It is possible to overcome objections raised by the Japanese Patent Office without involving Japanese local counsel. Most of the objections concern the formulation of the list of goods and services. If the list of goods is formulated too broadly, the Japanese Office does not accept an intention to use. Furthermore, some formulations accepted in many other areas are considered too vague by the Office.

Usually the examiner provides the IR mark owner with a recommendation what formulation would be accepted. The response can either be filed through Japanese counsel. Alternatively, the IR mark owner or the IR mark attorney in charge can file a direct response with WIPO restricting the list of goods for the territory of Japan (WIPO Form MM6). A copy of this request should then be sent to the Japanese Patent Office (the telefax number is mentioned in the office action) and the Japanese examiner will suspend the provisional refusal stage until the restriction has been confirmed by WIPO. Afterwards, the objections will be dropped by the Japanese examiner and WIPO will confirm grant of protection in Japan.

Practical impact:

Many provisional refusals from the Japanese Patent Office can be handled directly through WIPO without the assistance of Japanese local counsel.