Serving Judicial Documents in Japan in IP Litigation: Practical Points under the Hague Service Convention
When patent or other intellectual property litigation is commenced outside Japan against a Japanese company, one of the first practical issues may be how to serve the initiating documents in Japan.
The Hague Convention on the Service Abroad of Judicial and Extrajudicial Documents in Civil or Commercial Matters (the “Hague Service Convention”) provides the principal framework for such service between Contracting States. Japan is a party to the Convention, but its declarations and domestic practice require particular attention.
This article provides a practical overview from the perspective of a Japanese patent attorney, primarily for foreign IP practitioners handling disputes involving Japanese parties. It focuses on issues that commonly arise in cross-border IP matters and does not purport to provide comprehensive advice on Japanese civil procedure.
1. Japan Does Not Permit Direct Service by Postal Channels under Article 10(a)
A point that occasionally causes confusion is whether judicial documents may simply be mailed directly from a foreign country to a defendant in Japan.
Japan formally notified its opposition to Article 10(a) of the Hague Service Convention on December 21, 2018. Accordingly, Article 10(a) cannot be relied upon to serve judicial documents directly on a defendant in Japan through postal channels.
For service under Article 5, the request is normally transmitted to Japan’s Central Authority, which is the Ministry of Foreign Affairs. The Ministry then refers the documents to the competent Japanese court for service.
There is an important distinction here. Japan’s opposition to Article 10(a) does not mean that postal services are never used in the service process. Once a request has been processed through the Central Authority, the competent Japanese authority may itself use Japan’s special postal service procedure to effect service domestically.
For foreign counsel, the practical point is therefore not simply “no service by mail,” but rather that direct international service by postal channels under Article 10(a) and postal delivery carried out within Japan as part of an Article 5 procedure are different matters.
2. Japanese Translations: Attachments Can Be the Main Practical Burden
Where formal service is requested under Article 5(1)(a) or Article 5(1)(b), Japan requires a full Japanese translation of each document to be served. The HCCH practical information for Japan expressly states that a full translation is required for any document served under those provisions.
This can have significant practical consequences in IP litigation.
A statement of claim and summons will ordinarily need to be translated. If exhibits or attachments are also included among the documents that must be served, those documents will, in principle, also need full Japanese translations.
This may include, for example:
- patent specifications;
- prior correspondence between the parties;
- technical documents;
- licence agreements; or
- other exhibits forming part of the documents to be served.
The fact that the Japanese defendant already knows the contents of a document, or is capable of reading English or another foreign language, does not itself remove the translation requirement applicable to formal service through the Japanese Central Authority.
For patent litigation in particular, this can create a substantial translation burden. A European patent specification that the defendant itself owns may contain information already well known to the defendant, but if the specification forms part of the documents formally to be served, the Japanese service requirements should be considered separately from the defendant’s actual knowledge of the document.
Accordingly, foreign counsel should consider at an early stage which documents must actually be included in the package to be served under the procedural law of the forum. The question of what must be served is generally governed by the law of the proceedings, whereas the requirements for effecting service in Japan are governed by the applicable international and Japanese framework.
3. Is a Certified Translation Required?
Another practical question is whether the Japanese translation must be prepared or certified by a sworn or officially certified translator.
The published requirements of the Japanese Central Authority require full Japanese translations for formal service but do not state that those translations must be certified by a sworn translator, certified translator or notary.
Accordingly, certification does not appear to be an additional requirement imposed by Japan for purposes of the Article 5 service procedure itself.
This should, however, be distinguished from any requirement that may exist under the procedural law of the country in which the litigation is pending. A foreign court may impose its own requirements concerning translations submitted in the proceedings.
4. Voluntary Acceptance under Article 5(2)
Article 5(2) provides another possible route: informal delivery to an addressee who accepts the documents voluntarily.
For this procedure, a Japanese translation is not strictly required. The Japanese Ministry of Foreign Affairs expressly distinguishes this route from formal service under Article 5(1).
The limitation is apparent from the nature of the procedure. If the addressee refuses to accept the documents, or does not take the required steps, the documents are returned rather than formally served.
This route may therefore be useful in particular circumstances, but foreign counsel should consider carefully whether voluntary acceptance provides sufficient certainty for the case in question.
5. Confirming the Address of a Japanese Corporate Defendant
Before requesting service, it is often sensible to verify the defendant’s corporate details.
An official Japanese company register certificate can be obtained from the Legal Affairs Bureau and used to confirm matters such as the company’s registered corporate name, registered head office and registered officers.
