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July 2020
Contents
News about Sonoda & Kobayashi
1. Awards
2. Internal news
3. Meet our Members

JPO News
1. Handling of Procedures Affected by COVID-19
2. JPO Launches new PPH Portal
3. JPO Examination Division and Appeals Division Conducting Television Interviews

Latest IP News in Japan
1. Daicel wins case at Japan’s IP high court, defending the sale of its products
2. Panasonic-Sony OLED venture starts patent infringement lawsuit against Samsung
3. 2018 Nobel prize laureate Tasuku Honjo sues Ono Pharmaceutical over royalties for

immunotherapy drug
4. Adoption of Intellectual Property Strategic Program 2020

IP Law Updates in Japan: Insights from Sonoda & Kobayashi
1. Insights on the JPO Status Report 2020 by Nicole Bigler- News about Sonoda & Kobayashi 1. Awards

We are very pleased to announce that Sonoda & Kobayashi Intellectual Property Law has been
recommended by IAM 1000 as one of the World’s Leading Patent Professionals 2020.

2. Internal Newsi) Sonoda & Kobayashi was happy to welcome a new staff member into the organization last
May This is:
Mr. Jeroen van der Donck, working in the International Affairs Department.
ii) On the 23rd of June, Sonoda & Kobayashi cooperated with Lexology to organize a Webinar on
the patentability of AI Inventions. The webinar offers an overview of how the U.S., Japanese,
Chinese and EU patent authorities treat inventions where AI is involved.
The webinar can be accessed by signing up on the following page:https://www.lexology.com/Events/Details/8060

3. Meet our Members
An interview with Ms. Yumiko Tochino, director overseeing the engineering, IT and administrative
department.

Pro le:As one of the rst members of Sonoda & Kobayashi, Ms. Tochino has continued to actively help
build and expand the rm. She developed a broad range of skills in different positions, from hertime as an English-to-Japanese translator to her role as a paralegal and expert in trademarks anddesigns. Keen on delivering the best results for our clients with an eye toward improving internal
e ciency and satisfaction, she developed a work ow and quality control system at our rm earlyon.

Q1 : What brought you to Sonoda & Kobayashi?

I was interested in translation. Before working for Sonoda & Kobayashi, I was an English teacher
and an English-Japanese translator of streaming video on website. I wanted to be more
specialized in technical translation and found a world of IP translation.

Q2: What do you enjoy about working at here?

The atmosphere of freedom with responsibility. We do not need to start working at the same time
everyday whereas standard Japanese companies expect all employees to do so. What we are
required is to achieve given tasks. This way of thinking is very simple and I like it. Also, we canspeak out to anyone including superiors and opinions can be accepted as long as they are logicaland convincing.

Q3: Tell us one thing about yourself many people do not know?

I used to be a gamer and played video games all night long. Now, I sometimes get absorbed in
online games.

Q4: What is your most memorable moment here?

When I give a speech rst time in front of employees as a board member.

Q5: Pick a Japanese word to describe the o ce and explain why.

“多様性” (“Tayōsei). I believe one of the underlying principles in our o ce is diversity and it has
been a key factor of our development. Personally, I enjoy working with colleagues from overseas. I
am also happy to see many working mothers.

JPO News
1. 10th June, Handling of Procedures Affected by COVID-19
The JPO homepage has detailed information in English regarding potential relief for those whohave been unable to timely complete ling procedures for patents, utility models, designs, andtrademarks due to the adverse effects of COVID-19.

The JPO divides procedures into two categories: procedures with (1) designated time limits (i.e.,time limits set by the JPO), and procedures with (2) statutory time limits (i.e., those with time
limits speci ed by law and ministerial ordinances). The methods to apply for relief, the relief that
may be provided, and the time period within which relief may be requested, differ by procedure.

Speci c information on this topic can be found here:
https://www.jpo.go.jp/e/news/koho/saigai/covid19_procedures.html (English)

2. 6th July, JPO Launches new PPH Portal
On July 6, 2020, the JPO launched its renewed Patent Prosecution Highway (PPH) Portal page.
This page provides detailed information on the PPH system, the worldwide network linking
Japan with other jurisdictions, and statistical data, such as the number of PPH requests and the
grant rate of applications utilizing the PPH process.

The new PPH Portal can be found here:
https://www.jpo.go.jp/e/toppage/pph-portal/ (English)
https://www.jpo.go.jp/toppage/pph-portal-j/ (Japanese)

3. 8th May, JPO Examination Division and Appeals Division Are Conducting Television

Interviews
While in-person interviews will not occur in the near future, the JPO Examination Division and the
Appeals Division are now conducting television interviews over the internet utilizing web
applications.

