2020/2/14

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

February 2020
Dear Valued Clients and Colleagues,
A brand new year, a fresh starting point, and many opportunities ahead!
We want to take this opportunity to thank you for your support and trust and wish youprosperity and success in 2020.

Contents
News about Sonoda & Kobayashi
1. Welcoming our Newest Addition to the Engineer Team

Latest IP News in Japan
1. Muji Lost Trademark Appeal to Chinese Firm
2. Fuji lm Weighs Buying Hitachi's Medical Equipment Business
3. Japan Strengthens IP Protection for Wagyu
4. New Digital Filing System for Industrial and Product Safety Laws Introduced
5. New Support Page Opens on the JPO Website to Assist Personnel in Charge of IP
6. IP5 Hold Joint AI Response Meeting
7. Japan to Develop 6G Strategy

IP Law Updates in Japan: Insights from Sonoda & Kobayashi

https://mailchi.mp/a0fa9309e77d/japan-ip-news-bulletin-february-2020?e=76ba65459e

1/16

2020/2/14

Japan IP News Bulletin, February 2020

1. Patent Term Adjustment (“Extension of Patent Term as Compensation for the

Curtailment of the Term") in Japan
2. Comparing Patent Validity Standards in Invalidation Actions at the EPO and JPO- News about Sonoda & Kobayashi 1. Welcoming our Newest Addition to the Engineer TeamWe would like to introduce our new addition to the Electronics, Machinery & Software
Department, David Wynne.

David worked as an examiner at the United States Patent and Trademark O ce for four
years before joining Sonoda & Kobayashi. He also obtained three bachelor's degrees fromthe University of Colorado at Boulder.

See David Wynne’s pro le here.

- Latest IP News in Japan 1. Muji Lost Trademark Appeal to Chinese Firm
South China Morning Post, December 11, 2019Japanese retailer Muji has lost on appeal, a Chinese court ruling that the company
infringed on a trademark owned by a Chinese company. China's Supreme People's Court inBeijing upheld the ruling, ordering Ryohin Keikaku to pay 626,000 yuan, or about 90,000
dollars, to the plaintiff.

Muji registered its international brand name "MUJI" in block Roman alphabet letters when it
entered the mainland China market in 2005. It also registered a local trademark, "Mujirushi
Ryohin", in four Chinese characters which are pronounced "Wuyinliangpin" in Mandarin.

https://mailchi.mp/a0fa9309e77d/japan-ip-news-bulletin-february-2020?e=76ba65459e

2/16

2020/2/14

Japan IP News Bulletin, February 2020

However, Chinese company Hainan Nanhua had already registered the Chinese character“Wuyinliangpin” trademark for some of its woven fabric products, including bed covers andtowels, in 2001. The trademarks of the two companies in Chinese character are
substantially similar: 無印良品 (Muji) vs ⽆印良品 (Natural Mill).

The Chinese company sued Muji for breach of the trademark. An intellectual property court
in China ruled in the plaintiff's favor in 2017.

The ruling has beennalized as China has a two-trial system for cases involving

trademarks. It bans Muji from using its Mujirushi Ryohin brand name for certain products
in China.

Muji is far from the rst global brand to fall victim to China’s “ rst come, rst serve” systemof trademarks. In 2016, a Chinese company won the right to sell leather products labeled“IPHONE” via a similar technicality, where a Chinese company won the right to sell leather
products labeled “IPHONE”.

Read the full article here

2. Fuji lm Weighs Buying Hitachi's Medical Equipment Business
The Japan Times, January 20, 2020

The Japanese photocopier and camera manufacturer Fuji lm is reportedly consideringbuying Hitachi’s diagnostic imaging business. The value of the deal would be around 170
billion yen ($1.56 billion), according to the Reuters.

Fuji lm has been expanding into healthcare as its legacy photocopy business isstagnating. It recently bought a drug-making business from U.S.-based Biogen Inc and twobiotechnology units from compatriot JXTG Holdings Inc.

A Fuji lm spokeswoman has con rmed that the company is exploring the deal.

https://mailchi.mp/a0fa9309e77d/japan-ip-news-bulletin-february-2020?e=76ba65459e

3/16

2020/2/14

Japan IP News Bulletin, February 2020

Read the full article here

3. Japan Strengthens IP Protection for Wagyu
The Japan Times, January 20, 2020

According to The Japan Times, the agriculture ministry will propose legislation to protect
the genetic material of Japanese cattle as intellectual property, preventing the smuggling
to other countries of genetic materials, such as fertilized eggs and semen, related to wagyu
cattle.

