2020/2/14

Japan IP News Bulletin, December 2019
View this email in your browser

December 2019
Dear Valued Clients and Colleagues,

Thank you for subscribing to our bi-monthly Newsletter!
We are here to provide all of the latest news, experts' views and our suggestions on the top stories affecting
the IP landscape in Japan.
We wish you a good reading!
Contents
News about Sonoda & Kobayashi
1. Webinar- "Utility Models–Overview of Requirements, Procedures and Tactical Use in Europe andJapan" is Now Available in Japanese
2. Seminar–“ Exploring New IP Landscapes and Trends in the EU and Japan" Concluded
Latest IP News in Japan
1. The Revised Patent Act to be Implemented on April 1, 2020
2. The JPO Announces Revision of International Search Fees
3. Nissan Appoints Makoto Uchida as its New CEO
4. WIPO: Asia is the Hub of Global Patent Filings
5. Japan Strengthens Intellectual Property Partnership with Singapore

https://mailchi.mp/7ed46dd32fd6/japan-ip-news-bulletin-december-2019?e=[UNIQID]

1/13

2020/2/14

Japan IP News Bulletin, December 2019

6. Government of Japan to Submit Candidature of Mr. NATSUME Kenichiro for Director-General of theWorld Intellectual Property Organization (WIPO)
7. India and Japan Signed a Pilot Programme for Expeditious Grant of Patents
8. Japan's Yoshino Wins Nobel for Lithium-ion Battery Breakthrough
IP Law Updates in Japan: Insights from Sonoda & Kobayashi
1. The JPO Further Clari es Some Procedures in “Opposition to Grant of Patent Proceeding
2. How Effective are Examiner Interviews in Japan?

- News about Sonoda & Kobayashi 1. Webinar- "Utility Models–Overview of Requirements, Procedures and Tactical Use inEurope and Japan" is Now Available in Japanese

The Japanese version of the webinar “Utility Models – Overview of Requirements, Procedures
and Tactical Use in Europe and Japan” is now available on our YouTube channel.

This webinar covers the following topics:

1. Basics about ling utility model applications at the different national patent o ces(procedure, time frame, requirements, costs etc.)
2. How utility rights can be used in enforcement
3. How to reduce costs by tactical use of utility models in your company`s IP strategy(Japan)4. How to branch off a utility model from a pending patent application (e.g., in Germany)

Organizer: EU-Japan Centre for Industrial Cooperation - Brussels O ce

Watch the Webinar here

2. Seminar: Exploring New IP Landscapes and Trends in the EU and Japan Concluded

https://mailchi.mp/7ed46dd32fd6/japan-ip-news-bulletin-december-2019?e=[UNIQID]

2/13

2020/2/14

Japan IP News Bulletin, December 2019

On October 28th, Sonoda & Kobayashi co-hosted a seminar together with the EU-Japan
Technology Transfer Helpdesk and IAM Media at the Delegation of the European Union to
Japan.

This seminar explored trends, opportunities, and challenges faced by IP professionals,
especially in in-house positions, when dealing with strategy-related topics about the IPRs they
manage such as international patent lings in the EU and Japan.

- Latest IP News in Japan 1. The Revised Patent Act to be Implemented on April 1, 2020
Ministry for Economy, Trade and Industry (METI), November 1, 2019

The Ministry of Economy, Trade and Industry (METI) has announced on its website that the
Cabinet has approved the Cabinet Order for Stipulating the Enforcement Date of the Act for
Partial Revision of the Patent Act, etc. The Revised Act will be implemented since April 1,
2020.

The Revised Act was established at the 198th ordinary session of the Diet in May, aiming atreview of the method of calculating compensations for damages, expansion of the scope ofdesigns subject to protection under the Design Act, improvement of the related design
system and other purposes.

Read the full article here

2. The JPO Announces Revision of International Search Fees
Japan Patent O ce (JPO), December 2, 2019

On December 2, the JPO has announced a revision of fees related to international
applications to take effect from January 1, 2020. In particular, the search fee where thedesignated ISA is the EPO will be reduced from 209,000 JPY to 208,800 JPY, while the search
fee where the designated ISA is the IPOS (Intellectual Property O ce of Singapore) will behttps://mailchi.mp/7ed46dd32fd6/japan-ip-news-bulletin-december-2019?e=[UNIQID]

3/13

2020/2/14

Japan IP News Bulletin, December 2019adjusted from 171,100 JPY to 173,600.

Read the full article here

3. Nissan Appoints Makoto Uchida as its New CEO
The New York Time, October 8, 2019

Nissan Motor Co. named the head of its China joint venture as chief executive o cer, picking
a new CEO known for close ties to top shareholder Renault and for a frank, straight-talking
manner that has marked him as an outsider.