This system allows parties to participate in the interview from their own computer. With theconsent of the party or the party’s agent, reference materials used in conjunction with theinterview can be sent and received via email.

In order to participate in a television interview hearing, the following equipment is required:- A computer- Internet- Webcam- Headset (or microphone and speakers)

The television interview system can be used without installing any special software.
Characteristics of the television interview system include the ability to paste data fromdocument creation software, spreadsheet software, PDF software, etc. to a “whiteboard” which
can be shared between all participants. Participants may highlight/create notes on materials on
the whiteboard.

Participation in a television interview is limited to 10 devices for an examination interview and 4
devices for an appellate interview.

There is no charge for applying and/or utilizing television interviews.

Links
https://www.jpo.go.jp/system/patent/shinsa/mensetu/telesys_mensetu.html (Japanese)
https://www.jpo.go.jp/system/trial_appeal/general-mensetsu/tv-mensetsu.html (Japanese)- Latest IP News in Japan 1. Daicel wins case at Japan's IP High Court, defending the sale of its products
Nikkan Chemical News, June 26, 2020

On June 24, Japan’s IP High Court concluded that Daicel won an appeal case against Otsuka
Pharmaceutical regarding patent infringement.
The case dates back to 2017 when Otsuka sued Daicel for alleged infringement of its patentrights.
Speci cally, it was the use of a type of chemical, an equol called “Flavocell EQ-5”, in some of
Daicel’s products that Otsuka objected to and demanded that Daicel stop its use.

In January 2019, the court reached a decision in favor of the defendant Daicel. However, Otsuka
Pharmaceutical decided to appeal at the IP High Court, which concluded that Flavocell EQ-5 was
not in the technical scope of Otsuka’s patent.

2. Panasonic -Sony OLED venture starts patent infringement lawsuit against Samsung
Nikkei Asia Review, June 23, 2020

JOLED, a Japanese display maker formed in 2015 from Sony’s and Panasonic’s OLED display
divisions, announced on June 23 that it has

led lawsuits in the U.S. and Germany against

Samsung Electronics and other Samsung companies. The company is claiming that its patents
on organic light-emitting diode panel technologies were infringed upon by Samsung.

In the U.S. lawsuit against Samsung, Samsung Electronics America and Samsung Display,
JOLED is accusing the conglomerate of selling their Galaxy smartphone in the country without ahaving license for the JOLED technology used in the phone.
In the German case, JOLED’s complaints against Samsung Electronics and a local German
subsidiary are largely of similar nature. Both lawsuits seek damages.

3. 2018 Nobel prize laureate Tasuku Honjo sues Ono Pharmaceutical over royalties for
immunotherapy drug
NHK News, June 19, 2020
Japan Times, June 19, 2020

On the 19th of June, Dr. Tasuku Honjo, the winner of the 2018 Nobel Prize in Physiology or
Medicine, led a lawsuit against Ono Pharmaceutical demanding payment of more than 22,6
billion yen as well as damages for the delay of payment.

Ono Pharmaceutical obtained a patent for an immunotherapy drug called Opdivo on the basis of.
Honjo’s research. Honjo alleges that the pharmaceutical company neglected its obligations tohim by cutting his part of the royalty income for the cancer- ghting drug.

The lawsuit was led after Honjo rejected an earlier offer by Ono Pharmaceutical in 2018, which
offered to donate 30 billion yen to Kyoto University.
According to the lawsuit, Ono Pharmaceutical had settled a comparable lawsuit against a U.S.
company in which it was decided that the U.S. rm was to pay Ono Pharmaceutical some ¥70
billion yen plus future royalties until 2026. Honjo claims that he was promised 40% of thisamount, but has in fact only received 1%.

Honjo is claiming 22,6 billion yen for the unpaid portion of the royalties as well as damages forlate payment. Considering Opdivo’s contribution to Ono’s earnings, a share of 1% is irrational, heclaims.

4. Adoption of Intellectual Property Strategic Program 2020
Cabinet of the Prime Minister of Japan, May 27, 2020

Shinzo Abe, Japan’s prime minister, held a meeting at May 27 to adopt Japan’s Intellectual
Property Strategic Program 2020.
The prime minster emphasized that the spread of the coronavirus disease has increased thepace of certain trends, such as digitialisation. The 2020 Intellectual Property Strategic Programshould then be in line with the increased importance of intellectual property of digitaltechnologies.

