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Japan, IP News Bulletin, February 2021

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February 2021
Contents
News about Sonoda & Kobayashi
1. Internal news: Sonoda & Kobayashi in 2021
JPO News
1. JPO Releases Handbook for Trial and Appeal in Japan
2. JPO Announces Formation of Support Team for AI-Related Patent Examination
3. Seals and Signatures of all Applicants no Longer Needed for Exception of Loss ofNovelty Submissions
Latest IP News in Japan
1. Nissan providing license free thermal imaging sensor technology to support ght
against COVID-19
2. Japan comes in 2nd worldwide in number of AI and big data
3. Brazil-Japan Patent Prosecution Highway further improved in 2021
4. JPO enables online attendance for patent appeal cases
5. Hermès won a trademark cases in a Japanese court over the 3D shape of one of its
iconic bags
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IP Law Updates in Japan: Insights from Sonoda & Kobayashi
1. Changes in Procedures at JPO triggered by COVID-19 Outbreak- News about Sonoda & Kobayashi 1. Internal News

Sonoda & Kobayashi in 2021
Sonoda & Kobayashi hopes that all our clients and contacts have been off to a good startin this new year. While in many countries, the Covid19 pandemic is far from over, we like tobe optimistic over some improvement later in this year.
In Japan and Tokyo in particular, the situation has worsened compared to the nal monthsof 2020. On the 7th of January 2021, the state of emergency was declared for Tokyo andother regions in the country. Despite the name, the present measures are not as strict as
those that many of our clients around the world may be facing right now. In practice,
Sonoda & Kobayashi has shifted even further to working from home, prompting our staff toonly make use of the o ce when really necessary.
Over the past year, Sonoda & Kobayashi has made signi cant improvements to its IT
infrastructure to allow for remote working for all its employees, while safeguarding its
systems. In 2021, we are continuing to streamline our procedures for remote work while
also improving e ciency.
Finally, in an effort to improve our service offer for our clients, we have reduced our prices
for English to Japanese translation, while also expanding our general translation services
to other areas outside of the realm of IP. Therefore our experts in translation andtechnology are now performing translation of legal, technical and marketing materials aswell as interpretation and assistance in communication between HQ and local entities.
Feel free to reach out for more information and we are looking forward to a fruitfulcooperation in this new year.

- JPO News 1. JPO Releases Handbook for Trial and Appeal in JapanThe JPO released in January the English version of the Handbook for Trial and Appeal in
Japan, which provides information on the Trial and Appeal Department of the JPO (“TAD”).
Speci cally, the TAD serves two major roles. First, the TAD handles appeals to determine
the appropriateness of a JPO Examiner's decision of refusal with respect to various forms
of intellectual property. Second, the TAD handles various intellectual property disputes
between parties (Oppositions, Nullity Actions, etc.), reviewing the validity of certain IP
rights.
Speci c information on this topic can be found here:
https://www.jpo.go.jp/resources/report/sonotahttps://mailchi.mp/fe7606a275ea/japan-ip-news-bulletin-february-2021?e=76ba65459e

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info/document/panhu/shinpan_gaiyo_e.pdf (English)
2. JPO Announces Formation of Support Team for AI-Related Patent Examination
On January 20, 2021, the JPO established an AI examination support team which works
across relevant examination divisions and their respective technical elds in order toaccumulate and share knowledge and examination examples of the latest AI-related
technology, and to study related patent examination measures. The purpose of this
support team is to improve the quality and e ciency of examination for AI-related
applications.
The responsible members of the AI examination support team will serve as a "hub" for theprosecution of AI-related inventions, consolidating the knowledge of each prosecution
division and providing consultation to Examiners, thereby helping to realize e cient andhigh-quality prosecution.
Speci c information on this topic can be found here:
https://www.jpo.go.jp/system/patent/gaiyo/sesaku/ai/ai_shutsugan_seibi.html(Japanese)

