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May 2022
Contents
News about Sonoda & Kobayashi
1. Sonoda & Kobayashi attended the Nordic IPR Summit in Stockholm

JPO and CNIPA News
1. JPO releases 2022 Status Report
2. JPO announces 2022 Subsidy for Overseas IP litigation Cost Insurance forJapanese SMEs
3. New fees for patents, trademarks, and utility models applied beginning April 1,
2022
4. The Hague Agreement concerning the International Registration of Industrial
Designs entered into force in China
5. CNIPA reveals the state of China’s IP development in 2021
Latest IP News in Japan
1. What are the damages for copyright infringement by “fast films”? Toho,

Nikkatsu and other Japanese movie studios filed a lawsuit
2. University start-ups in Japan to receive government help to apply for patents
abroad
3. Japanese applicants rank third among EPO patent applications

4. Economic security law passed in Japan. Implementation of secret patents tohappen within 2 years
Latest IP News in China
1. Chinese Courts Handle More Than 640,000 IPR Cases in 2021
2. Huawei and SolarEdge sign a global patent licensing deal

IP Law Updates in Japan: Insights from Sonoda & Kobayashi
1. Improving patent prosecution through examiner interviews: how effective is it?

- News about Sonoda & Kobayashi 1. Sonoda & Kobayashi attended the Nordic IPR Summit in Stockholm
On April 26th and 27th, Sonoda & Kobayashi attended the Nordic IPR Summit in Stockholm.
It was a good occasion to listen to the interesting views of a various IP experts in real life
for the first time in a long while. Moreover, we were able to engage more deeply with
innovative companies from the Nordic region and beyond.
Looking to the future, we hope to be able to direct interact with many of our clients andbusiness partners in the coming months and years.

- JPO and CNIPA News 1. JPO releases 2022 Status Report
Every year in April the JPO publishes an extensive report on developments and trends
regarding IP protection at the JPO and beyond.
This year’s report includes various topics, starting with trends in intellectual property
protection in Japan and worldwide, to reports on examinations, trials and appeals, tointernational initiatives and ending with a short explanation of JPO support measures anda summary of recent law amendments.
The report notes that patent applications filed in Japan increased slightly from 288,472
applications in 2020 to 289,200 in 2021, perhaps reflecting a partial recovery from theimpact of the novel coronavirus crisis. A similar slight increase was also seen in thenumber of requests for examination for patent applications, as well as for patentregistrations.
For more information, please click here. (in English)
2. JPO announces 2022 Subsidy for Overseas IP litigation Cost Insurance for Japanese
SMEs
In July 2016, the JPO established the Overseas Intellectual Property Litigation Expense

Insurance Program to cover the expenses incurred by Japanese small and medium-sizedenterprises (SMEs) when they are sued for damages related to intellectual property rights
in foreign countries. For 2022, SMEs may purchase various packages providing insurance
in the event of overseas litigation, and ½ of the cost of the insurance would be covered by
the government.
For more information, please click here. (in Japanese)
3. New fees for patents, trademarks, and utility models applied beginning April 1, 2022
In accordance with the 2021 revision of the Patent Law, a number of fees have beenrevised beginning April 1, 2022. This includes an increase in patent registration andtrademark registration and annuity fees as follows.
For patent registration/annuities:

For trademark registration/annuities:

