2020/12/1

Japan, IP News Bulletin, November 2020
View this email in your browser

November 2020
Contents
News about Sonoda & Kobayashi
1. Meet our Members

JPO News
1. JPO releases updated Examination Handbook for Patent and Utility Model
2. For the
3. JPO

rst time, the JPO grants a Design Patent for an Image

ling fees calculator for PCT applications where Japan is the receivingo ce has been updated
Latest IP News in Japan
1. Japan debating new law to protect intellectual property of plant growers tostop out ow of food products
2. Japan leads global battery race in terms of global patentlings

3. NTT Docomo on 6th place in 5G patent ranking, yet

nds them di cult tomonetize
4. Roche and Ono sign a licensing deal for immunotherapy drug
https://mailchi.mp/8277836776b9/japan-ip-news-bulletin?e=76ba65459e

1/11

2020/12/1

Japan, IP News Bulletin, November 2020

IP Law Updates in Japan: Insights from Sonoda & Kobayashi
1. How tole a patent in Japan. An interview from the Lawyer Monthly magazine

with Sonoda & Kobayashi’s Nicole Bigler- News about Sonoda & Kobayashi 1. Meet our members
An interview with Osamu William Yanaka, Technical Translator

After experiencing the consulting, localization and ISO industries, Osamu William Yanaka
joined the rm in November 2013.

Q1 : What brought you to Sonoda & Kobayashi?
I used to be in the localization industry managing localization (translation) projects of user’s
manuals. Sometimes I had to handle about 20 languages at a time. As I worked very closelywith technical writers, I started to study English technical writing myself. After acquiring
basic skills of technical writing, I gained the desire to advance further into technical writing
and technical translation. That is how I was lead to apply to Sonoda & Kobayashi.

Q2: What do you enjoy about working at here?
I enjoy working with my colleagues who are highly skilled professionals, and holding study
groups with them. It is also very exciting to be able to work on the most advanced
technology of the time.

Q3: Tell us one thing about yourself many people do not know?
I used to be in a punk rock band in my junior high school days.

Q4: What is your most memorable moment here?
We had a wonderful party for our 20th anniversary, with all our staff gathered together. It was
so nice to listen to Sonoda-san and our members when they gave their speeches. A memberof the translation group designed a wonderful logo for the 20th anniversary and received aprize for it. We even had a famous magician perform a magic show. It was such a great time.

Q5: Pick a Japanese word to describe the o ce and explain why.
⾼度な専⾨性と⾃由闊達な雰囲気
https://mailchi.mp/8277836776b9/japan-ip-news-bulletin?e=76ba65459e

2/11

2020/12/1

Japan, IP News Bulletin, November 2020

Literal translation of this phrase would be, “high expertise and free and open atmosphere”.
Sorry, this is not one word, but I think it describes our rm very well.

Q6: What is your favorite music to concentrate while working?
I like to listen to country, gospel, blues, and Jazz. American roots music makes me relax andconcentrate.

JPO News
1. JPO releases updated Examination Handbook for Patent and Utility Model
The JPO announced in late September the release of an English translation of the updated
Examination Handbook for Patent and Utility Model (“Examination Handbook”). The
Examination Handbook serves as an important resource for practitioners in Japan,
providing detailed guidance on a variety of topics in connection with the examination
process.

For example, applicants may nd the detailed, concrete examples regarding various issues
with respect to patentability to be useful (listed on page 113).

Speci c information on this topic can be found here:
https://www.jpo.go.jp/e/system/laws/rule/guideline/patent/handbook_shinsa/document/i
ndex/all_e.pdf (English)

2. For the rst time, the JPO grants a Design Patent for an Image
Advances in sensor and projection technology have made it possible for devices tooperate, and for the function of devices to be demonstrated, through the projection ofimages. As the usefulness of a product may largely be determined by its image projection
function, it has been decided that an exclusive right should be available for the design ofan image in order to stimulate innovation and strengthen the competitiveness of industry.
Accordingly, the Design Law was amended in 2019, and since April 2020, images could beprotected through design patents.