Prime minister Ab also proposed to revise the Cool Japan strategy and tie it closer to the themeof regional revitalization. Japan will also actively promote the overseas expansion of its digitalcontent and in order to do so changes must be made to systems such as the copyright system.

The full text in Japanese can be found here:
https://www.kantei.go.jp/jp/singi/titeki2/kettei/chizaikeikaku20200527.pdf- IP Law Updates in Japan : Insights from Sonoda & Kobayashi Insight on the JPO Status Report 2020
By Nicole Bigler

Every year in April the Japanese Patent O ce publishes an extensive report on developments
and trends regarding IP protection at the Japanese Patent O ce and beyond.

The report includes various topics, starting with trends in intellectual property protection in
Japan and worldwide, to reports on examinations, trials and appeals, to international initiatives
and ending with a short explanation of JPO support measures and a summary of recent law
amendments. We summarize nine important and interesting updates and lessons learned fromthe report.

The full report can be accessed by the following link:
https://www.jpo.go.jp/e/resources/report/statusreport/2020/index.html
1. The trend of decreasing newly led patent application in Japan continues
Patent applications led in Japan slightly decreased for the second time in a row, which can beunderstood as a continuation of a trend which started back in 2001.

Last year patent applications led in Japan slightly decreased by 1.8% from 313,567 newly led
applications in 2018 to 307,969. Compared to 2001, when the number of

led patentapplications in Japan was at its peak, the number of led applications has shrunk by roughly30%.[1]The source of this decrease can be found in the number of patent applications led by domestic
Japanese companies, which have decreased consistently over a period of 10 years. We believethat this trend is caused by many Japanese companies changing their IP strategy in regard totwo aspects: 1) they are focusing increasingly on quality instead of quantity [2] and 2) with
continued globalization of markets are allocating their budgets more for lings outside of Japanto strengthen their position in a global market [3].

2. International applications led in Japan have slightly increased
Contrary to domestic patent applications, international patent applications led in Japan haveonce again increased, this time by 4.6% from 64,013

led applications in 2018 to 66,968

applications led in 2019 (see graph above). This is a continuation of an over ten-year-old trendof increasing numbers of

led patent applications by international corporations in Japan.

Despite this continued increase, Japan has lost second place to China in the ranking ofcountries with most led PCT applications in 2017 [4] and is ever since losing more ground.
The increase of PCT applications led in Japan is partly due to a general increase in globally
led applicants from where Japan gets its share but should also be accredited to the JPO`smeasures to make Japan a more attractive jurisdiction for international applicants by shortening
the time of prosecution, reducing the cost for getting a patent and simplifying examination
standards.

3. Newly led utility model applications are decreasingThat utility models have lost most of their popularity was proven one more time by declining
numbers of newly

led applications from 5,388 applications

led in 2018 to only 5,241

applications led in 2019.

Utility model applications, which at one point were led more than twice as often as patentapplications in Japan, lost their popularity after two law amendments in 1993 and 2004. The law
amendments resulted in raising the inventive step requirements and abolishing substantive
examination, through which utility models lost some of their original purpose of protecting small
inventions. Nowadays, utility models are used by few companies with a speci c purpose in their
IP strategy like for example saving costs or getting fast protection of their rights [5].
As for the origin of utility model applications, the vast majority of cases (3,693 applications) are
led by Japanese companies followed by companies from Taiwan (770 applications) andcompanies from China (501 applications).

4. The number of led oppositions against patents has stabilized at around 1,000 per year
The system of patent opposition was reintroduced to Japan in 2015 after having been abolishedin 2003 due to the opinion that one system for invalidation patents (nullity action proceedings)
was su cient. This opinion has however proven problematic as the number of

led nullity

actions stayed below expectations even well after abolishment of the opposition system. It isbelieved the reasons why nullity action proceedings did not become more commonly used inJapan are 1) that the use of a straw man is not allowed (which is allowed under opposition
proceedings), and 2) the cost forling a nullity action is comparatively high compared to

oppositions.

Five years after reintroduction of oppositions the number of led oppositions has stabilized ataround 1,000 cases per year.

This is slightly smaller than in the rst years after reintroduction where more than 1,200 cases
were led each year and substantially less than what was common under the old system, which
saw an average of 4,450 cases

led per year. The reason for this is believed to be thesurprisingly low success rate of oppositions: in recent years, below 10% of opposed patents
ended up being invalidated after opposition proceedings were concluded [6].

5. The trend of decreasing numbers of led nullity actions continues
Filed Nullity Actions (Trials for Invalidation) have continued their decreasing trend and reached a
new low with only 112 cases led in 2019. This is less than half compared to 2011, when 269
nullity actions were led.

