2020/5/8

Japan IP News Bulletin, May 2020
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May 2020
Contents
News about Sonoda & Kobayashi
1. Awards
2. Publications

Coronavirus Response by JPO
1. The JPO Announces Potential Relief for Late Submissions
2. The JPO Will Accept Requests for Extensions for Prosecution Appeals, Invalidation

Actions, and Oppositions
3. The JPO Will Accept Untimely Submitted Original Signatures in Conjunction with

Exception to Lack of Novelty Submission
4. The JPO Suspends Examiner Interviews

Latest IP News in Japan
1. Patent Invalidation Actions – Pilot Program Trial Procedure Expands Number, Roleof Non-Public Oral Hearings
2. Extension of Design Protection to 25 years
3. The JPO has released the English version of the 2020 status report
4. The JPO has released a Handbook for Trial and Appeal System in Japan

IP Law Updates in Japan: Insights from Sonoda & Kobayashi
1. Changes to Japanese Design Law from April 1, 2020
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- News about Sonoda & Kobayashi 1. Awards

We are proud to announce that Sonoda & Kobayashi Intellectual Property Law has been
named the Intellectual Property Firm of the Year in Japan by the KMH Media Group!

2. Publications
Dr. Toshiyasu Ishioka, a partner in our bio-pharma group, recently wrote an article
published by IAM Media on patent term extension in Japan:
Read the full article here

Dr. Yoshitaka Sonoda, our founding partner, and Alison Santino of our International Affairs
Department recently wrote an article published by Patent Lawyer Magazine on comparing
patent validity standards in invalidation actions at the EPO and JPO:
Read the full article here- Coronavirus Responses by the JPO1. The JPO Announces Potential Relief for Late Submissions

On April 3rd, the JPO announced that patent, trademark, design, and utility model
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applicants who have missed a deadline will be allowed to make a written submission (the“relief procedure”) explaining the circumstances behind the failure to meet the deadline inresponse to the coronavirus crisis. If the circumstances as explained by the applicant arerecognized by the JPO as valid, then the JPO will treat the untimely submission as timelysubmitted.

Applicants should be aware that the JPO retains full discretion to determine whether thecircumstances surrounding the failure to meet a deadline are to be accepted. Moreover,there is signi cant legal precedent under similar standards where the JPO has rejected thevast majority of requests for relief (such as a missed PCT national entry deadline).

However, materials released by the JPO on potential circumstances in which relief may begranted seem to indicate the JPO will employ a relatively relaxed standard for accepting
submissions that could not be timely led due to the coronavirus crisis.

The JPO lists sample circumstances in which relief may be granted, including:

Where the applicant, their attorney, etc. has contracted COVID-19 and was unable to timely
perform the procedure;
When the o ce of the applicant, their attorney, etc. was closed due to an outbreak of
COVID-19, and the procedure could not be timely performed;
When an order or request for restriction of movement was issued by the government of theregion in which the applicant, their attorney, etc. resides due to COVID-19, and theapplicant, their attorney, etc. was restricted from working at the o ce, and was unable totimely perform the procedure.

There is no requirement that documentary evidence be submitted in conjunction with therelief procedure.

Details regarding the new relief procedure can be seen here:
https://www.jpo.go.jp/e/news/koho/saigai/covid19_procedures.html
https://www.jpo.go.jp/news/koho/saigai/covid19_tetsuzuki_kyusai.html (in Japanese)

2. The JPO Will Accept Requests for Extensions for Prosecution Appeals, Invalidation
Actions, and Oppositions

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On April 21st, the JPO announced that in response to the coronavirus crisis, parties may
request extensions to deadlines designated by the JPO in connection with appeals todecisions of rejections, invalidation proceedings, and oppositions in cases where theextension is necessitated by the spread of the coronavirus (the JPO has separately
announced potential relief from missed deadlines designated by law; see 1. above).

The JPO requests that parties that make such a deadline extension request state withspeci city the reason(s) why the spread of the coronavirus has necessitated an extensions
Valid reasons noted by the JPO include closure of a company o ce due to the coronavirus,
inability to gather experimental data due to the coronavirus, etc. With respect to deadlines
designated by the JPO, the longest extension that can be requested is one month, though ifa further extension is required due to the coronavirus, a second extension may berequested.

Further information can be found here (Japanese):https://www.jpo.go.jp/news/koho/saigai/covid19_sinpan.html

3. The JPO Will Accept Untimely Submitted Original Signatures in Conjunction withException to Lack of Novelty Submission

In order to be eligible for the exception to the lack of novelty of an invention under Article
30(2) of the Patent Act, a patent applicant must submit evidence (a document certifyingthat the requirements for the application of the exception to the lack of novelty of an
invention are met) within 30 days of the ling of the application. The document required tobe submitted is an original certi cate bearing the applicant's seal or signature (the JPO
does not accept photocopies, scanned documents, etc.).

However, due to the spread of COVID-19, the JPO announced that as of April, 2020, theapplicant may submit a certi cate without seal or signature within the period so long as
the certi cate states the cause of the failure to submit the seal or signature is thecoronavirus crisis, and that the seal or signature will be submitted in due course.

It should be noted that this relief procedure is in addition to the relief procedure under
Section 30(4) of the Patent Law which may allow for relief in cases where the certi cate
regarding the loss of novelty exception could not be timely submitted due to the COVID-19
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pandemic.