On November 9, 2020, the Ministry of Economy, Trade and Industry announced the rst
recordation of a design patent for an image. The applicant, Koito Manufacturing Co., Ltd.,obtained design patent 1,672,383 for images displaying vehicle information projected by avehicle.
https://mailchi.mp/8277836776b9/japan-ip-news-bulletin?e=76ba65459e

3/11

2020/12/1

Japan, IP News Bulletin, November 2020

Speci c information on this topic can be found here:
https://www.meti.go.jp/press/2020/11/20201109002/20201109002.html (Japanese)
3. JPO ling fees calculator for PCT applications where Japan is the receiving o ce has
been updated
Starting October 1, 2020, the JPO increased o cial fees for PCT applications where Japanis the receiving o ce. The online calculator for ling fees has been updated to re ect the
new fee structure.

Speci c information on this topic can be found here:
https://www.jpo.go.jp/system/process/tesuryo/jidou-keisan/kokusai.html (Japanese)- Latest IP News in Japan 1. Japan debating new law to protect intellectual property of plant growers to stopout ow of food products
Japan Times, 21 October, 2020

On the 21st of October, the Japan Times reported on a potential change in the law
regarding the intellectual property of seeds and saplings.

As Japanese agricultural exports, and particularly those of fruits, have increased over the
past years, many of the registered seeds and saplings have also left the country. A survey
conducted in July by the Japanese Ministry of Agriculture, Forestry and Fisheries foundthat a signi cant number of domestically registered seeds and saplings are being soldwithout permission on Chinese and Korean-language websites.

There were some 36

different product varieties such as strawberries, apples, grapes, peaches, pears andcherries. Some of these were developed by agricultural research laboratories or individuals
in Japan, or registered in prefectures across the country.

The laws currently in place do not safeguard against taking the proprietary agricultural
products out of the country. The main concern is that when newly developed agricultural
products become popular or pro table, they would be taken elsewhere in violation of theowner’s IP rights.
The government therefore is seeking a partial revision to protect new plant varieties and IP
rights of Japanese growers.

https://mailchi.mp/8277836776b9/japan-ip-news-bulletin?e=76ba65459e

4/11

2020/12/1

Japan, IP News Bulletin, November 2020

The main points of debate when it comes to changing the law are as follows:
The holder of the plant breeder’s right will be able to set speci c conditions forregistered seeds or saplings. These could include a speci cation that they are fordomestic use only, or only to be cultivated in a speci c prefecture.
Farmers wanting to use the seeds or seedlings of harvested materials would need toget approval from the right’s holder. Presently, such a requirement does not exist.
Offenders could get up to 10 years in prison as well as a ne of max. 10 million yen(individuals) or 300 million yen (businesses) when found guilty of selling registeredagricultural products against the law.

The opposition against the proposed amendments mainly centers around the 2nd proposal.
While many Japanese farmers traditionally support the ruling Liberal Democratic Party, alarge number of them is upset by this measure. They state that in practice, they will have tobuy new seeds every year instead of using seeds and saplings from the previous harvest.
This will drive up costs and lead to higher prices.
Members of opposition parties have also voiced their doubts, stating that strengthening
border controls would be more effective in preventing the products from illegally leaving
the country.
They are afraid that only large corporations will bene t from this proposal as they could
absorb the costs easier than smaller farmers.

The minister of agriculture has so far insisted that the amendments would only apply to
newly developed products, and that therefore common seed varieties would have norestrictions on their use. However, confusion has mounted over this change and further
debate in the Diet is scheduled.

https://www.japantimes.co.jp/news/2020/10/21/national/social-issues/japan-illicitout ow-food-products/ (English)

2. Japan leads global battery race in terms of global patent lings
Nikkei Asia, 23 September, 2020

Nikkei Asia reported on the 23rd of September on international patent lings for battery
technology and the role of Japan.
https://mailchi.mp/8277836776b9/japan-ip-news-bulletin?e=76ba65459e

5/11

2020/12/1

Japan, IP News Bulletin, November 2020

A joint study by the European Patent O ce and the International Energy Agency shows thatin 2018 there were 2339 international patent applications on inventions related to batteries
published by Japan. Number 2 in the ranking, South Korea, produced 1230 applications.
Both countries were followed by the EU, China and the US respectively.

Within the top 10 applicants for the 2010 – 2018 period, there were 7 Japanesecompanies, among which Panasonic, Toyota and Hitachi. The number one place went toSouth Korea’s Samsung Electronics however.

