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January 2022
Contents
News about Sonoda & Kobayashi
1. Sonoda & Kobayashi wishes you a happy 2022

JPO and CNIPO News
1. JPO provides FAQ regarding patent prosecution examiner interviews
2. JPO to provide published patent information online on a daily basis
3. JPO to forbid multiple dependent claims depending on other multiple

dependent claims
4. CNIPA releases new guidelines for trademark examination and trial
Latest IP News in Japan
1. Mitsui & Co. sued by Nippon Steel, as patent infringement suit continues
2. Clothing giants Uniqlo and GU settle legal dispute over self-service checkoutmachines
Latest IP News in China
1. Huawei and Buffalo reached Wi-Fi 6 patent license agreement

2. ZKTeco accused of infringement by Hanwang, indemnities of 109 million CNY

claimedIP Law Updates in China: Insights from Sonoda & Kobayashi
1. Brief analysis of new reference document on drug-related lawsuits in China- News about Sonoda & Kobayashi 1. Sonoda & Kobayashi continues to include Chinese IP news in this newsletterIn this first newsletter of the 2022, Sonoda & Kobayashi would like to wish all its readers
the best for this new year. We hope to continue to inform you about relevant intellectual
property news in Japan and China, and also share our own analyses on important IP
matters.
We thank you for reading our newsletter and your continued interest in our firm.

- JPO and CNIPO News 1. JPO provides FAQ regarding patent prosecution examiner interviews
On December 21st, 2021, the JPO updated its webpage regarding examiner interviews,
including a link to a new list of frequently asked questions on the topic.
In addition to other topics, the webpage notes that if there is a request for an interview
from the agent of the applicant, the examiner will, in principle, accept the interview once.
However, following consultation within the JPO, the examiner may refuse an interview
request due to the risk of the interview deviating from the stated purpose of examinerinterviews. If it is determined that the interview will not be accepted, the examiner will
inform the agent of the reason for not accepting the interview, and will create a record of
response stating the reason for this.
In addition, the frequently asked questions document clarifies that if an applicant wishes to
conduct an interview in a foreign language, the applicant may be asked to provide aninterpreter, even if the language is English.
For more information, please click here for article 1 and article 2. (in Japanese)
2. JPO to provide published patent information online on a daily basis
On January 12, 2022, the JPO announced that the gazette of published patents would be
provided on a daily basis rather than a weekly basis. Users can find the published patents
in PDF form on the Japan Platform for Patent Information（J-PlatPat）.
For more information, please click here. (in Japanese)
3. JPO to forbid multiple dependent claims depending on other multiple dependentclaims
On December 23, 2021, the JPO announced proposed amendments to the Ordinance for
Enforcement of the Patent Act, which would forbid multiple dependent claims depending
on other multiple dependent claims as a violation of Article 36(6)(iv) of the Patent[1].
A multiple dependent claim is a dependent claim that refers to more than one claim. An
example of a multiple dependent claim depending on another multiple dependent claim is
as follows:
Claim 1: A device comprising A.
Claim 2: The device of claim 1, where A comprises material X.
Claim 3: The device according to any one of claims 1 and 2, where A comprises material Y.
[multiple dependent claim]
Claim 4: The device according to any one of claims 1 to 3, where A comprises material Z.
[multiple dependent claim depending on another multiple dependent claim (claim 3)]
In summarizing the proposed amendments, the JPO provides two explanations for thechange. First, multiple dependent claims which depend on other multiple dependent claims
greatly increase the burden upon examiners in a manner disproportionate to the total
number of claims, because the number of combinations of claimed features in such claims
can increase exponentially. Second, of the major patent offices, the USPTO, KPO, and
CNIPA do not allow multiple dependent claims depending on multiple dependent claims,
and banning such claims would be beneficial from the viewpoint of harmonizing
international standards.
At present, it is anticipated this change will apply to applications filed on or after April 1,
2022.
For more information, please click here for article 1, article 2 and article 3. (in Japanese)[1] Requirements regarding technical rules on the statement of claims to Regulations under
the Patent Act Article 24ter

4. CNIPA releases new guidelines for trademark examination and trial
CNIPA released the Guidelines for Trademark Examination and Trial (hereinafter referred toas “new Guidelines”) on November 22, 2021. The new Guidelines are effective fromJanuary 1, 2022, and the original “Standards for trademark examination and trial”(hereinafter referred to as “original standards”) were repealed at the same time.
The purpose of formulating the new Guidelines is to standardize the procedures for
trademark examination and trial and ensure uniform application of laws and the consistent
implementation of standards in all links of trademark examination and trial.
If you want to know more about the new Guidelines, below are some differences between
the new Guidelines and the original standards for your information.