For more information, please click here. (in Japanese)
4. The Hague Agreement concerning the International Registration of Industrial Designs
entered into force in China
On the 5th of May 2022, CNIPA announced that the Hague Agreement Concerning theInternational Registration of Industrial Designs entered into force in China.
This means that Chinese industrial designers will now be able to apply for design
registration and protection abroad through the Hague System in a cost- and time-effective
manner. At the same time foreign rights holders can now also apply for design registrationin China through the Hague System.
The earliest version of the Hague Agreement was adopted nearly 100 years ago, onNovember 6, 1925, while the latest version (which is from 1999) was implemented on April
1, 2004. In recent years, the number of parties to the Hague Agreement has increased: asof 24 January 2022, there were 76 parties to the Hague Agreement, while in 1999 there
were only 67 parties, comprising 65 States and 2 intergovernmental organizations.
As a result of China's newly amended Patent Law officially coming into force last year on
June 1st 2021, the protection period of design was extended from 10 years (before theamendment) to 15 years, and the legal obstacles to joining the Hague Agreement werethus eliminated. Then in January of this year, with the approval of the State Council, China
officially joined the the Hague Agreement.
From May 5, 2022, applicants have been able to use the system to register users andhandle the international application business of design. It has been reported that on May
5, a total of 49 Chinese designers already submitted 108 international applications fordesign through the Hague System.
For more information, please click here. (in Chinese)
5. CNIPA reveals the state of China’s IP development in 2021
On April 27th 2022, CNIPA reported on their website about the press conference organizedby China State Council Information Office. During the press conference, the information
office presented the state of intellectual property development in China in 2021.

Among others, it was revealed that throughout 2021 a total of 696,000 invention patents
were granted.
Furthermore, the number of applications submitted by Chinese applicants through the
Patent Cooperation Treaty (PCT) reached 69,500, meaning it ranks first in the world for thethird consecutive year.
Moreover about 7.74 million trademarks have been registered and 5,928 international
registration applications have been received from Chinese applicants following the Madrid
treaty.
The examination cycle of invention patent was reduced to 13.3 months, and the average
examination cycle of trademark registration was stable at 4 months.
For more information, please click here. (in Chinese)- Latest IP News in Japan 1. What are the damages for copyright infringement by “fast films” ? Toho, Nikkatsu andother Japanese movie studios filed a lawsuit
NHK News Web, May 19 2022
On the 19th of May, NHK News Web published a news article on a recently filed lawsuit by agroup of 13 companies, among which were several major movie studios.
The companies sued 3 different individuals claiming that their copyrights have been
infringed and asking for 500 million yen (about 4 million USD) in damages.