In general, battery-related innovation has grown strongly over the past 2 decades. Whenlooking at electricity storage inventions (most of which relates to batteries), there were7152 published inventions in 2018, compared to 1029 in the year 2000.
Lithium-ion cells play a large role in the innovation of battery cells, and made up some 45%
of patent activity in this eld in 2018.
While Japan is leading in this industry, it lags behind when it comes to electric vehicles,
one of the primary uses of such battery cells. While China accounted for half of the global
production of electric vehicles, Japan is only at 2%. The report therefore concludes that
"Japan's leadership in battery technology has not yet translated into a large share of the
global electric car market."https://asia.nikkei.com/Business/Technology/Japan-leads-battery-tech-race-with-athird-of-global-patent- lings (English)

3. NTT Docomo on 6th place in 5G patent ranking, yet nds them di cult to monetize
Nikkei, 20 October, 2020

NTT Docomo announced in April of this year that it has taken the 6th place in the ranking ofcompanies holding 5G patents. The company is competing with Samsung and Qualcomm
from South-Korea and the US respectively.

In terms of 5G standard patents, the top 6 companies are neck-and-neck all having a shareof about 10%. At the end of June 2020, Docomo’s share was 9,5% on a list that is led by
Samsung Electronics with 11,9%, followed by Qualcomm at 11,6%, and Huawei at 11,3%.
5G technologies must be declared to an international mobile phone standards body. In thislist, Docomo is currently 9th when it comes to patents declared as essential to thedevelopment of 5G.
https://mailchi.mp/8277836776b9/japan-ip-news-bulletin?e=76ba65459e

6/11

2020/12/1

Japan, IP News Bulletin, November 2020

Giving an example of such patents, Docomo has technologies that can combine 4G and 5G
to provide a stable communication. Shinji Ogawa, Docomo’s General Manager of IP, saysthat “from the standpoint of providing services to consumers, we can propose patents thatare close to our daily lives.”

However, it is unclear how Docomo can monetize its essential 5G patents. Generally,
companies with many patents in this eld increase revenue by selling patents and user
rights for base stations and handheld devices. Yet Docomo’s patents are mainly for
wireless communication which are more di cult to monetize. While Docomo has earned
revenue by selling licenses for its 5G patents to other companies, it nds that as licensing
revenue increases, its operating revenue decreases.

In the race to 5G, in which Chinese companies such as Huawei are on the rise, it will benecessary for Docomo to create R&D synergy with NTT, which is its full owner. According
to Docomo “cooperation within the group is the challenge for the future”.

https://www.nikkei.com/article/DGXMZO65232550Q0A021C2X12000/ (Japanese)

4. Roche and Ono sign a licensing deal for immunotherapy drug
Nikkei, 9 November, 2020

On the 9th of November, Nikkei reported on a licensing deal that was signed between
Roche and Ono Pharmaceutical for a cancer-related drug.

The deal involves the global licensing of the anti-PD-L1 antibody from Ono Pharmaceuticalto Roche. While Ono holds the patents for this antibody, Roche is using it for its
immunotherapy drug “Tecentriq”. The anti-PD-L1-antibody is able to block the binding of acancer cell protein called PD-L1 to the receptors on an immune cell called PD-1.

As part of the contract, Roche will make a onetime lump sum payment to Ono
Pharmaceutical but will also pay royalties according to the worldwide Sales of Tencentriq
between January 2020 and December 31st 2026.

https://www.nikkei.com/article/DGXMZO65998500Z01C20A1LKA000/ (Japanese)

https://mailchi.mp/8277836776b9/japan-ip-news-bulletin?e=76ba65459e

7/11

2020/12/1

Japan, IP News Bulletin, November 2020

- IP Law Updates in Japan : Insights from Sonoda & Kobayashi 1. How to ﬁle a patent in Japan. An interview from the Lawyer Monthly
magazine with Sonoda & Kobayashi's Nicole Bigler
Below, we speak to Nicole on ling patents in Japan. She discusses the ling requirements,
how appeals are often a good route if the patent is rejected and potential issues that
foreign companies come across and how to avoid them.

What are the ling requirements for patents in Japan?
Since 2016, a Paris route application may belanguage.

