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March 2023
Contents
News about Sonoda & Kobayashi
1. A new team member joins Sonoda & Kobayashi's International Affairs

Department
JPO and CNIPA News
1. JPO to Allow Suspension of Divisional Application while Parent Under Appeal
2. JPO Announces Continuation of Flexible Measures for Deadline Relief Basedon Circumstances Impacted by Covid-19
3. JPO announces suspension of Fast-Track Examination for Trademarks
4. CNIPA announces measures for Online Oral Proceeding of Administrative
Adjudication
5. CNIPA will No Longer Accept the Submission of PCT International Application
Documents by Fax
Latest IP News in Japan
1. Japan’s Cabinet to approve guideline for non-disclosure of certain patents

under Economic Security Promotion Act
2. Extended protection of intellectual property in the Metaverse in Japan

Latest IP News in China
1. Patent lawsuit between Zhuhai CosMX and Japan MAXELL has been settled
2. Huawei sued Xiaomi for infringement involving four patent disputes

IP Law Updates in China: Insights from Sonoda & Kobayashi
1. Timeline and deadlines of a patent applications filed in Japan- News about Sonoda & Kobayashi 1. A new team member joins Sonoda & Kobayashi's International Affairs Department
At Sonoda & Kobayashi, we are regularly on the look-out for new, talented colleagues.
We are then pleased to announce that as of March 2023, a new member has joined ourInternational Affairs Department.
Originally from New-Zealand, Debora Cheng will work with us in our Tokyo office andsupport communications, negotiations and much more.
Aside from her native English Debora speaks fluent Japanese and Chinese, which willundoubtedly be a great asset to the team.
You will be able to meet Debora and other Sonoda & Kobayashi staff at various IP events
throughout the world.

- JPO and CNIPA News 1. JPO to Allow Suspension of Divisional Application while Parent Under Appeal
In February 2023, the JPO announced new examination procedures to be enacted as ofApril 1, 2023 whereby the examination of a divisional application will be suspended, uponrequest, while the parent application is pending examination at the Board of Appeals. The
new examination procedures enable the maximization of the total term of pendency of aparent and a divisional application and also enable the formulation of the claims of thedivisional application in view of the examination results of the parent application.
A. Eligible Patent Applications
Patent applications for which examination is requested on or after April 1, 2023 (and forwhich examination has yet to begin) are eligible for the present provision as long as theapplications meet the conditions (1) to (3), as follows:(1) They must be divisional applications filed after a Decision of Rejection was issued by
the Examiner against the parent application;(2) An Appeal must have been filed against the rejection issued against the parent
application and the examination of the parent application must be pending a preliminary
examination by the Examiner or an examination by the Board of Appeals; and(3) Waiting for the results of the preliminary examination or examination by the Board of
Appeals is considered appropriate.

B. Required Procedural Steps
Both of the documents described below must be filed within five working days from thefiling of the request for examination for the divisional application.
(1) A petition describing the circumstances regarding the Request for Suspension of
Examination according to Article 54, Paragraph 1 of the Japanese Patent Law; and(2) A statement of circumstances in a specific form regarding the request for suspensionof Examination according to Article 54, Paragraph 1 of the Japanese Patent Law.
C. Procedure following the Request for Suspension of Examination
A judgment shall be made on the Request for the Suspension of Examination, and notice ofthe decision shall be provided. In the case where a decision is made to accept the request,
the examination will be suspended until three months have passed since one of (1) to (3)described below.
(1) A decision to grant a patent is issued on the parent application as a result of thePreliminary Examination;(2) The first Appeal decision is issued on the Appeal against Rejection by the Examiner; or(3) The Appeal against Rejection is dismissed or withdrawn.
When the suspension of the examination is cleared, the application will be put on the list ofcases to be examined and the examination will start thereafter.
Specific information on this topic can be found here. (Japanese)
2. JPO Announces Continuation of Flexible Measures for Deadline Relief Based on
Circumstances Impacted by Covid-19
On Friday, February 10, 2023, the Ministry of Health, Labour and Welfare issued a newstatement regarding relaxation of certain measures undertaken during the Covid-19
pandemic, such as mandatory use of masks in schools.
Nevertheless, it has been determined the JPO will continue to provide flexible measures fordeadline relief based on circumstances impacted by Covid-19. For details on such flexible
measures, please see our previous newsletter.
Specific information on this topic can be found here. (Japanese)
3. JPO announces suspension of Fast-Track Examination for Trademarks
The JPO previously announced that due to the shortening of the examination period, thefast-track examination for trademarks would be suspended in 2022. The resumption date
has not yet been determined.
On March 13, 2013, the JPO announced that for applications filed on or before March 31,
2023 (Friday), those that meet the requirements for fast-track examination will still be
subject to fast-track examination.
Previously, fast-track examination was allowed for examination within 6 months of thefiling date (as opposed for 10 months for standard applications) for:

(1) An application for trademark registration in which only the goods or services publishedin the “Examination Guidelines for Similar Goods and Services”, “Regulation for
Enforcement of the Trademark Act”, or “International Classification of Goods and Services(Nice Classification)” are designated at the time of filing; and(2) An application for trademark registration with respect to which no amendment of thedesignated goods or designated services has been made until the commencement of theexamination.
Specific information on this topic can be found here (Japanese) and here (re previous track
system; English).
4. CNIPA announces measures for Online Oral Proceeding of Administrative Adjudication
On February 24th, 2023, CNIPA issued Measures for Online Oral Proceedings of
Administrative Adjudication Cases. The measures aim to make it easier for the parties
involved in patent infringement disputes to participate in the process of the administrative
adjudication, improve the administrative efficiency, and standardize the online oralproceeding of the administrative adjudication cases.
As the background to this issue, in 2022, CNIPA concluded two administrative adjudication
cases of major patent infringement disputes and 70 administrative adjudication cases ofdrug patent disputes related to drug patent linkage system.
Specifically, there are 18 articles in the measures, which mainly specify the effectiveness,scope of application, treatment of non-participation in the online oral proceeding, online
evidence exchange, witnesses, regulations of public hearing, confidentiality and otheraspects.
Moreover, the principles of online oral proceeding can be applied to the following cases:(1) Administrative adjudication cases of major patent infringement disputes;(2) Administrative adjudication cases of drug patent disputes related to patent linkage
system;(3) Administrative adjudication cases of patent rights disputes of integrated circuit layoutdesign(4) Other administrative adjudication cases which are suitable for online oral proceedings.
Specific information on this topic can be found here. (Chinese)
5. CNIPA will No Longer Accept the Submission of PCT International Applications
Documents by Fax
CNIPA issued a notification on February 3rd, 2023 that it will no longer accept thesubmission of PCT international application documents by fax. From March 1st, 2023, theChina National Intellectual Property Administration, as a receiving office, will no longer
accept the PCT international application documents submitted by fax, nor any documents
or letters related thereto submitted after the application. PCT international applicants canuse the client-side of "Patent Business Processing System" of CNIPA and its web version(https://cponline.cnipa.gov.cn) to submit PCT international application documents andhandle the relevant business to the China Bureau in electronic or paper form.

Specific information on this topic can be found here.

- Latest IP News in Japan 1. Japan's Cabinet to approve guideline for non-disclosure of certain patents under
Economic Security Promotion Act
Yomiuri Shimbun, February 3rd, 2023
On the 3rd of February, the Yomiuri Shimbun reported that draft guidelines for Japan’s "nondisclosure of patents" under the Economic Security Promotion Act passed in May last year
have been revealed. These guidelines will prevent patents in certain advanced
technological sectors, such as hypersonic flight, outer space, and cyberspace, from being
revealed.
The guidelines are expected to be approved by Japan’s Cabinet in April, and related
provisions of the law will be enforced by May 2024.
Although patents are generally made public 1.5 years after application, the law stipulates
that a newly established screening organization will have the discretion to not disclose
designated protected patents.
Targets for such protection could be fields with a significant influence on national security.
Additionally, the guideline targets “technologies that could inflict serious damage to
people’s lives and economic activities,” giving “nuclear technology that can be converted
into weapons of mass destruction” as an example.
For technology that can be used for both defense and civilian purposes, it is important toavoid hindering innovation of civilian technology . The patent protection designation would
then be limited to cases where the technology was developed for defense purposes orcommissioned by the government.
The Japanese government has created draft guidelines for maintaining criticalinfrastructure across 14 sectors, such as electricity and rail transport. The draft specifies
that prior screening will be necessary for the development of infrastructures classified as“important,” but this designation will only be applied in cases that are deemed “truly
necessary.”
To avoid undue influence from foreign entities, companies associated with infrastructure
construction and supplies will need to register information, including their location,
executive names and nationalities, and details about transactions with foreign
governments.
More information can be found here. (English)
2. Extended protection of intellectual property in the Metaverse in Japan
Nihon Keizai Shimbun, March 10th, 2023