The new chief, Makoto Uchida, 53, has worked at the company since 2003 and was leading
Nissan’s operations in China last year, which is considered a key market for Nissan.

Known for his un agging work ethic and relentless focus on cost control, Uchida wasdescribed by one long-time associate who spoke on condition of anonymity as a "foreignerwith a Japanese face" - direct and to the point in conversations.

“We expect Mr. Uchida to lead the company as a team, immediately focus on the recovery of
the business and revitalize the company to make a new Nissan,” Nissan’s chairman, Yasushi
Kimura, told the New York Time.

Read the full article here

4. WIPO: Asia is the Hub of Global Patent Filings
World Intellectual Property Organization (WIPO), October 16, 2019

WIPO’s annual World Intellectual Property Indicators (WIPI) report reveals that 3.3 million
patent applications were led in 2018 globally, up 5.2% for a ninth straight yearly increase.
Global trademark

ling activity rose to 14.3 million, while industrial designs reached 1.3

million.

https://mailchi.mp/7ed46dd32fd6/japan-ip-news-bulletin-december-2019?e=[UNIQID]

4/13

2020/2/14

Japan IP News Bulletin, December 2019

IPOs in Asia received two-thirds (66.8%) of all patent applications led worldwide in 2018 – aconsiderable increase from 50.8% in 2008 – primarily driven by growth in China. O ces
located in North America accounted for just under one- fth (19%) of the 2018 world total,
while those in Europe accounted for just over one-tenth (10.9%).

In terms of ling abroad, which is an indication of a desire to expand in new markets, U.S.
residents continue to lead with 230,085 equivalent patent applications led abroad in 2018.
The U.S. was followed by Japan (206,739), Germany (106,753), the Republic of Korea(69,459) and China (66,429).

Read the full article here

5.Japan Strengthens Intellectual Property Partnership with Singapore
Industrial Property Cooperation Center (IPCC), November 15, 2019Japan’s Industrial Property Cooperation Center (IPCC) has signed a memorandum of
understanding (MoU) with IPOS International, a subsidiary of the Intellectual Property O ceof Singapore (IPOS).

The MoU was signed on November 14, allowing IPCC and IPOS to have access to patent
search and analysis expertise in both Japanese and Chinese languages. In addition, IPOS
International and IPCC will appoint each other as a branch o ce in its respective country.

Japanese rms will have access to patent search and analysis services in Chinese provided
by IPOS International through IPCC. Similarly, various services such as prior art search in theJapanese language provided by IPCC will be available for rms in Singapore through IPOS
International.

Read the full article here

6. Government of Japan to Submit Candidature of Mr. NATSUME Kenichiro for Director
General of the World Intellectual Property Organization (WIPO)
https://mailchi.mp/7ed46dd32fd6/japan-ip-news-bulletin-december-2019?e=[UNIQID]

5/13

2020/2/14

Japan IP News Bulletin, December 2019

Ministry for Economy, Trade and Industry (METI), October 29, 2019

The Government of Japan has decided to submit the candidature of Mr. Natsume Kenichiro
for the next election of the Director General of WIPO, which will take place in Geneva,
Switzerland on March 5 and 6 in 2020.

As the Senior Director of the PCT Legal and International Affairs Department of WIPO, Mr.
Natsume is well-versed in information and communication technology (ICT). He is skilled insupporting emerging countries through intellectual property and is experienced in responding
to rapid advances being made in ICT and driving economic growth in emerging countries
through innovation.

The Government of Japan is committed to making every effort to gain the support from all
member states to ensure Mr. Natsume is elected to the position.

Read the full article here

7. India and Japan Signed a Pilot Programme for Expeditious Grant of Patents
Ministry of Commerce & Industry, November 21, 2019

On 20th November 2019, the patent o ces of India and Japan have inked a bilateral Patent
Prosecution Highway (PPH) Programme on a pilot basis for a three-year period, the Ministryof Commerce & Industry announced on its websites.

“PPH will lead to bene ts like reduction in disposal time and pendency of patent applications,consistency in quality of granted patents and an opportunity for Indian inventors including
MSMEs and Start-ups of India to get accelerated examination of their patent applications inJapan," the Ministry said in the statement.

Under this pilot programme on PPH, Japanese inventors seeking patent protection in India
will now be able to take the bene ts of expedited examination in India. It will also help Indian
startups in patenting in Japan.

https://mailchi.mp/7ed46dd32fd6/japan-ip-news-bulletin-december-2019?e=[UNIQID]

6/13

2020/2/14

Japan IP News Bulletin, December 2019

Read the full article here

8. Japan's Yoshino Wins Nobel for Lithium-ion Battery Breakthrough
Nikkei Asian Review, October 09, 2019

The 2019 Nobel Prize in chemistry has been awarded to a trio of scientists for thedevelopment of lithium-ion batteries, which is an important technology in creating a
rechargeable world and reducing reliance on fossil fuels that contribute to global warming.