In terms of structure, the original standards include only the section of "trademark
examination standards" and the section of "trademark trial standards", while the new
Guidelines include the 2 sections above and add five new sections:
1) Form examination of trademark applications,2) Classification of goods and services and trademark retrieval elements,
3) Examination of other trademark business,
4) Examination of Madrid international trademark registration
5) Handling of trademark application affairs.
In terms of content, in addition to the five new sections as described above, thedifferences in trademark examination and trial are mainly due to their adaptations todifferent versions of the trademark law. The original standards were adapted to theTrademark Law of 2014, and the new Guidelines are adapted to the Trademark Law
of 2019. For example, the fourth section of the new Guidelines describes in detailthe requirements for Madrid international trademark registration and follow-up
business, but this was not described in detail in the original standards.
Furthermore, the new Guidelines distinguish the absolute grounds and relative
grounds of trademark registration grounds, which better allows attorneys/ lawyers tochoose a more reasonable route when filing objections, revocation or invalidity for
different reasons, rather than filing them haphazardly for inappropriate
corresponding reasons. The original standards did not distinguish these, but simply
listed them.

For more information, please click here for article 1 and article 2. (in Chinese)- Latest IP News in Japan 1. Mitsui & Co. sued by Nippon Steel, as patent infringement suit continues
Asia Nikkei, December 23, 2021
Asia Nikkei reported, on the 23rd of December 2021, on the patent infringement lawsuitthat Nippon Steel filed recently against Mitsui & Co.
A few months prior, in October 2021, Nippon Steel had already filed lawsuits against
Japanese car maker Toyota, and Chinese steel producer Baosteel, for infringing on theirpatents for non-oriented steel sheets. These sheets are needed in the production of
Toyota’s electric cars sold in Japan, and Nippon Steel claims that Baosteel supplies Toyota
with such sheets in violation of its patents.
Now, Nippon Steel says that Japanese general trading company Mitsui & Co. has been
involved in the deal between Toyota and Baosteel. Nippon Steel itself did not give any
further comments on the lawsuit it has filed, while Mitsui & Co. mentioned that it hadreceived the bill of complaints, but did not have anything else to add. It is likely theJapanese steelmaker believes that Mitsui & Co may trade in said products which areallegedly violating its patents.
While it is rare in Japan for a manufacturing company like Nippon Steel to take its principalcustomers to court, the additional claim against Mitsui & Co. is not wholly unexpected.
Already back in October, Nippon Steel’s president Eiji Hashimoto pointed out that aside
from Toyoto and Baosteel the company would likely sue others as well. With the new moveagainst Mitsui, this statement has become a reality.
Nippon Steel is seeking 20 billion Japanese Yen (about 200 million USD) from both Toyota
and Baosteel. While the amount has not yet been revealed in regard to Mitsui, Asia Nikkei
expects that it is probably a bit lower.
For more information, please click here.
2. Clothing giants Uniqlo and GU settle legal dispute over self-service checkout machines
NHK, December 24, 2021
NHK published an article on the 24th of December 2021 about Japanese clothing retail
giants Uniqlo and GU. Both companies had been engaged in a legal battle with an ITcompany over the patent rights for the self-service checkout machines they use in theirstores.
Both UNIQLO and GU were in the process of introducing a self-checkout system in their
shops using a technology whereby price text would be read, and a total price displayed,
after all items are put together in a small area.
The aforementioned IT-company “Asterisk” had developed and patented a technology toread information on price tags. As the machines were installed in the stores, Asterisk filed
patent infringement suits against both these companies.
Fast Retailing, the holding company operating UNIQLO, had said that Asterisk’s patents
were invalid and started an invalidation procedure at the JPO.
On the 23rd of December a settlement was reached between all parties. The details of thedeal have not been revealed, though it seems that continuing the legal disputes could
hinder the business of all parties.
For more information, please click here. (in Japanese)- Latest IP News in China 1. Huawei and Buffalo reached Wi-Fi 6 patent license agreement
On December 21, 2021, Huawei (a leading global provider of information andcommunications technology (ICT) infrastructure and smart devices) announced that itreached a patent license agreement with Buffalo Inc.
Buffalo is a leading provider of award-winning networking, storage and memory solutions
for the home and small business environments as well as for system builders andintegrators.
The agreement provides Buffalo coverage for certain Wi-Fi 6 enabled products under
Huawei’s portfolio of Wi-Fi 6 standard essential patents (SEPs). Buffalo joins the growing