3. Seals and Signatures of all Applicants no Longer Needed for Exception of Loss ofNovelty Submissions
In Japan, inventions that have been made public before a patent application is led cannot
be patented. However, Article 30 of the Patent Law allows for an exception to the loss ofnovelty for applicants if they le for the exception within one year of the disclosure.
On December 16, 2020, the JPO announced that seals and signatures of all applicants will
no longer be required in the initial submission for the loss of novelty exception which must
be made within 30 days of ling of the initial patent application. Speci cally, no seals will
be required, but the written name of at least one individual (the name typed on a computersu ces) associated with one applicant will still be necessary.
The JPO’s announcement also includes a warning for practitioners. Even though the
exception for loss of novelty generally covers disclosures made by an applicant within one
year of the ling of a patent application, the JPO notes in an example that where (1) theapplicant discloses an invention in a paper presented at an academic conference, and (2) athird party discloses the invention following the applicant’s disclosure at the conference,
the applicant may not obtain a patent for the invention even if it les a patent applicant andapplication for the loss of novelty exception within one year of academic conference.
Speci c information on this topic can be found here:
https://www.jpo.go.jp/system/laws/rule/guideline/patent/hatumei_reigai.html (Japanese)- Japaese IP News 1. Nissan providing license free thermal imaging sensor technology to support ght
against COVID-19
https://mailchi.mp/fe7606a275ea/japan-ip-news-bulletin-february-2021?e=76ba65459e

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Japan Today, 5 January, 2021
On the 5th of January 2021, Japan Today wrote that Nissan is providing free licenses for
its thermal imaging sensor technology.
The contactless sensor uses infrared rays from an object or area to measure its
temperature. It can display the temperature distribution in an image of about 2000 pixels
and can be manufactured at a lower cost than conventional technologies.
The licenses were made available as part of the IP Open Access Declaration Against
COVID-19, which Nissan joined in May 2020. By joining this declaration, Nissan promised
not to strive for compensation or assert patent or other IP claims against companies that
use the invention for the ght against COVID-19.
So far, Japanese companies such as Chino Corp. and Seiko NPC Corp. are already using
these free licenses from Nissan in developing products such as non-contact temperature
measuring devices.
These measuring devices are then used to measure people’s temperature in places such as
schools, airports and medical facilities.
For more information, please see:https://japantoday.com/category/tech/nissan-licenses-technology-free-of-charge-tosupport-covid-19- ght
2. Japan comes in 2nd worldwide in number of AI and big data applications
Sankei Biz, 31 December, 2020
On the 31st of December 2020, Sankei Biz reported on a global survey conducted by theEuropean Patent O ce. The survey concluded that in 2018 Japan ranked 2nd in the worldin the number of patent applications in advanced IT-related elds, such as Arti cialIntelligence (AI).
With a total of 6679 applications Japan ranked behind the United States that led a total of
11927 applications. Meanwhile, as the number three, China had led 6307 applications.
While the survey shows that Japan holds an edge in R&D in this highly competitive eld, italso highlights that Japan has an issue converting this research into commercial services.
After all, most of the world’s biggest international IT companies are from the US and China.
The survey examined IP applications that were led in 2 or more countries between theyear 2000 and 2018 in the elds of AI, 5G, big data and the internet of things. When
comparing 2013 to 2018 we see that Japan has increased its ling number by about 1.9
times, whereas China increased its lings by 5.3 times.
Having a look at individual company applications, South Korea’s Samsung was the biggest
applicant in the period between 2010 and 2018. US company Qualcomm ranked 3th andChina’s Huawei was 5th. The highest Japanese entry was Sony at number 4.
Over the same period, cities and regions like Seoul, Tokyo, San Jose in Silicon Valley,
Osaka, and Shenzhen ranked highest as areas where patent lings were concentrated.
For more information please see:https://www.sankeibiz.jp/business/news/201231/bsc2012310620001-n1.htm (Japanese)
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Or read the report by the EPO here:
http://documents.epo.org/projects/babylon/eponet.nsf/0/06E4D8F7A2D6C2E1C1258639
00517B88/$File/patents_and_the_fourth_industrial_revolution_study_2020_en.pdf

3. Brazil-Japan Patent Prosecution Highway further improved in 2021
METI, 4 January, 2021
On the 4th of January, the Japanese Ministry of Economy, Trade and Industry (METI)
reported on the further improvement of the Brazil-Japan Patent Prosecution Highway.
What started as a trial between the Japanese and Brazilian patent o ces in 2017 hassince become a more developed patent prosecution highway that has signi cantly helped
Japanese companies speed up the process of acquiring patent rights in Brazil.
However, there was a limit to the number of applications that could be led through thishighway.
As of the 1st of January 2021, each applicant can now le 1 application per week throughthis system, instead of the previous maximum of 1 application per month.
Also, there is an upper limit for the total amount of applications (from both Japan andelsewhere) that can be led through a patent prosecution highway in Brazil each year.
This maximum number will now be increased from 400 to 600 applications per year.
Because of these changes, Japanese companies will be able to obtain the necessary IP
rights in Brazil to do business more swiftly.
For more information, please see:https://www.meti.go.jp/press/2020/01/20210104003/20210104003.html

4. JPO may enable online attendance for patent appeal cases
Nikkei, 23 December, 2020
On the 23rd of December 2020, Nikkei reported on a possible change regarding attending
the JPO’s patent appeal cases. The JPO may be going to allow parties to participate in theoral proceedings in patent invalidation actions online, instead of being obliged to go to atribunal for a physical hearing.