We can see two reasons for this trend. One is the reintroduction of the opposition system in2015 (see paragraph above), which allowed opponents to request invalidation of a patent
without disclosing their identity. Companies therefore shifted a portion of the invalidation

attempts away from nullity action proceedings to opposition proceedings. Another reason forthe low number might be the declining success rate. Though the success rate for led nullity
actions used to be quite high over a decade ago with for example 62.3% of attacked patents
ending up at least partially invalidated in 2008, the success rate has dropped over time to only
12.0% in 2018 [7-1] [7-2]. Considering the high cost of nullity action proceedings, demandants
might be more reluctant to commit to the big investment despite the uncertain outcome.

6. The JPO keeps No 1 position regarding speed
The JPO has been aiming for several years to achieve the “world’s fastest and utmost quality
patent examinations” and therefore introduced several initiatives since 2004 (e.g. increasing
number of patent examiners, outsourcing searches etc.) to speed up patent prosecution. As aresult, the JPO is now the fastest patent o ce within the IP5, reducing the pendency of a rst
action (from requesting examination until the JPO sends the

rst notice of result of

examination) from 29.3 months in 2008 to only 9.3 months in 2019. The total time of pendency(from requesting examination to nal disposition) also dropped to a record low of only 14.1
months.
If a 9.3 months pendency for the rst action should still be too long, applicants can opt for theaccelerated examination system, which offers a pendency of only 2.5 months until rst action in
average. Patent applications led in at least one more jurisdiction besides Japan and patentapplications led by a SME can qualify for this fast route at no additional o cial cost [8].

7. The JPO is providing English Translations of selected Trial/Appeal Decisions
Not yet known by many but very useful, the JPO is providing manual English translations oftrial/appeal decisions on its website since 2016 with the goal to support the understanding of
the law and its practices in Japan. 87 trial/appeal decisions were translated in 2019 and can be
retrieved here.
8. Increase in AI related inventions
The JPO studied the development of patent applications for AI technology-related inventions
and published a report thereof in July 2019. The report shows a huge increase in such patentapplications and goes as far as to naming it the “third AI boom”. Whereas lings for AI related
inventions were stable at around 1,000 applications per year from 1996 to 2014, they haveexperienced an increase which peaked in 2017 with over 3,000
applications (data for 2018 and 2019 is not available yet).

led AI related patent

The detailed report can be accessed here.

9. Summary of Law Amendments 2019
The report includes a simple overview and summary in English on all IP related law amendments
which took place in 2019 in Japan.
As a reminder, 2019 law amendments were:
1. Enhancement of Patent Litigation System bya) introduction of inspection system andb) revision of damages calculation methods.

2. Enhancement of Design System bya) introduction of protection for graphic image, building exterior and interior design;b) extension of related design protection;c) change in the duration of design right andd) simpli cation of registration procedure.

3. Enhancement of Trademark protection bya) allowing non-exclusive licenses of trademark belonging to public interest bodiesb) allowing submission of goods amendments after notice of rejection is sent.

Sonoda & Kobayashi IP Law
Nicole Bigler
Quoted from
[1] Nikkei Shinbun 2016/3/29:
https://www.nikkei.com/article/DGXLASDF29H16_Z20C16A3PP8000/[2] https://system.jpaa.or.jp/patents_ les_old/201410/jpaapatent201410_001-003.pdf[3] 特許⾏政年次報告書2019年版:
https://www.jpo.go.jp/resources/report/nenji/2019/ebook/book.pdf , page 2[4] https://www.nippon.com/ja/features/h00317/[5] Webinar-"Utility Models–Overview of Requirements, Procedures and Tactical Use in Europe and Japan"
https://www.youtube.com/watch?v=F4VYFDrtoTc

[6] Webinar-Patents:Oppositions proceedings and nullity actions-a comparison between Europe and Japan
https://www.youtube.com/watch?v=Edh2rlrF2Ug[7-1] JPO Statistics Report 2015:
https://www.jpo.go.jp/resources/report/nenji/2015/document/index/dai-1.pdf[7-2] JPO Statistics Report 2019:https://www.jpo.go.jp/resources/report/nenji/2019/document/index/0107.pdf#page=3[8] https://www.jpo.go.jp/e/system/patent/shinsa/jp-soki/

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Sonoda & Kobayashi Intellectual Property Law · Shinjuku Mitsui Building, Suite 3401 · 2-1-1 Nishi-Shinjuku · Shinjuku-ku, Tokyo 161-0434 · Japan