Wagyu refers to the premium Japanese beef produced from four Japanese cattle breeds,
including Kobe, which has grown popular in the United States, Europe and Asia.

As breeding outside Japan will harm exports by Japanese breeders, the envisioned law willde ne the genetic features of wagyu as IP and will allow injunctions against reselling,
siphoning and breeding them without proper contracts.

The ministry plans to submit a bill to an ordinary session of the Diet.

Read the full article here

4. New Digital Filing System for Industrial and Product Safety Laws Introduced
Ministry for Economy, Trade and Industry (METI), January 6, 2020

The Ministry of Economy, Trade and Industry (METI) introduced its newly developed digitalapplication ling system, called “Safety Portal Website” on its website.

The new digital application ling system will enable users to le applications online forcompleting procedures under the laws and regulations for industrial and product safety
involving electricity, lique ed petroleum gas, city gas, explosives, mining and productsafety.

The METI also mentioned the following advantages brought by the new ling system:

https://mailchi.mp/a0fa9309e77d/japan-ip-news-bulletin-february-2020?e=76ba65459e

4/16

2020/2/14

Japan IP News Bulletin, February 2020

Users are able to submit documents on this website and cut traveling time, postal
fees and other costs.
Using their own gBizID, they are able to skip the a xing of seals on paper
documents and skip the exchange of such documents.
Using the guide functions, they are able to easily enter their information and reducethe burden from formality checks.
They are able to timely con rm on a screen the progress in processing thenoti cations and applications that have been submitted or led.
They are able to smoothly submit and le new noti cations and applications using
their submission histories.
They are able to con rm notices of approval soon after METI has issued them anddownload and print out the notices in PDF format.

It is noted that users will need to obtain a gBizID account in advance in order to access theportal website. The relevant information can be found on the gBizID website.

Read the full article here

5. New Support Page Opens on JPO Website to Assist Personnel in Charge of IP
Ministry for Economy, Trade and Industry (METI), January 14, 2020

The Japan Patent O ce (JPO) opened a “Supportive Website” on its website on January
14th, aiming to assist personnel in charge of intellectual property (IP) who are struggling
with IP procedures or with little experience in ling applications.

In particular, this webpage provides information on how to advance IP procedures if theusers receive a noti cation from the JPO. Applicants will receive various noti cations, suchas noti cation of reasons for refusal and a decision to grant. The Supportive Website
explains the details of noti cations, and describes the next step that they should take inaddressing such noti cations in an easy-to-understand manner.

Another handy feature is that users can easily access the webpage through theirsmartphones. In addition, the JPO will also add a QR code* to the Note section attached to
the noti cation of reasons for refusal and the decision to grant from April 2020, which will
help applicants access the webpage smoothly.
https://mailchi.mp/a0fa9309e77d/japan-ip-news-bulletin-february-2020?e=76ba65459e

5/16

2020/2/14

Japan IP News Bulletin, February 2020

Read the full article here

6. IP5 Hold Joint AI Response Meeting
European Patent O ce, January 17, 2020

Representatives of the ve largest intellectual property o ces, known as the “IP5”, met in
Berlin in order to better coordinate their response to AI and emerging technologies.

The “IP5” are the European Patent O ce (EPO), the Japan Patent O ce (JPO), the KoreanIntellectual Property O ce (KIPO), the China National Intellectual Property Administration(CNIPA) and the United States Patent and Trademark O ce (USPTO). Together, they handle
about 85% of the world’s patent applications.

The meeting explores the “legal, technical and policy aspects of new technologies and AI,
their impact on the patent system and on operations at ourve o ces,” an o cialstatement noted.

“The aim is to pinpoint which areas can most bene t from joint IP5 responses, ranging
from employing AI to improve the patent grant process, to applying the patentability
requirements to inventions in theeld of AI, and handling applications for inventions

created by machines”, according to the EPO statement.

Read the full article here

7. Japan to Develop 6G Strategy
The Japan Times, January 21, 2020

The government said Tuesday it will draw up a comprehensive strategy by this summer on
future 6G wireless communications networks and set up a panel to discuss the matter
later this month, according to The Japan Times.

Japan is reportedly planning to introduce 6G ultra-fast communications networks around2030. As some other countries have already started discussions on how to utilize 6G
https://mailchi.mp/a0fa9309e77d/japan-ip-news-bulletin-february-2020?e=76ba65459e

6/16

2020/2/14

Japan IP News Bulletin, February 2020

technology, Tokyo aims to draft the strategy and lead standardization efforts.

