.
If option (a) above is chosen, the above confirmation must be accomplished by a Japanese patent attorney or attorney-at-law representing the assignor or assignee, or a local counsel (a non-Japanese counsel) with whom the assignor or assignee is directly consulting, if any. Moreover, a simple statement that the above confirmation was completed must be included in the written request for a record of the assignment. If a local counsel was involved in the confirmation process, the local counsel (the firm’s name alone is sufficient) must be identified in such a statement. Such a statement alone is sufficient; neither the details of the confirmation process (such as how the signer’s identity was verified) nor the signature of the local counsel are necessary.
An acceptable notarization for option (b) above must include certification by a notary public regarding the authenticity of any signature appended to the assignment document.
To facilitate your decision on which option to select, we would like to share the following.
i) Acceptability Before the JPO
The above requirements only relate to the acceptability of the request for a record in question. They do not relate to the validity of the assignment as such, which may be challenged in the future. Since the JPO is not capable of examining the validity of the above-referenced statement for option (a), any request with such a statement will automatically be accepted by the JPO.
ii) Validity of an Assignment
The validity of an assignment may be challenged before the court. However, in such court proceedings, whether the statement for option (a) is true or not will not play any role, as the decision will be made based on whether the signature is authentic or not.
In general, a notarized or certified signature is recommended, since it shifts the burden to the challenger to prove that the signature is not authentic. However, when neither notarization (option (b)) nor obtaining an official certificate for the signature (option (c)) is feasible, or the risk that someone will challenge the authenticity of the signature is negligible, option (a) can be your first choice.
In that case, we would like to suggest as follows. As it goes without saying that false statements should be avoided, a responsible Japanese representative or a local counsel, if any, should directly contact the signer to confirm their determination regarding the assignment. Although this may appear to be an unusual step, doing so may provide a Japanese representative or a local counsel a good opportunity to promote themselves and their firm to a person in an important position. We hope that this extensive guide to the new assignment rule will be of assistance for such a purpose.