Furthermore, please note the JPO announced a substantially similar measure regarding
exception to lack of novelty submissions for designs.

Further information can be found here (Japanese):https://www.jpo.go.jp/system/laws/rule/guideline/patent/hatumei_reigai.html
https://www.jpo.go.jp/system/design/shutugan/tetuzuki/ishou-reigai-tetsuduki/index.html

4. The JPO Suspends Examiner Interviews

The JPO announced on April 9th that face-to-face interviews will be suspended temporarily
and that video interviews should be requested instead if necessary.

Further to the above o cial announcement, JPO examiners have uno cially commented
to us that they will probably be told soon (or may have been told already) to mainly workfrom home. However, since they have yet to be equipped with means for communication
with applicants such as telephones or faxes they have been using for telephone interviews,
they are reluctant to have telephone interviews from home. Some examiners haverequested that applicants o cially submit amendments and/or remarks instead ofinterviews and implied that he/she will issue more OAs if necessary rather than conduct aninterview.

Further information can be found here (Japanese):https://www.jpo.go.jp/news/koho/info/covid19_shutsugan.html- Latest IP News in Japan 1. Patent Invalidation Actions – Pilot Program Trial Procedure Expands Number, Role ofNon-Public Oral Hearings

From April, 2020, aiming to further improve the conduct of patent invalidation actions, theJPO Trial Division has begun a "Dialogical Trial Procedure" (hereinafter the "Procedure").
This Procedure will increase the number and scope of non-public oral hearings for selected
patent invalidation actions on a trial basis.

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According to the JPO, the Procedure aims to secure an opportunity for the parties to fully
assert their arguments and proof at an early stage, and if necessary, allow the Appeals
Board hearing the case the opportunity to communicate their tentative views on the caseto the parties. The Procedure will apply to cases upon request by a party, designated for
the Procedure by the Head Trial Examiner, and consented to by the opposing party.
However, there may also be cases without a request from a party where the Head Trial
Examiner designates a case for the Procedure with the consent of both parties.

In the current procedure, the oral hearing typically takes place approximately 8 months
after the initial demand (near the end of the trial procedure). While in general patent
invalidation trials include an oral hearing allowing parties to supplement their assertions
regarding the points at issue in the case, there are cases in which having only one oral
hearing leaves parties unable to fully express their arguments, requiring a second hearing
on the points at issue.

In the Procedure, while the schedule for particular cases may vary, it is currently envisionedthat in a standard case, a rst non-public oral hearing will take place after the ling anddelivery of the demand. This hearing will primarily involve the creation of a schedule andplan for the trial. A second non-public hearing will take place after the reply brief of therespondent is led and primarily concern the assertions of the parties and the points ofdifference in the case. A third non-public hearing will serve as a nal con rmation of thepoints of difference between the parties.

This Procedure will allow parties to directly explain their assertions to the Appeals Board
during the oral hearings. In order to allow for a frank exchange of views, oral statements
made by a party during an oral hearing and not recorded will not be taken as an assertionof that party (the “no commitment rule”). The assertions of both parties during oral
examination will only be recorded when determined necessary by the Appeals Board andwith the consent of both parties. Unrecorded assertions made during an oral hearing are
not to form the basis for the nal ruling.

Importantly, in the example case Procedure provided by the JPO, while each party is only
asked to provide an “explanation” with respect to the questions of the Appeals Board ateach oral hearing, they are to provide their written “replies” to the questions after thehearing which will presumably serve as the assertions of the parties with respect to thequestions.

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If the Procedure is eventually adopted by the JPO for invalidation actions, whether asstandard procedure or as one possible procedure, it will represent a signi cant change inJapanese practice. For invalidation actions employing the Procedure, one might expectthat (1) professional fees for invalidation proceedings will increase along with the numberof oral hearings and written submissions, and (2) the Appeals Board will have more
opportunity to communicate its views on the case as well as direct the arguments of theparties towards the points the Appeals Board feels are crucial. At the present time,
however, the JPO only intends to apply the Procedure to a limited number of cases on atrial basis. We will keep close watch for further developments.

Further information can be found here (Japanese):https://www.jpo.go.jp/system/trial_appeal/shubetu-muko/keikaku_taiwa_200325.html

2. Extension of Design Protection to 25 years
The JPO will now allow design protection to be extended to 25 years for design
applications led on or after April 1, 2020. Previously, protection was limited to 20 years.
Yearly annuities for years 4 – 25 of will be 16,900 yen per year.
Further information can be found here (Japanese):https://www.jpo.go.jp/system/process/tesuryo/kaisei/2020_ishoryokinkaisei.html

3. The JPO has released the English version of the 2020 status report
The JPO has released the English version of the 2020 status report, which can be foundhere:
https://www.jpo.go.jp/e/resources/report/statusreport/2020/index.html
4. The JPO has released a Handbook for Trial and Appeal System in JapanThe JPO has released a Handbook for Trial and Appeal System in Japan, which can befound here:
https://www.jpo.go.jp/resources/report/sonotainfo/document/panhu/shinpan_gaiyo_e.pdf- IP Law Updates in Japan : Insights from Sonoda & Kobayashi -https://mailchi.mp/6914355ab962/japan-ip-news-bulletin-february-2088881?e=76ba65459e

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1. Changes to Japanese Design Law from April 1, 2020

Harumi Kokaji, a partner, wrote a commentary on the recent changes to Japanese DesignLaw.
Read the full article here

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