list of global vendors authorized to access and implement Huawei’s Wi-Fi SEPs andtechnologies.
“We are pleased to reach this license agreement with Buffalo, which is our first overseas
Wi-Fi 6 focused license,” said Fan Zhiyong, Global Head of Intellectual Property at Huawei.
For more informaioin, please click here.
2. ZKTeco accused of infringement by Hanwang, indemnities of 109 million CNY claimed
IPR Daily, December 24, 2021
On December 23, 2021, Hanwang Technology Co., Ltd. (hereinafter referred to as Hanwang
Technology), active in the field of character recognition technology and intelligent
interactive products worldwide, disclosed a lawsuit announcement. In the announcement,
it said that it recently filed a lawsuit with the Beijing Intellectual Property Court regarding
the infringement of the invention patent named "a slope image acquisition device and facerecognition system" (CN101615243B). The defendants are ZKTeco Co., Ltd (hereinafterreferred to as ZKTeco), a global enterprise with biometric verifications as its coretechnology, and its wholly-owned subsidiaries, and Beijing Jingdong Century Trade Co., Ltd.
Hanwang Technology received 9 "Notices of Acceptance of Civil Cases" issued by the
Beijing Intellectual Property Court on December 21, 2021, with indemnities of 109 million
CNY (about 17.21 million USD) claimed.
It should be pointed out that one of the defendants, ZKTeco, is currently aiming to be listedon the Growth Enterprise Market (GEM), and had just passed the IPO (Initial Public
Offering) stage in December 2021, though it had not yet submitted for registration. The
issue of whether the above-mentioned infringement case will affect ZKTeco's IPO progress
had also attracted market attention.
For more information, please click here. (in Chinese)- IP Law Updates in China : Insights from Sonoda & Kobayashi Brief analysis of new reference document on drug-related lawsuits in China
At the time of writing, it has been over 7 months since the 4th revision of China’s patent law
officially came into effect. One of the important parts of this revision is the way in which
disputes are settled between drug companies applying for marketing authorization and thepatent-holder of specific drugs or an interested party.
In the process of the marketing review and approval of new drugs, either of these twoentities may file a lawsuit when the Chinese authorities are in the process of reviewing andapproving new drugs. They can request a judgment on whether the technical solutions
related to the drug for which registration is being applied fall within the protection scopeof the other party’s drug-related patent right. For such disputes, the court of first instanceis the Beijing Intellectual Property Court.
Recently, on the 4th of January 2022, the court issued a reference document to help parties
involved in such drug-related patent disputes understand the relevant requirements forfiling a lawsuit.