The Nihon Keizai Shimbun reported that the government of Japan approved amendments
to six intellectual property laws, including the Unfair Competition Prevention Act and theTrademark Act, on March 10th. These amendments will make it possible to request an
injunction against the sale or transfer of counterfeit products in digital spaces such as themetaverse, with a focus on clothing and accessories worn by avatars.
The Unfair Competition Prevention Act prohibits the sale of imitation products that closely
resemble genuine products for three years from the release of the original product.
However, the current law does not cover digital spaces. There is a growing need forcoverage in this area, as major apparel brands such as Nike and Gucci are increasingly
entering the metaverse.
Furthermore, amendments to the Trademark Act will broaden the scope of registrable
trademarks. Previously, unless the trademark had a certain level of recognition, trademarks
containing personal names could not be registered without the consent of every personwith the same name.
In the fashion industry in particular, it is common to use the founder or designer's name as
the brand name. Although personal names can be registered under certain conditions in
Europe, China, and Korea, many of these applications have been denied in Japan, which
has hindered brand development for companies.
The amendments will also allow for the registration of trademarks that are similar to thosealready registered, as long as there is no risk of consumer confusion, and as long as theconsent of the original trademark holder is obtained. This "consent system" is already inuse in many countries and has been in high demand among applicants from overseas.
More information can be found here. (Japanese)- Latest IP News in China 1. Patent lawsuit between Zhuhai CosMX and Japan MAXELL has been settled
China's Capital Markets Information Disclosure Platform, March 4th, 2023
On March 4th, 2023, Chinese battery manufacturer Zhuhai CosMX Battery disclosed a
progress announcement regarding its involvement in litigation. Concretely, the lawsuit was
filed by Maxell from Japan in the Western District Court of Texas in the USA on August
13th, 2021 for patent infringement by Zhuhai CosMX. The lawsuit pointed out that Zhuhai
CosMX’s products were suspected of infringing four US patents owned by MAXELL andrequested the court to order Zhuhai CosMX to stop the infringement and compensate forlosses, but the specific amount claimed was not specified.
The latest progress in this lawsuit is that Zhuhai CosMX and MAXELL recently signed asettlement agreement. At the same time, both parties have submitted a withdrawal
application to the Western District Court of Texas in the USA. MAXELL voluntarily withdrew
all charges against Zhuhai CosMX in this lawsuit, and Zhuhai CosMX has also withdrawn