“The smooth introduction of standards for next-generation wireless communications
networksisindispensable

toboosting

Japan’sinternational

competitiveness,”

communications minister Sanae Takaichi said at a news conference.

Compared to 5G networks, 6G networks will have faster data transmission speeds, theability to connect to multiple devices simultaneously on a larger scale, as well as extensive
security measures and reduced power consumption.

The panel on 6G technology, composed of representatives of the private sector anduniversity researchers, will discuss technological development, potential utilization
methods and policies, according to the Internal Affairs and Communications Ministry.

Read the full article here

- IP Law Updates in Japan : Insights from Sonoda & Kobayashi 1.Patent Term Adjustment (“Extension of Patent Term as Compensation for
the Curtailment of the Term") in Japan
January 17, 2020
Author: Toshiyasu Ishioka

1. BackgroundIn accordance with the Comprehensive and Progressive Agreement for Trans-Paci c
Partnership (TPP11), a patent term extension system to compensate for patent term
curtailment was introduced in Japan (Japanese Patent Law Articles 67 (2) and (3)).

For convenience, this particular type of patent term extension will be referred to as “patentterm adjustment (PTA)” in this newsletter, after the style of the similar patent term
extension system at the USPTO.

https://mailchi.mp/a0fa9309e77d/japan-ip-news-bulletin-february-2020?e=76ba65459e

7/16

2020/2/14

Japan IP News Bulletin, February 2020

This system will apply to applications (internationally) led on or after March 10, 2020.

2. Procedures and System

To request PTA, patentee(s) need to calculate the term to be extended and le a PTA
application at the JPO within three months from the patent registration date. This isdifferent from the PTA system at the USPTO, in which the term is calculated and extended
automatically.

Patents eligible for term extension under this system are those registered after the“reference date” , i.e., either the date ve years after ling or the date three years after
request for examination, whichever is later (Japanese Patent Law Article 67 (2)).

The extension is calculated on the basis of the reference date2 and the patent registration
date, i.e., the period therebetween, from which several periods de ned by the patent law
are deducted (Japanese Patent Law Article 67 (3)). In particular, the following deductible
periods are of practical importance:

From the issuance date of an Amendment Order or an order to correct a defect tothe date of ling of a response thereto. (Art. 67 (3) i)
The extended period to le a response to an o ce action. (Art. 67 (3) ii)
From the issuance date of a Decision of Rejection to the issuance date of a Decision
to Grant, in the case of allowance during appeal examination or during preliminary
examination prior to regular appeal examination. (Art. 67 (3) vii)

Once a PTA application is led, the JPO will, upon examination, issue an o ce action or
allowance. In response to the o ce action, the PTA applicant can le Remarks and/or
Amendments of the PTA application (e.g. changing the requested term to be extended). If
the examiner thinks the rejection remains applicable, the examiner will issue a Decision of
Rejection, against which an appeal can be led. This examination process is completely
the same as that for a regular patent application.

Reasons for rejecting PTA applications are as follows:(1) The registration date is before the reference date2.
(2) The requested term is longer than the legally allowed term.
https://mailchi.mp/a0fa9309e77d/japan-ip-news-bulletin-february-2020?e=76ba65459e

8/16

2020/2/14

Japan IP News Bulletin, February 2020

(3) The applicant(s) of the PTA application are not completely identical to the patentee(s).

3. Expected frequency and length of extensions

How frequently (and of what duration) can extensions be obtained under this PTA system?

Unfortunately, the answer is almost never in view of the current statistics which will be
explained below

Taking into account the deductible periods (i) to (iii) explained in Section 2, allowable
extensions can be expressed roughly with the following equations:

In the case of allowance during non-appeal regular examination, after the reference
date2:

Extension = (period from the reference date to the patent registration date) – [(period to
respond to an Amendment Order) and (extended period to respond to an o ce action)]In the case of allowance during preliminary examination prior to appeal or during
appeal, after the reference date2:

Extension =(period from the reference date2 to the issuance date of the Decision to Grant, given thatthe Decision of Rejection was issued after the reference date2) + (period from the issuancedate of a Decision to Grant to the patent registration date) – [(period to respond to an
Amendment Order) and (extended period to respond to an o ce action)]In the case of (A), a rst o ce action is issued about ten months on average from request
for examination, according to the JPO statistics. The statutory response period for ano ce action is three months (for overseas applicants). The remaining 23 months are
su cient for the JPO to issue a second or even a third o ce action. That is, situation (A)would be very improbable.
In fact, among the 4,360 patented cases we handled in which a request for examination
https://mailchi.mp/a0fa9309e77d/japan-ip-news-bulletin-february-2020?e=76ba65459e

9/16

2020/2/14

Japan IP News Bulletin, February 2020

was led after 2013, only three cases would fall under (A), the extensions being 26 days, 1month 10 days, and 4 months 1 day.