This article will brief the reader on this reference document, which is officially called the“Reference for Case Filing in Civil Cases involving Patent Disputes Related to Drugs ofWhich Applications for Registration are Filed (Trial Implementation)" as well as on official
interpretation of the document.
1. The introduction of the main contents of the reference and its interpretation
The reference document or “Reference” consists of 8 articles. These are summarized
briefly below.
Article I of the reference document discusses “The Cause of Action”. This is the cause ofaction for civil cases that involve patent disputes related to pharmaceutical drugs. In
particular, it refers to patented drugs for which a registration is filed at the Chinese
National Medical Products Administration (NMPA), and for which a dispute has arisen overwhether the subject of the filed registration falls within the scope of patent protection.
Article II and Article III of the reference document respectively stipulate “Subject
qualification materials to be provided where the patentee or interested party files a lawsuit”
and “Subject qualification materials to be provided where the applicant for the marketing ofa drug files a lawsuit”.
The content of Article II is especially important to mention here as it stipulates therequirements for patentees and for interested parties, which are companies with various
types of licensing contracts. Without meeting these requirements, it is not possible to file alawsuit against a company that is applying for marketing authorization.
For the patentee, Article II asks them to provide copies of several documents to prove its
identity and to show that the patent involved is valid. These required documents include a
copy of the patent register, the change records of the bibliographic data on the patent right,
and the receipt for the annual patent fee.
For a license holder, the reference asks them to provide the above documents as well assome additional ones. These are necessary to prove their status as patent licensees.
Such materials include the patent licensing contract, the filing record of the patent
licensing contract, or potentially other materials that enable the license holder to prove
they are a licensee.
Each licensee has somewhat different rights and obligations depending on their licensing
contract (Exclusive, Sole, General).
- A party with an exclusive license contract may file a lawsuit independently, by simply
providing the documents above.
- A party with a sole licensing contract also may file a lawsuit independently. It needs thematerials mentioned above, but in addition it needs to submit materials to prove that thepatentee does not file a lawsuit him or herself.
- A party with a general licensing contract needs to provide the previously mentioned
documents, and also present proof that the patentee authorizes this general licensee to filea lawsuit in its own name.
For the holder of the permit for the marketing of a drug, Article II asks them to provide thedrug registration certificate and other approval documents.
Regarding the contents of Article III, the main point of note is that where the applicant forthe marketing of a drug files a lawsuit as the plaintiff, he or she shall provide theapplication form for the drug marketing authorization and notification of acceptance of thedrug registration application issued by the medical products administration of the StateCouncil.
In the interpretation document, further clarification is provided on the materials licensees
need when they want to apply to get a court order to stop the infringement of intellectual
property before litigation.
In much the same way, exclusive licensees may separately file such an application.
Sole licensees may file an application for a court order separately, but need to show thatthe rights holder is not filing one as well.
General licensees can file an application in their own name, but only upon specificauthorization from the rights holder.
Article IV of the Reference discusses “The Definite Defendant”. Namely, where the patentee
or interested party files a lawsuit as the plaintiff, the applicant for the marketing of a drug
shall be listed as the defendant. Where the applicant for the marketing of a drug files alawsuit as the plaintiff, the rights holder of the patent shall be listed as the defendant.
In the Interpretation of this article, further explanation is given regarding the question of
who is the defendant. Considering the common characteristics between the type oflawsuits in question and the lawsuits on the confirmation on non-infringement, the same
principle is established: the patentee shall be listed as the defendant where the applicant
for the marketing of a drug files a lawsuit as the plaintiff.
Article V of the Reference is concerned with “The Specific Claims, Facts and Grounds”. In
particular, where the patentee or interested party files a lawsuit, it needs to provide
materials to prove its claims, facts, and grounds. These materials are the following:
1. Relevant patent information disclosed in the Patent Information Registration Platformfor Drugs Marketed in China (hereinafter the Platform), including the name and number ofthe patent, and relevant claims, among others;
2. Relevant information of the drug for which an application for registration was filed andwhich is disclosed in the Platform, including the name, type and registration category ofthe drug, and the relationship between the drug and the involved drug on the market,
among others; and3. Four types of declarations made by the applicant for the marketing of a drug inaccordance with the Implementation Measures for the Mechanism For Early Settlement ofDrug Patent Disputes (Trial Implementation) and the basis for making such declarations.
Where the applicant for the marketing of a drug files a lawsuit, they too may refer to theabove paragraph and provide evidence to prove their specific claims, facts, and grounds.
Article VI of the Reference relates to “The Limitation of Action”. It specifies the situation
where the patentee or interested party fails to file a lawsuit within 45 days from the date on
which the national drug evaluation institution (CDE) discloses the application for drug
marketing authorization on its platform. In these circumstances, the applicant for themarketing of a drug may file a lawsuit. When doing so, the applicant for the marketing of adrug shall provide evidence demonstrating that the patentee or interested party has indeed
not filed a lawsuit within 45 days. Should this applicant be unable to provide the said
evidence, they are allowed to provide a relevant explanation.
Article VII of the reference documents informs the reader of the “Notarization andAuthentication Documents”. Particularly important to note here is that where the plaintiff is
a foreigner, a foreign enterprise or organization, they will need to provide legally notarizedand authenticated subject qualification materials when filing a lawsuit.
Should the plaintiff be a resident, enterprise or organization of the Hong Kong Special
Administrative Region (SAR) or the Macao SAR, and therefore does not have a domicile in
Mainland China, the said party would also need to provide the notarized and transmitted
subject qualification materials when filing a lawsuit.
Where the plaintiff is a Taiwan resident, enterprise, or organization, who does not havedomicile in Mainland China, they shall provide subject qualification materials that havebeen legally notarized and have been certificated by the China Notary Association or
Beijing Notary Association when filing a lawsuit.
In addition, in the Interpretation, further details are given about the notarization andauthentication. Namely, in accordance with the Answers to the Questions on the
Application of Law in Administrative Trials (III) issued by the Beijing High People's Court,
law firms or relevant agencies that represent foreign natural or legal persons in
administrative litigations have specific rights. Within the limitation of actions, suchagencies may provide the court with an indictment and a fax or e-mail of the power ofattorney signed by the client. Moreover, if they can provide a notarized and authenticatedpower of attorney to the court within three months after the litigation, then the limitation ofaction is considered to not be exceeded. Considering that cases involving patent disputes
related to drugs of which applications for registration are filed belongs to a civil case, theabove provisions are not applicable. Thus, where the plaintiff is an entity of a foreign stateor the Hong Kong and Macao Special Administrative Region, or the Taiwan region, it shallprovide the required notarization and authentication documents in their entirety upon filinga lawsuit.
Finally, Article VIII of the reference documents stipulates “Other requirements of case filingshall be implemented in accordance with relevant laws, regulations, and provisions.”.
2. Our advice
Based on the information in the reference document and interpretation, there are several
important points to be aware of:1) The national drug evaluation institution publishes information on drug application on its
platform. Thereafter, a patentee or licensee has 45 days to decide whether to file a suit andto prepare all the documentation. Therefore, it is recommended to monitor the platform
regularly.
2) In particular, cases involving foreign patentees or licensees preparing the relevant
documents are time consuming because of the notarization requirements.
It may even be difficult to prepare the documents during the set time. Therefore, if a foreigncompany is expecting to file a lawsuit of the type in question, we advise this company tomake sure in advance that it knows what documents it needs and how to obtain them asquickly as possible.

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