Related to this, the Japanese government will submit a bill in 2021 to amend the patentlaw. The current law states that trials must be open to the public to ensure fairness.
However the government is still deciding on whether to make this possible through theinternet.
The JPO also plans to set up a system to solicit opinions from the general public whenpatent infringement suits are led. The underlying reasoning for this is the growing
possibility that judges lack the knowledge to make decisions in areas of cutting-edge
technologies such as AI. A similar system has already been established in the US.
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For more information please see:https://www.nikkei.com/article/DGXZQODF232UD0T21C20A2000000 (Japanese)

5. Hermès won a trademark cases in a Japanese court over the 3D shape of one of its
iconic bags
The Fashion Law, 29 December, 2020
On the 29th of December 2020 The Fashion Law reported on a recent ruling in Japan’s IP
High Court regarding a trademark infringement case between French luxury goods
manufacturer Hermès and the Japanese handbag seller Tia Maria.
The case concerned the 3D shape of Hermès’ Birkin bag and the bag made and sold by Tia
Maria that was allegedly infringing on Hermès’ trademark.
Tia Maria had argued that there would be no potential confusion among customers,
asserting that the shape of its bags differ from those of Hermès, as do the prices at which
they are offered (10.000 US dollars vs 192-289 dollars). Tia Maria also claimed that
Hermès’ products are made of high-grade leather whereas its own are of synthetic leather,and that the product names and logos are clearly different.
The court held that Hermès’s 3D Birkin bag trademark was valid and serves to indicate thesource of the product and distinguish it from other brands. Given this, it found that Tia
Maria’s handbags consist of “almost the same three-dimensional shape as the [Hermès]
trademark”, and other features of the bag were also deemed to be similar.
Addressing Tia Maria’s arguments about the price, quality and product logo, etc. being
different, the court noted that to determine whether Tia Maria’s products are likely to cause
confusion and misunderstanding one needs to look at the “actual conditions of trade”.
This includes the existence of a resale market for Hermès’s Birkin bags.
In these resale scenarios, the court held that “the origin and product name may not be as
clear as [they are] for new products, and the transactions are conducted withoutsu ciently con rming the quality, product name, existence of logos, etc.”, and because ofthis “it is di cult to say that [Tia Maria’s] products and [Hermès’] products, etc. are clearly
distinguished by price, product quality, product name, and logo, because there are manycases (especially in the case of transactions on the Internet) where transactions are
conducted without su ciently checking the quality, product name, and existence of logos,
etc.”
Ultimately then, the court ruled that that given the actual conditions of trade, the shape of
Tia Maria’s bags are likely to cause misunderstanding and confusion with the Hermès
trademark.
Based on at least 100 sold bags between August 11, 2010 and February 14, 2018, Tia
Maria now has to pay Hermès about 27973 dollars in damages including legal fees.
For more information, please see below:
https://www.thefashionlaw.com/hermes-prevails-in-japanese-case-over-birkinhttps://mailchi.mp/fe7606a275ea/japan-ip-news-bulletin-february-2021?e=76ba65459e