Next, case (B) is also very rare. Among the 4,360 patented cases above, only one casewould fall under (B), the extension being 20 days.

In summary, out of the 4,360 patented cases in which a request for examination was led
after 2013, only four cases could be extended, by 20 days, 26 days, 1 month 10 days, or 4months 1 day. The frequency is 0.09%, and the average and the mean extension is 52 daysand 33 days, respectively.
In two of the four cases, o ce actions were issued four times (three non- nal and onenal), and in the other two cases, o ce actions were issued three times, during the nonappeal examination stage (which are very rare).

Finally, the JPO will likely take the necessary precautions so as not to delay examination toallow patent term extension under this PTA system in the future. Examiners may issue
fewer o ce actions. In reality, if the JPO accelerates the examination of delayed cases by
only about one month (the allowable extension in three of the four cases above is about
one month at most), almost no cases will be eligible for this system.

4. Conclusion

A new patent term adjustment system was recently introduced in Japan, however, thesystem will likely be of no practical use. The proportion of cases which can be extended is
expected to be less than 0.1%, from test calculations based on cases we handled.
Moreover, the JPO can easily (and will probably) accelerate examination (for delayedcases, in particular) to avoid this system entirely.

Thus, for now, we see no need to be overly concerned about PTA in Japan.

If the situation changes, we will update the situation in our newsletter.
For divisional applications, the ling date of the parent application will be used as the lingdate of the divisional application.
Either the date ve years after ling or the date three years after request for examination,
whichever is later. In most cases, the reference date will be the date three years after
request for examination.
https://mailchi.mp/a0fa9309e77d/japan-ip-news-bulletin-february-2020?e=76ba65459e

10/16

2020/2/14

Japan IP News Bulletin, February 2020Three years (using, as the reference date, the date three years after request for
examination) minus ten and three months.

Note:
1. For divisional applications, the ling date of the parent application will be used as theling date of the divisional application.

2. Either the date ve years after ling or the date three years after request for examination,
whichever is later. In most cases, the reference date will be the date three years after
request for examination.

3. Three years (using, as the reference date, the date three years after request for
examination) minus ten and three months.

2. Comparing Patent Validity Standards in Invalidation Actions at the EPO
and JPO
February 12, 2020
Author: Alison Santino, Paul Tokeshi, Yoshitaka Sonoda

In Japan, two ways are offered to interested parties seeking to challenge a patent. Afterbeing brie y abolished in 2003, the Japan Patent O ce (JPO) reintroduced Patent
Opposition Proceedings “ 異 議 申 ⽴ ” in 2015 to any third party interested in revoking apatent within 6 months following its publication. In parallel, Nullity Actions “無効審判請求”
can be adopted as another procedural method to challenge a patent. This article will focus
on the outcomes of Nullity Actions in Japan and Opposition proceedings in Europe led
against the same inventions.

https://mailchi.mp/a0fa9309e77d/japan-ip-news-bulletin-february-2020?e=76ba65459e

11/16

2020/2/14

Japan IP News Bulletin, February 2020

According to the Japan Patent O ce Status Report of 2019, since the reestablishment of
Opposition proceedings in 2015, the number of Nullity Actions

led at the JPO hassigni cantly dropped, from 231 Nullity Actions led in 2015 to 159 led in 2018. In otherwords, approximately 0,08% of granted patents in 2018 have been challenged through a
Nullity Action. Conversely, according to the European Patent O ce’s Annual Report of2019, the number of Oppositions increased over the last decade (from 2,695 challenged
patents in 2009 to 4,061 in 2018), and the percentage of challenged patents at the EPO
largely exceeded that of Japan with approximately 3,18% of granted patents opposed.

https://mailchi.mp/a0fa9309e77d/japan-ip-news-bulletin-february-2020?e=76ba65459e

12/16

2020/2/14

Japan IP News Bulletin, February 2020

This signi cant difference in percentage of challenged patents may be explained by anumber of factors. Firstly, some observers note a tendency to avoid con ict whenobserving the relatively non-litigious character of Japanese society. Moreover, Japaneseindustry is interconnected; competitors in one eld may be partners in another distinct eld
leading to an avoidance of open con ict in order not to harm relations. Finally, the successrate of Nullity Actions in Japan is somewhat limited, which might partially explain why the
number of Nullity Actions led per year is relatively small.