The individuals had already been found guilty by the courts last year for violating Japan’s
copyright act by releasing the so-called “fast films”. These movies are 10 minute videos
with narration and subtitles that use footage from original full length films to reveal the plotof the movie.
Now, the group of 13 companies, which includes major studios Toho and Nikkatsu,
revealed that they filed a case with the district court in March of this year. At the press
conference in May, the attorney for the group, Mr. Hiroyuki Nakajima, indicated that people
should not be able to profit unfairly from the hard, creative work done by others. They want
to show that there is a serious penalty for doing so, and thereby deter future cases.
For more information, please click here. (in Japanese)
2. University start-ups in Japan to receive government help to apply for patents abroad
Nikkei, May 11 2022
On the 11th of May, Nikkei reported on Japanese university start-ups and their patent filings
abroad. In particular, as of this year a new governmental program will be established tosubsidize overseas patent applications of universities that want to commercialise theirproducts. It is hoped that this promotion of new industries will have continuous andpositive effects for the economy.
From an international perspective, the ratio of PCT applications filed abroad by universities
in Japan is low. Over the past 20 years, only 2.3% of Japan-originated PCT-filings abroadcame from universities. By contrast, in the USA universities make up 8%, in South-Korea
7.8% and in Singapore as much as 13.7%.
The article recognizes that applying for patents overseas could impose a heavy financial
burden on universities. It may be hard for smaller universities or start-ups to spend several
million yen (tens of thousands of dollars) on patent applications overseas.
Accordingly, the new subsidy will be targeted at paying half of the fees for patentapplication and translation abroad. Starting in summer 2022, the JPO will select about 100
eligible cases.
Earlier this year in March, Japan’s Ministry of Economy, Trade and Industry already releaseda model contract for start-ups that want to use technology from universities. This model
contract would offer a university stock acquisition rights and a framework for repayment,
in exchange for handing a technology over to the start-up. Mr. Tomoki Sawai, director at
WIPO’s Japan office, pointed out that “The more technology that originates from a
university, the more inventions that lead to subsequent applications, the more likely it is tohave an impact on the world. Technology that is widely used around the world requires
rights protection from a global perspective.”
For more information, please click here. (in Japanese)
3. Japanese applicants rank third among EPO patent applications
Nippon.com, April 14th 2022
On the 14th of April, news website Nippon.com reported on the patent filings at theEuropean Patent Office and particularly on the applications filed by Japanese companies.
In the year 2021, the EPO received a record 188,600 patent filings. Similar to previous
years, Japanese applicants came in with the 3rd most filings, after applicants from theUnited States and Germany. The total number of filings by Japanese applicants stood at
21,681, marking a 1.2% drop from 2020 and being the 3rd year in a row that Japaneseapplications have dropped.
Japanese companies filed a relatively high amount in the fields of electrical machinery,
apparatus and energy (1830 applications), digital communications (1417 applications) andfinally transport (1379 applications).
According to the EPO, the steady drop in Japanese applications may be due to the fact thatJapanese companies are generally strong in already established, more mature industries.
By comparison, they are however less active in the fields of digital and healthcaretechnologies, which have been the main drivers of growth in patent applications at the EPO
in 2021.
As for individual companies, the largest filer from Japan was Sony with 1465 applications
filed with the EPO, followed by Panasonic (781) and Hitachi (774).
For more information, please click here.
4. Economic security law passed in Japan. Implementation of secret patents to happen
within 2 years
Asahi Shimbun, May 11 2022; the Japan Times, May 11 2022
On the 11th of May, the Asahi Shimbun, as well as the Japan Times, reported on Japan’s
parliament, the Diet, passing a new economic security bill.
As already discussed in our November 2021 newsletter, this bill features 4 pillars:- strengthening supply chains for key materials and parts, such as semiconductors;- government oversight in the installation of vital equipment and computer systems in core
infrastructure to guard against cyberattacks;- Encouraging research and technological cooperation between the private and public
sectors;- Securing sensitive technological information in patents.
These measures are aimed at making sure that Japan’s domestic technology is well
protected and that critical supply chains are reinforced. Japanese firms that are active insensitive sectors or critical infrastructure would be subject to extra oversight.
In particular, a system of secret patents will be established whereby key technologicaldiscoveries can be kept secret, and are not revealed to the public as they usually are. Thisparticularly concerns patents that could have applications related to developing nuclear
weapons or military applications. The implementation of this section of the law will occur
within the next 2 years after publication.
For more information, please click here or here. (in English)

