Q&A: Is a Power of Attorney (POA) Really Necessary for Japanese IP Procedures?

* This is based in part on our earlier article “Power of Attorney Submission in Japan.”

“I was told by another Japanese patent law firm I don’t need to submit a POA … Why do you require one?”

We are asked from time to time if a power of attorney (POA) is truly necessary when filing a case before the Japan Patent Office (JPO). The JPO website has the following item that may give rise to the confusion:

Should I submit a power of attorney?
When the information concerning your representative is included in the application form, you do not have to submit a power of attorney. This is also applicable to a Patent Administrator. However, if you appoint a representative acting on behalf of you to proceed with our Office afterwards, you need to submit a power of attorney.

It may sound like a POA is unnecessary for a patent application in the early stages of the application process. However, if you use a Japanese patent administrator (agent), you do need to submit a POA to your agent, and one who says otherwise is mistaken. As the answer above states, “afterwards” (i.e. following the application), the POA is necessary, and a Japanese patent administrator who says you do not need to submit one is putting you at risk.

Here’s the first reason for our warning: the Patent Act, Article 8 (1) requires all applicants residing outside of Japan to specify their Japanese patent agents in order to prosecute an application. Without a legitimately designated patent administrator in Japan, applications filed by overseas residents may be treated as invalid. It is for the protection of those applications that we recommend that clients file a Power of Attorney at the outset, indicating us as a duly appointed patent administrator in accordance with Article 8 of the Patent Act, with the JPO.

The JPO only implies that submitting the POA to the JPO at the initial filing is unnecessary. If applicants do not file the POA with the JPO, the JPO does not have to deal with the non-electronic (paper) POAs we submit … but as a matter of fact, we or any other patent agent serving a foreign client must be able to prove the authorization to be representing our clients before the JPO.

“What could go wrong if I did not have a POA filed?”

The second reason for our warning is that there is plenty of risk if you do not have the POA filed early on. There have been cases where the person who should have executed the POA became unavailable or unwilling to execute it later during prosecution of the case. Then, when the JPO examiner did demand a POA (which can happen, for example, at the filing a Divisional Application or Appeal) for the case, then getting the POA was extremely difficult or impossible.

Therefore, we strongly encourage our clients to execute a Power of Attorney for us to represent them at the outset of our service to them, to keep problems from arising later on.

(The information provided on this website is for informational purposes only and is not intended as legal advice. For questions or inquiries, please contact us for more information.)

Sources

Tentatively translated Article 8 (1) of “Patent Act.” Japanese Law Translation.

Japan Patent Office. Question 1-5 in “How to apply for a patent, a utility model, industrial design, trademark to the Japan Patent Office.”

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