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lookalikes-with-courting-pointing-to-resale-market-as-key-factor/- IP Law Updates in Japan: Insights from Sonoda & Kobayashi 1. Changes in Procedures at JPO triggered by COVID-19 Outbreak
In Japan, the COVID-19 outbreak was more or less under control last year. Recently,
however, the number of new positive cases of SARS-CoV-2 is dramatically increasing (morethan 5,000 positive cases are reported daily). Finally, the government declared a state of
emergency due to COVID-19 in the metropolitan area, including Tokyo, on January 7, 2021.
In this article, I present a rough overview of the recent changes in procedures at the Japan
Patent O ce (JPO) due to the COVID-19 outbreak, and the current condition of the JPO
and Intellectual Property High Court (IPHC).
Promotion of electronic procedures
The JPO has recommended ling documents electronically or by post, and not via thereception counter at the JPO, after the COVID-19 outbreak. In addition, the JPO has
stopped consultation at the reception counter. During the emergency period, the JPO
closes the reception counter, and we must le those documents that cannot beelectronically led, such as patent term extension applications, by post.
Before the COVID-19 outbreak, draft amendments and/or arguments were submitted to the
JPO Examiners by facsimile, which probably looks to many like an obsolete method. The
COVID-19 outbreak has pushed the JPO to switch their primary communication tool from
facsimile to e-mail. Now, the JPO recommends using e-mail to send draft amendments
and/or arguments to the Examiner.
Lastly, as you may know, in Japan, the use of a seal has long been the most credible
authentication process. The JPO had (until recently) required a seal for 797 procedures
performed by Japanese applicants. Now, the JPO requires a seal only for 33 procedures; in
74 procedures, a signature can be used as a substitute; and in 690 procedures, neither aseal nor a signature is necessary.
In addition, there is a change in the Exceptions to Lack of Novelty (grace period) procedure.
Previously, documents signed or sealed by the representatives of all applicants werenecessary, and the deadline was extremely tight. Now, signatures or seals have become
unnecessary.
Online Interview or Meeting
The JPO has had its own online interview system, but before the COVID-19 outbreak,almost no one used it (because it is inconvenient for both the Examiners and applicants).
After the outbreak, the JPO recommends an online interview. Moreover, the JPO recently
has allowed the Examiners to conduct interviews by Skype for Business etc., which will
make online interviews far more convenient. This may make it easier for foreign applicants
to take part in the interview, though an interpreter may be needed in that case.
With respect to telephone interviews, it seems that the Examiners cannot communicate byhttps://mailchi.mp/fe7606a275ea/japan-ip-news-bulletin-february-2021?e=76ba65459e

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telephone when they work at home.
On the other hand, courts had coincidentally started to hold (preparatory) meetings online
by using Microsoft Teams from the beginning of last February, before the COVID-19
outbreak. Now, the IPHC is holding online meetings more often.
Remedy of Lapsed Cases and Extension of Response Period
Under normal conditions, remedy of a lapsed case where the statutory deadline waspassed is very rarely allowed and requires a complex procedure with evidentiary
documents. In the current COVID-19 outbreak situation, remedy of a lapsed case where thedeadline was passed due to COVID-19 is likely to be allowed, and only simpler argumentswith no evidence are necessary in general.
Moreover, in a nullity action under normal conditions, extension of a period for responding
to the other party or the JPO is rarely allowed. However, in the current COVID-19 outbreaksituation, extension of a period due to COVID-19 is likely to be allowed.
Oral Proceedings at JPO and IPHCIn the rst emergency period in 2020, both the JPO and courts postponed oral proceedings
until the period ended. In this second emergency period in 2021, the JPO has postponedoral proceedings but the courts have maintained them. In any case, the COVID-19 outbreakhas, directly or indirectly, delayed all the proceedings of nullity actions and court cases.
For oral proceedings in nullity actions, the JPO is instructing all the parties (1) to wear amask, (2) to limit the number of the attendees to three on each side, and (3) to prevent any
person who is sick and/or who has a fever, or any person who has had close contact with a
COVID-19 patient within the last 14 days, from attending the proceeding.
The IPHC is more lenient, but it also requests the wearing of a mask and preventing any
person who is sick and/or who has a fever, or a person who has been in close contact witha COVID-19 patient, from attending the proceeding.
Working Condition of Examiners
The JPO has had a work-at-home program before the COVID-19 outbreak, but almost no
one utilized the program. After the COVID-19 outbreak, all the Examiners partly work at
home; two days of home-working and three days of o ce-working in a week appear to be
the most common pattern. During this second emergency period, the Examiners areworking at home more often.
The JPO announced on October 6, 2020 that one employee has tested positive for SARSCoV-2.
Less is known about the IPHC, but the judges are also working at home to some extent,
which was uncommon before the COVID-19 outbreak.
Conclusion
The COVID-19 pandemic had the unexpected result of streamlining many procedures at thehttps://mailchi.mp/fe7606a275ea/japan-ip-news-bulletin-february-2021?e=76ba65459e

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JPO (and IPHC), while the same pandemic has caused catastrophic damage to society andmany businesses.
I expect that the JPO will continue to streamline more and more procedures.
If you are interested in more details of the abovementioned changes in the JPO
procedures, you can nd details at the JPO website or our website, or you could also ask
us for more details.
Lastly, we hope that the COVID-19 pandemic abates and that things improve.

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