There is, however, an important distinction between a registered address and an operational address.
A company register certificate establishes the information registered with the Legal Affairs Bureau. It does not necessarily establish that the company is currently operating from that location or that judicial documents can in practice be received there.
Where there is reason to doubt whether the registered address remains operational, additional factual verification may therefore be appropriate before initiating the service process.
For foreign IP practitioners, verifying the correct Japanese corporate name is also useful for reasons extending beyond service, including conflict checks, ownership investigations and review of Japanese patent or trademark records.
6. Why Proper Service May Matter Later: Recognition of a Foreign Judgment in Japan
Service is not merely a procedural step at the beginning of litigation. Defects in service may become relevant if the successful party later seeks recognition or enforcement of the foreign judgment in Japan.
Article 118(ii) of the Japanese Code of Civil Procedure provides that, for a final and binding foreign judgment to be recognised, the unsuccessful defendant must have received the requisite service for commencement of the proceedings, or must have appeared without having received such service. Article 118 also contains separate requirements concerning jurisdiction, Japanese public policy and reciprocity.
The Supreme Court of Japan has held that, where an applicable international convention prescribes the method by which documents commencing proceedings are to be served, service that does not comply with the convention may fail to satisfy the service requirement for recognition of the resulting foreign judgment. The leading Supreme Court judgment was rendered on April 28, 1998.
There is, however, an important qualification. Article 118(ii) also expressly refers to a defendant who “appeared without being served.”
Accordingly, where a Japanese defendant actually participates in the foreign proceedings and takes procedural steps in its defence, defects in the original service may not necessarily prevent recognition under Article 118(ii). Japanese precedent indicates that an appearance made for the purpose of contesting the foreign court’s jurisdiction may also be relevant in this context.
The application of these principles is fact-specific. Questions concerning recognition and enforcement of a particular foreign judgment should therefore be considered with Japanese litigation counsel.
If compulsory enforcement in Japan is ultimately required, recognition under Article 118 is not the end of the process. An execution judgment from a Japanese court is required under Article 24 of the Japanese Civil Execution Act.
7. Practical Takeaways for Foreign IP Practitioners
For foreign counsel preparing IP litigation involving a defendant in Japan, several practical points are worth addressing early:
- Do not assume that originating judicial documents can be served directly by international mail. Japan has opposed Article 10(a).
- Identify at an early stage exactly which documents must be formally served.
- Take the Japanese translation burden into account when deciding what documents must accompany the initiating papers.
- Verify the Japanese company’s exact registered name and address before submitting the service request.
- Consider not only whether the defendant will actually receive the documents, but also whether the method of service could affect recognition or enforcement of a later judgment in Japan.
These issues can become particularly significant in international patent litigation, where pleadings may be accompanied by lengthy patent specifications, technical evidence and correspondence, and where enforcement or related proceedings in Japan may later become relevant.
A Japanese Patent Attorney’s Perspective
Cross-border IP disputes frequently involve issues that do not fit neatly within a single jurisdiction or professional discipline. A foreign patent litigator may need information concerning Japanese patent law, Japanese corporate records, service procedures and, potentially, recognition or enforcement of a foreign judgment.
A Japanese patent attorney can assist foreign IP practitioners particularly with Japanese intellectual property law, technical and patent-related issues, Japanese IP practice and coordination of the Japanese aspects of a cross-border dispute. Where specific issues of Japanese civil procedure, litigation or enforcement arise, coordination with qualified Japanese litigation counsel may also be appropriate.
Understanding these distinctions at the outset can help foreign counsel structure the Japanese aspects of an international IP dispute more efficiently.
This article is intended for general informational purposes only and does not constitute legal advice on any particular matter. The appropriate method of service and the requirements for recognition or enforcement of a foreign judgment depend on the relevant facts, the applicable international instruments and the procedural law of the jurisdictions concerned.
References
- Hague Conference on Private International Law (HCCH), Japan – Declarations under the Service Convention.
- HCCH, Japan – Central Authority & Practical Information.
- Ministry of Foreign Affairs of Japan, Methods for a Court of a Foreign State to Request Japan to Serve Judicial or Extrajudicial Documents and Take Evidence.
- Code of Civil Procedure of Japan, Article 118.
- Civil Execution Act of Japan, Article 24.
- Supreme Court of Japan, Judgment of April 28, 1998, Minshu Vol. 52, No. 3, p. 853.