the invalid application for the patent related to this lawsuit. Each party shall bearcorresponding litigation costs and attorney fees.
Zhuhai CosMX stated that the progress of this lawsuit will not have a negative impact on
its daily management, nor will have a significant impact on its current and future profits
and losses.
More information can be found here. (Chinese)
2. Huawei sued Xiaomi for infringement involving four patent disputes
Changjiang Times, March 2nd, 2023
Huawei Technologies and Xiaomi Corporation, two well-known China technology giants,
have recently been involved in a patent dispute as reported on March 2nd by ChangjiangTimes via their WeChat Channel. According to the “Announcement on Acceptance ofAdministrative Adjudication of Major Patent Infringement Disputes” recently published by
China Intellectual Property News, Huawei has formally submitted an administrative
adjudication of patent infringement disputes against Xiaomi, and the case was acceptedby CNIPA on January 17, 2023.
At present, China adopts an administrative and judicial dual track resolution mechanism
for patent infringement disputes, and the administrative adjudication has become the first
choice for many patent owners as a solution to patent infringement issues because of its
fastness and effectiveness.
According to Xiaomi, now both parties are actively negotiating on patent licensing. Bothparties believe that intellectual property licensing and cooperation are conducive topromoting innovation and the public interest, and that settlement is an effective channel tohelp achieve licensing.
It should be noted that Huawei had previously reached global patent cross-licensing
agreements with Samsung and OPPO.
With regard to the administrative adjudication of major patent infringement disputes, atime limit of three months for handling cases exists, though upon approval this limit could
be extended by one month. Therefore, this patent infringement case between Huawei and
Xiaomi may be closed within three months.
More information can be found here. (Chinese)- IP Law Updates in Japan: Insights from Sonoda & Kobayashi Timeline and deadlines of a patent applications filed in Japan
This article aims to explain the timeline and deadlines of a PCT application or Paris Routeapplication when being filed in Japan.
Filing Deadline and Translation Submission
The deadline for entering a PCT application into the national phase in Japan is 30 months
from the earliest priority date.

Paris route applications may be filed either in Japanese or any other language within one
year from the priority date. When a Paris route application is filed in English (or any
language other than Japanese), a Japanese translation must be filed within 16 months
from the priority date and mistakes in the translation may be rectified by Amendments(during the patent prosecution procedure) or Corrections (after grant of a patent).
Publication
Publication of non-examined Japanese patent applications in the official gazette and on
the JPO website takes place 18 months after their filing or priority date, whichever isearlier. Any third party may submit prior art documents to the JPO in relation to the patentapplication.
Examination
Examination must be requested within 3 years from the filing date in Japan (International
Filing Date for a PCT application).
According to the JPO Status report 2022, FA Pendency (first action pendency) on average
was 10.2 months. First action pendency is the period from the date of examination request
until the JPO sends the first notice of examination results to the applicant (in most cases
this will be either a Notice of a Patent Grant or an Office Action).
Once an Office Action is issued, an international applicant is given 3 months to respond to
the Office action (only 2 months for domestic applicants). The deadline to respond can beextended by up to three months.
According to the JPO Status report 2022, the pendency on average was 15 months in
2020. This is an increase from 9.3 months in 2018 and might be connected to thepandemic.
In our experience, total pendency for patent applications filed by non-Japanese companies
is generally slightly longer compared to the average time indicated by the JPO. This could
be due to the (on average) smaller amount of patent applications being granted without an
Office Action, or may be due to the longer deadlines for responding to Office Actions forinternational applicants.
Appeal Proceedings
The deadline to file an appeal against the examiner’s decision of rejection is 4 months foroverseas applicants and three months for Japanese domestic applicants.
Pendency from filing the appeal until a final decision is made by the appeal board was 12months on average in 2021.
Expediting Examination
Several measures are available to accelerate examination (e.g., PCT PPH, PPH) when 1) a
decision to grant a patent is issued by one of the participating offices, (2) an Accelerated

Examination when the relevance of the claimed invention as they relate to the search
results is explained, and (3) a Super Accelerated Examination when the claimed invention
will soon be utilized, etc.
According to JPO statistics, the average FA pendency for applications under Accelerated
Examination is 2.3 months on, average and less than 1 month under Super Accelerated
Examination.
Delaying Examination
Unlike CNIPA, the JPO does not provide a way to delay the examination of a patentapplication, other than waiting until deadlines are approaching and extending deadlines to
respond to an Office Action up to a maximum of three months.
As of April 2023, it will however be possible to delay the examination of a divisional
application if the parent application is still pending in the Appeal stage.

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SONODA & KOBAYASHI is a law firm offering

Tokyo:

dependable

Shinjuku Mitsui Building, 34F

legal

servicesforintellectual

property. Our multinational team of about 100

2-1-1 Nishi-Shinjuku, Shinjuku-ku,

experts in technology, law, languages andTokyo, Japan

international〒163-0434

communication

has

servedcompanies worldwide and gained a reputation for

Main Line: +81-3-5339-1093

thoroughness and reliability.

newsletter@patents.jp
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China
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