Japan’s Akira Yoshino, a 71-year-old honorary fellow with Asahi Kasei Corporation and aprofessor at Meijo University in Nagoya, has been credited as one of the pioneers indeveloping the widely used power source along with American John Goodenough and Briton
Stanley Whittingham.

The three each had a set of unique breakthroughs that cumulatively laid the foundation forthe development of a commercial rechargeable battery.

Read the full article here

- IP Law Updates in Japan : Insights from Sonoda & Kobayashi 1.The JPO Further Clariﬁes Some Procedures in “Opposition to Grant ofPatent Proceeding
November 28, 2019
Author: Akira Fujii

1. Recent Updates in the Manual for Trial and Appeal Proceedings
Three years have passed since the installation of the new Opposition, and the JPO hasreviewed the practice and updated their "Manual for Trial and Appeal Proceedings" so as tomeet users' demands for procedures with timeliness and reliability.

https://mailchi.mp/7ed46dd32fd6/japan-ip-news-bulletin-december-2019?e=[UNIQID]

7/13

2020/2/14

Japan IP News Bulletin, December 2019

The update includes the following three points:
Improvement of contents in Notice of Reasons for Revocation (Chapter 67-05.1).
In principle, the second Notice of Reasons for Revocation is the Advance Notice of
Trial Decision (Chapter 67-05.5).
Adjustments in Ex O cio Proceedings (Chapter 67-05).

The users' demands in consideration include:
Further clari cation of the reasons for revocation;
An early indication of the decision; andOpportunity for Opponent's opinions even when Patentee does not le Request for
Correction.

In this article, the updates related to Ex O cio Proceedings will be explained.

2. Adjustments in Ex O cio Proceedings
The scope of proceedings is speci ed as follows.
(1) Subject of Proceedings
The subject of a proceedings is restricted to claims against which the Opposition has beenled (Article 120bis (2)).

(2) Proceedings Based on Reasons and Evidence for Opposition
The Opposition shall be examined based on reasons and evidence pleaded by the Opponent.

(3) Ex O cio Proceedings
Reasons that have not been pleaded by the Opponent may also be examined Ex O cio(Article 120bis (1)) and evidence that has not been pleaded by the Opponent may also be
adopted by the Panel.

The Panel should determine whether or not to implement Ex O cio proceedings, taking into
account the public interest, a possible delay due to Ex O cio examination of evidence, apossible nding of the truth as a result of the Ex O cio examination of evidence, etc.

Examples of using, by Ex O cio proceedings, reasons and evidence that have not beenhttps://mailchi.mp/7ed46dd32fd6/japan-ip-news-bulletin-december-2019?e=[UNIQID]

8/13

2020/2/14

Japan IP News Bulletin, December 2019

pleaded by the Opponent include: a combination of evidence, adoption of evidence that has
not been submitted by the Opponent; and a change of applicable provisions, etc.

When the Panel is about to adopt evidence that has not been submitted by the Opponent, theevidence must be very easily obtained by the Panel, such as:
Examination in the other jurisdiction;
Observation; andEvidence searched by the Panel (as long as the ease thereof is taken into account).

Meanwhile, the period for ling an Opposition is restricted to within six months from thepublication date of the patent, the Opposition has to contain a description of Reasons for
Request for Opposition, and Amendments to the Opposition are restricted. Therefore, any
document submitted with an Observation after the expiration of the period forling an

Opposition shall not be used as evidence except in the case where it is evident at a glancethat the document constitutes appropriate reasons for revocation.

As before, when the Remarks submitted by the Opponent substantially present new reasonsor evidence, said substantially new reasons or evidence shall not be adopted except for thecases: where the reasons arise pertaining to contents of the Request for Correction; or where
it is at a glance obvious that the reasons constitute appropriate reasons for revocation.

Finally, when Remarks without a Request for Correction have been submitted in response to anoti ed Reasons for Revocation, proceedings shall be conducted without giving the
Opponent an opportunity to submit Remarks, i.e. an opportunity to submit Remarks shall begiven to the Opponent when a Request for Correction has been led.

However, when the Patentee's arguments give rise to any question from the Panel regarding
the Reasons for Revocation, Interrogatory can be made to the Opponent.

3. Our Advice(1) Even after ling an Opposition, Observation including additional evidence is possible.
However, the Panel can take into account such evidence only when the evidence is easily
accessible and obviously constitutes an appropriate reason for revocation. This rule is also
applied for the evidence or reasoning argued in the Remarks that the Opponent submits in
response to the Request for Correction by the Patentee. Therefore, it should be necessary for
https://mailchi.mp/7ed46dd32fd6/japan-ip-news-bulletin-december-2019?e=[UNIQID]

9/13

2020/2/14

Japan IP News Bulletin, December 2019

the Observation and Remarks to indicate the satisfaction of these conditions.