This brings us to a second question: how similar are standards of the JPO and EPO whenmeasured by the outcome of validity challenges? In order to answer this question, wesummarized the main conclusions from the analysis comparing the standards for validity
during invalidation proceedings in front of the Board of Appeals of the Japan Patent O ce
(JPO) and the European Patent O ce (EPO) through the examination of three case studiesof three patent families.

The purpose of this study is to compare the standards for invalidating a patent whencounterpart patents (i.e., patents claiming priority to the same applications[1]) arechallenged in front of the Board of Appeals of the Japan Patent O ce (JPO) and theEuropean Patent O ce (EPO). According to the JPO Status Report 2019, two hundred
Nullity Actions were led in 2014 and twelve of their European counterparts were subject

https://mailchi.mp/a0fa9309e77d/japan-ip-news-bulletin-february-2020?e=76ba65459e

13/16

2020/2/14

Japan IP News Bulletin, February 2020

to Oppositions at the EPO. In most cases, more than one patent application had been led
in the JPO or EPO for each invention studied and more than one Japanese Nullity
Action/European Opposition (hereinafter Invalidation Action) had been

led in eachjurisdiction.

Our general impression, from this above described studied population is that the outcomeof Invalidation Actions at the EPO tends to be harsher for the patentee compared with theoutcome at the JPO. More precisely, (1) in one case, the EPO invalidated a European patent
while the JPO decided to maintain its counterpart patent without amendments; (2) in six
cases, the EPO invalidated European patents while the JPO maintained their counterparts
although after amendments; (3) in three other cases, the EPO maintained patents only after
amendments while the JPO decided that their counterparts were valid even without
amendments. There were only two cases wherein the EPO and JPO ndings coincided inmaintaining the patents, and there was no situation found where the JPO rendered astricter decision than that of the EPO. Divergence in rulings appears to be primarily basedon the variation regarding disclosure requirements and freedom to amend claims between
jurisdictions.

Both the Japanese Patent Law and the European Patent Convention (EPC) are interpreted
to require that the claimed invention be supported by the speci cation and to prohibit the
introduction of new matter by the amendments in view of the original disclosure.
Furthermore, the claimed invention must be supported directly and unambiguously for
those skilled in the art having common general knowledge. However, the manner in which
the rules are applied to actual cases seems to be more stringent in the EPO than in the
JPO. This rule is also applied in the evaluation of the claim for priority wherein the EPO
denied the claim for priority when the claimed invention is considered not to be supported
directly and unambiguously by the prior application. In the case where the JPO maintained
the patent without amendments and EPO revoked the counterpart, the EPO denied theeffectiveness of the claim for priority and consequently decided that the patent lacked aninventive step in view of a publication which was published after the priority date but
before the actual ling date in Europe of the patent.

The present study aimed to provide insight on the discrepancies between outcomes at theEuropean Patent O ce and Japan Patent O ce during Patent Invalidation Trials. The
research was conducted using data on Nullity Actions led at the JPO in 2014 which had
European counterparts which were also subject to Opposition Proceedings.

https://mailchi.mp/a0fa9309e77d/japan-ip-news-bulletin-february-2020?e=76ba65459e

14/16

2020/2/14

Japan IP News Bulletin, February 2020

The overall trend is harsher decisions upon Invalidation Actions before the EPO than the
JPO. Indeed, in seven cases out of twelve studied, the EPO issued an invalidation decision
whereas the JPO decided to maintain the patent either with or without amendment. As canbe seen on the below table, among the same population, the JPO never issued a decisionless favorable to the patentee than the EPO.

The observed outcome from this study may be explained by the divergence in theinterpretation and application of similar rules. It appears disclosure requirements alongwith the freedom to amend claims may differ between each jurisdiction, as signi cantvariation can be observed in the treatment of claims for priority. The EPO seems more
likely to deny claims for priority in the event that the claimed invention is not regarded as
supported directly and obviously by the prior application. This reasoning can lead to the
EPO to nd a lack of inventive step in view of a publication which was published after thepriority date but before the actual ling date in Europe of the patent[1] Accordingly, there is no one-to-one correspondence between the counterpart patents
studied.

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

https://mailchi.mp/a0fa9309e77d/japan-ip-news-bulletin-february-2020?e=76ba65459e

15/16

2020/2/14

Japan IP News Bulletin, February 2020

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.

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/a0fa9309e77d/japan-ip-news-bulletin-february-2020?e=76ba65459e

16/16