Introduction of Service by Publication Under International Mail Service Suspension

June 28, 2023

“The Bill on the Partial Revision of the Unfair Competition Act" approved by the Cabinet on March 10, 2023, was passed and enacted on June 7, 2023. The Act (hereinafter referred to as the “Revised Act") was promulgated on June 14, 2023 and the provision of Article 191-1 of the Revised Patent Act comes into force on July 3, 2023.

Based on the revision, Service by Publication will be executed when difficulty in the delivery of documents to overseas residents continue for a period of six months due to the suspension of international mail service.

1. Background

Under the existing Patent Act, when a person who does not have a domicile or residence in Japan, or a corporation that does not have a business office in Japan (hereinafter referred to as an “overseas resident”) has designated a patent administrator (a person who has a domicile or residence in Japan acting as an agent for a patent of the overseas resident), documents shall be delivered to the designated patent administrator (Patent Act, Article 192-1). When the overseas resident has not designated a patent administrator, documents shall be delivered directly by registered airmail or other means to the overseas resident (so-called, “direct dispatch”) (Patent Act, Article 192-2). (Same applies under the Utility Model Act, Design Act and Trademark Act.)

However, due to the global spread of the Coronavirus and the situation in Ukraine, international postal services in some countries and regions have been suspended for a long period of time, making it impossible to send documents and hampering the progress of examinations and other proceedings as shown below.

• A decision of refusal for a case does not become final and binding due to the delay in dispatch of transcript on decision of refusal, and whenever a new application similar to the application awaiting refusal is filed, decisions on examinations of later applications may not be made.
• Suspension of the appeal process due to the delay in the delivery of duplicate of written request for appeal.

Accordingly, the requirements for Service by Publication which is provided as a means to serve when service cannot be made by ordinary means has been revised.

2. Details of Revision

Article 191-1 of the Patent Act on Service by Publication shall be revised together with the addition of a new clause, Article 191-2 regarding cases where difficulty in the delivery of documents has continued for a period of six months.

Specifically, the revision takes into consideration cases where international mail service is suspended due to international disputes or infectious diseases, restricting delivery of mail to the affected countries and regions. Regardless of a prolonged suspension of international mail service, examinations and other proceedings may be processed without delay through Service by Publication.

For cases where the international mail service has been suspended prior to the enforcement date of the Revised Patent Act, Service by Publication may be executed when international mail service suspension continues for a period of six months after the effective date of the Revised Act (Article 3-1, Supplementary Provisions of the Revised Patent Act).

3. Information on Service by Publication

Information on Service by Publication is posted HERE.

4. Request for Patent Administrators and Overseas Residents

Delivery of document is first made to the patent administrator as stated in 1.

An overseas resident is requested to assign a patent administrator at all times. When international mail service is suspended, Service by Publication will be executed to overseas residents who have not designated a patent administrator.

Patent attorneys, etc., who have been appointed as a patent administrator are requested to continue efforts to establish smooth communication with the overseas resident.

If a patent administrator has not been designated as stated in 1 above, documents will be dispatched directly to the overseas resident. Should there be change in the address of the overseas resident, a patent administrator should be assigned to manage necessary procedures on behalf of the overseas resident (if the overseas resident is staying in Japan, he/she may complete the procedure in person).

Contact Information

Inquiries on International Design and Trademark Applications

Office for International Design and Trademark Applications,
Japan Patent Office

E-mail: PA1B00@jpo.go.jp

Inquiries on Trial and Appeal

Research and J-term (Judge term) Management Section, Trial and Appeal Division,
Trial and Appeal Department,
Japan Patent Office

E-mail: PA6120@jpo.go.jp

Inquiries on Other Documents

Dispatch Section, Application Division,
Trademark and Customer Relations Department,
Japan Patent Office

E-mail: PA1610@jpo.go.jp

[Last updated 28 June 2023]