If new evidence or reasoning is indicated in the Advanced Notice of Decision, i.e. the nal
Notice of Reasons for Revocation, it may be recommendable for the Patentee to argue that
the Observation or Remarks from the Opponent includes the evidence that is not easily
accessible or does not obviously constitute the appropriate reason for revocation.

(2) Even when the Patentee les Remarks without a Request for Correction in response to
the Notice of Reasons for Revocation, the Opponent may be entitled to submit a Petition to
Interrogatory if the Patentee's arguments in the Remarks give rise to any question from thePanel regarding the Reasons for Revocation. The Interrogatory may be aimed to clarify the
relationship between the reasoning in the Opposition Brief from the Opponent and thearguments in the Remarks from the Patentee. However, both Patentee and Opponent shouldcarefully consider this possibility.

2. How Eﬀective are Examiner Interviews in Japan?
November 28, 2019
Author: Paul Tokeshi

In Japan, it is commonly understood that patent prosecution is to be conducted through thesubmission of documents. In the interest of contributing to timely and accurate prosecution,
however, the JPO allows private interviews and telephone conferences between patentapplicants and examiners.

Lately, as some of our clients have inquired into the pervasiveness and effectiveness of
examiner interviews/calls, we investigated the academic literature and found a study fromFebruary 2014 from the National Graduate Institute for Policy Studies by Mr. Wataru Higuchithat provides some data on this question. Mr. Higuchi investigated patent applications led in
April, 2003 that eventually resulted in a nal decision of grant or rejection.

First of all, Mr. Higuchi found that the prosecution of the vast majority of the applications
studied did not involve an examiner interview/call, as only 2.1% of applications had a recordof an examiner interview, and 4.6% of applications had a record of an examiner call:https://mailchi.mp/7ed46dd32fd6/japan-ip-news-bulletin-december-2019?e=[UNIQID]

10/13

2020/2/14

Japan IP News Bulletin, December 2019

Second, Mr. Higuchi found that examiner interviews and calls are correlated with a reductionin the number of applications that receive a

nal examiner rejection but are eventually

granted upon appeal:

T
h
ir
d,

Mr. Higuchi found that conducting an interview/call after the rst o ce action is correlatedwith more o ce actions/rejections. For example, he found that for the population of
applications that were eventually granted, it took more o ce actions for the applications tobe granted:

https://mailchi.mp/7ed46dd32fd6/japan-ip-news-bulletin-december-2019?e=[UNIQID]

11/13

2020/2/14

Japan IP News Bulletin, December 2019

While this result may seem counterintuitive, Mr. Higuchi theorizes that interviews/calls arecorrelated with more o ce actions because (1) the increase in o ce actions is partiallycaused by the decrease in nal examiner rejections in cases that eventually receive a grant(see above), and (2) applicants may be behaving strategically in cases involving
interviews/calls to obtain the broadest claim scope possible such that more o ce actions
are issued.

Finally, based on the results of his study and input on average costs from the Japan Patent
Attorney Association and the JPO, Mr. Higuchi estimated that conducting an interview/callafter the rst o ce action is associated with a savings of 8,000 yen (~ $73 USD).

About

Contact

SONODA & KOBAYASHI is a law

rm offering

Shinjuku Mitsui Building Suite 3401

dependable

legal

intellectual

2-1-1 Nishi-Shinjuku, Shinjuku-ku,

property.

Our

servicesformultinational

team

Tokyo, Japanof about 90 experts in technology, law, languages〒163-0434

and international communication has served
companies worldwide and gained a reputation for

Main Line: +81-3-5339-1093

https://mailchi.mp/7ed46dd32fd6/japan-ip-news-bulletin-december-2019?e=[UNIQID]

12/13

2020/2/14

Japan IP News Bulletin, December 2019

thoroughness and reliability.
newsletter@patents.jp

Copyright © 2018 Sonoda & Kobayashi Intellectual Property Law. All rights reserved.
Want to change how you receive these emails?
You can update your preferences or unsubscribe from this list.

This email was sent to <<Email Address>>why did I get this? unsubscribe from this list update subscription preferences
Sonoda & Kobayashi Intellectual Property Law · Shinjuku Mitsui Building, Suite 3401 · 2-1-1 Nishi-Shinjuku · Shinjuku-ku, Tokyo 161-0434· Japanhttps://mailchi.mp/7ed46dd32fd6/japan-ip-news-bulletin-december-2019?e=[UNIQID]

13/13