From July 3, 2023, the JPO documents will be served to foreign registrants by publication in the event of the suspension of international mail service for six months or more, by virtue of the Japan Trademark Law Revision Act promulgated on June 14, 2023.
Under the current provisions for serving documents (Article 191 of the Patent Law, Article 77(5) of the Trademark Law), where a foreign registrant has not assigned a case to a local attorney, the JPO serves documents relating to the case by registered airmail or other means directly to the registrant.
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 examination proceedings as shown below.
- A refusal decision by the JPO examiner takes longer times to become final and binding due to the delay in serving the decision, and because of it, where 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 a duplicate written request for appeal.
In order to avoid such delays in examination or trial, the Revision Act allows the JPO to serve documents by publication in the event that the international mail service has not worked for more than six months.
In this respect, it is advisable for foreign registrants to assign every IP file to a local attorney just in case. The JPO would never serve by publication as long as a Japanese attorney has been assigned.
Service by publication takes effect with the lapse of 20 days.
It may happen that a refusal or cancellation decision made by the JPO becomes unappealable even if the foreign registrant has no way of knowing it due to international mail suspension.
The JPO plans to post relevant information on every case served by publication on the JPO website from now on. Click here.
Masaki MIKAMI, Attorney at IP LAW – Founder of MARKS IP LAW FIRM