- Latest IP News in China 1. Chinese courts handle more than 640,000 IPR cases in 2021
Intellectual property court of the supreme people’s court of China, April 22 2022
On April 22, the Supreme People's court released a white paper on Chinese courts' IPRrelated judicial protection in 2021.
The white paper contained information about China’s IPR courts and the amount and typeof cases they have been handling. According to the paper, the courts are seeing an
increasing amount of IPR cases related to the internet, with more and more new andcomplicated legal issues involved.
As a result, the courts have been taking active measures to streamline the process ofhandling lawsuits and ease the burden of rights holders.
In total, all the courts across China handled 642,968 cases involving intellectual property
rights (IPR) in 2021, of which 601,544 were concluded, said an official with the country's
Supreme People's Court (SPC).
The number of cases handled has grown by 22.33 percent and the number of cases
concluded by 14.71 percent in comparison to 2020. In total, there were 895 cases inwhich punitive compensation was given as part of the sentence
For more information, please click here.
2. Huawei and SolarEdge sign a global patent licensing deal
Huawei, May 20 2022
On the 20th of May, Chinese telecom equipment giant Huawei announced that they had
signed a global patent licensing deal with SolarEdge Technologies, a photovoltaics
company headquartered in Israel.
The agreement is based on recognition of the companies’ overall innovation capabilities
and enables each party to use patented technology of the other side. The agreement
includes a cross-license that covers patents relating to each company’s products andgrants certain other rights. Additionally, the agreement will mean that pending patent
litigation between the companies will be settled, and Huawei and SolarEdge will end theirlitigation in Germany and China.
For more information, please click here. (in Chinese)- IP Law Updates in Japan : Insights from Sonoda & Kobayashi 1. Improving patent prosecution through examiner interviews: how effective is it?
During the months-long period between filing and grant or rejection, it is the duty of apatent attorney to best represent the interests of their client in front of the patent office.
Suggesting claim amendments, for example, is an important tool. Less commonly
considered however, is the topic of examiner interviews: a direct oral communication(usually by phone) between the attorney and examiner, in which part of the examiner’scomments regarding a patent application are discussed.
In some jurisdictions, particularly in the United States, evidence exists that examinerinterviews are correlated with reduced pendency time of an application, either by reducing
the number of office actions or through swifter abandonment of the application by theapplicant.
In Japan, calling the Japan Patent Office (JPO) examiner is certainly possible, though notexactly common practice. Could it nevertheless have beneficial effects for patent
prosecution? In this article, we briefly review some older evidence and look at some more
recent data.
Evidence from academic literature
Looking at Japanese academic literature, one article clearly examines the impact of
examiner interviews. Kou Higuchi’s 2014 study[1] uses data from the early 2000s to searchfor effects of telephone interviews. At this time, of almost 10,000 cases which wereanalyzed, about 95% of those had no interviews, and about 5% did. Interestingly, he foundthat for cases granted at the examination stage, after the 1st office action, nearly 68% of
non-interview cases were granted, whereas as only 58% of interview cases were granted.
Consequently, more applications were granted after the 2nd office action.
This result, shown in detail in table 1, shows us that for this data set, examiner interviews
do not show a correlation with reducing the number of office actions in Japan (and thereby
speeding up the examination).
Table 1: Data on number of Office Actions

Looking at the prosecution process by adding the appeal stage into the mix yielded asomewhat different picture. Higuchi found that for applications that were eventually
granted, only about 6.8% of applications where an interview took place received a decisionof rejection at the examination stage, thus necessitating an appeal. Conversely, for thosecases without a record of an interview, 13.1% received a decision of rejection at theexamination stage prior to grant. This suggests that, comparatively speaking, interviews
could help avoid a rejection at the examination stage, and reduce the number of
unnecessary appeals.
Taking into account factors such as attorney fees for doing interviews and the estimatedchange in the number of office actions and appeals, Higuchi estimates that interviews cansave the applicant about 8000 JPY per application in the prosecution process.

More recent data
Japanese patent prosecution has, however, not stood still since the early 2000s which isfrom when the above study took its data. Laws have changed, waiting times were reduced
and the JPO’s grant rate overall increased from around 50% of applications to around 75%
of applications.
We made a preliminary examination of nearly 1000 cases with an interaction record (応対記録) (which often, but not always, indicates an examiner interview) that were published in
January 2019. We particularly looked at the grant at the examination stage and found thatthe applications with an interaction record had a grant rate of 89.25%. If we compare thisto the general grant rate at examination stage of around 75% of applications, the differenceis stark. It may imply a positive effect of interviews on the chances of an applicationpassing the examination stage.
That said, we have to be careful not to read too much into this preliminary analysis. It isvery possible that other factors other than the examiner interview itself could lead to thisresult.
In conclusion, interviewing a JPO examiner about your patent case is still relatively
uncommon, but indications exist that while it may not speed up a case as seen in otherjurisdictions such as the United States, it could have a positive effect on the examination
stage grant rate.

[1] Concerning the Impact of Examiner Interviews and Telephone Correspondence on Patent Prosecution
Kou Higuchi, February 2014, National Graduate Institute for Policy Studies.
For more information, please click here. (in Japanese)

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