When a Paris route application istranslation must be

led either in Japanese or any otherled in a foreign language, a Japanese

led within 16 months from the priority date, and mistakes in thetranslation may be recti ed by Amendments (during the patent prosecution procedure) or
Corrections (after the grant of a patent).
A Japanese application may be led with a copy of the speci cation, drawings, and thefollowing information:
Priority right date and country;
Priority application number (if assigned);
Name and address of inventor(s);Name and address of assignee(s).
If the PCT route is chosen, then the PCT application led in its original language is thebasis of the examination. Mistakes in the translation may be recti ed under the same
conditions as described in connection with the Paris route applications led in a foreign
language. In case of a PCT application, the applicant only needs to provide the application
number to its counsel in Japan, as all other information can be obtained from the PCT
publication.
What issues do foreign companies run into when trying tole a patent in yourjurisdiction?
International companies are often not familiar with the Japanese practice, which makes it
important to have a close relationship with the local Japanese counsel so that an optimalprosecution strategy can be developed together. In practice, this is, however, not always
easy due to language and communication barriers. It is, therefore, important to choose acounsel willing to communicate openly and frequently, going beyond simply providing
basic services inling and o ce action reporting but providing holistic support in

optimising the Japanese IP strategy.

https://mailchi.mp/8277836776b9/japan-ip-news-bulletin?e=76ba65459e

8/11

2020/12/1

Japan, IP News Bulletin, November 2020

The following are two examples of aspects of the Japanese patent prosecution system
where foreign applicants frequently do not get enough information or support from theirlocal counsel:
Examiner Interviews
Though examiner interviews (in person, by phone or online) have existed for a long time in
the Japanese practice, most counsel are hesitant to include them into their prosecution
work. Our experience and statistics have, however, shown that an applicant can
substantially reduce the number of issued o ce actions and increase their overall patentapplication grant rate by including examiner interviews to their best practice in Japan.
Appeal against Examiners Decision to Reject and Application
Another good example is the use or non-use of the appeal against the examiner’s decisionsystem.
International applicants are often not aware of how to bene t best from the appeal
proceedings in Japan as they are not aware of the high success rate, low cost and shortduration of the system.
One surprising aspect of Japanese patent prosecution is that the criteria for patentability
seem to be lower if one goes further in the examination. That is, when an application isrejected by the examiner and if one les an appeal to the Board of Appeals, the successrate is 68% (as of 2019). If the Board of Appeals rejects the application, and the case isappealed to the IP High Court, the success rate is still approximately 20- 30%.
These statistics indicate that an applicant still has a chance even if their application isrejected. Approximately 75% of applications rejected by the examiner are granted either by
the Board of Appeals or by the IP High Court.
Applicants might also hesitate to le an appeal fearing the cost and long pendency. Neitherof this is however justi ed since the costs for ling an appeal are in between 3,000 – 4,000
USD, including professional and o cial fees. The average pendency for an appeal is 12.3
months (as of 2019).
What important points must foreign businesses operating in Japan consider whendeveloping or managing their technology development?
Employee remuneration
In April 2016, an important change to Japanese patent law was made regarding ownershipof employee inventions. Under the new law, a company is permitted to establish company
rules which rule that all employee inventions are owned by the employer. To bene t fromthis provision, it is important that companies establish rules on ownership and on
https://mailchi.mp/8277836776b9/japan-ip-news-bulletin?e=76ba65459e

9/11

2020/12/1

Japan, IP News Bulletin, November 2020

remuneration for employee inventions as early as possible because otherwise, the inventor
is presumed to own the invention unless the company proves the assignment of thepatent.
What further considerations must be made when acting jointly with Japanese
corporations?
Crucial and, at the same time, tricky, is to keep smooth communication between thepartner corporations. If a strong relationship exists with the Japanese counsel it might be agood idea to include them in the form of interpreters or as cultural bridge builders.
It is also important that the Japanese corporation has updated its employee invention rules
as described above and is taking possession of employee inventions to avoid potential
problems in regard to ownership of a jointly developed invention.
In the above, what issues can arise if there is a dispute about the ownership of IP
between a Japanese corporation and a non-Japanese company?
Problem 1: Which country’s law on IP ownership applies?
Problem 2: Which country’s rule on picking the right country’s law applies?

You can nd the full interview on the website of Lawyer Monthly as well:
https://www.lawyer-monthly.com/2020/08/how-to- le-a-patent-in-japan/

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

thoroughness and reliability.
newsletter@patents.jp

Copyright © 2020 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.

https://mailchi.mp/8277836776b9/japan-ip-news-bulletin?e=76ba65459e

10/11

2020/12/1

Japan, IP News Bulletin, November 2020

This email was sent to iad@patents.jp
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/8277836776b9/japan-ip-news-bulletin?e=76ba65459e

11/11