2024/02/02 10:36

IP News Bulletin for Japan and China, February 2024

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February 2024
Contents
News about Sonoda & Kobayashi
1. Sonoda & Kobayashi invites you to its webinar on Chinese patent law updates

on February 29th
JPO and CNIPA News
1. JPO publishes English language guide to obtaining a design right in Japan
2. JPO releases case studies of newly eligible registered designs following the

expansion of designs eligible for protection under design law
3. CNIPA passes Regulations for the Implementation of the Patent Law
4. 921,000 invention patents were authorized in China in 2023
Latest IP News in Japan
1. China's rise in bendable solar panel patents overcomes Japan's reign
2. New guidelines to safeguard cutting-edge technologies in Japan for national

security
Latest IP News in China
1. Continued patent disputes in China for Nokia despite agreement with Honor
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2. Xiaomi and Huawei dispute over foldable phone patent as competitors

increase
IP Law Updates in Japan: Insights from Sonoda & Kobayashi
1. Relaxation of rules for reviving expired IP rights in Japan- News about Sonoda & Kobayashi 1. Sonoda & Kobayashi invites you to its webinar on Chinese patent law updates on
February 29th
On Thursday the 29th of February at 10PM JST / 2PM CET / 8AM EST, Sonoda &Kobayashi is organizing a webinar on the “News about China’s Patent Term Extension,
Open Permissions System, and more! Points to note on the revised Implementing
Regulations of the Patent Law of China.”
Mr. Ma, Chinese patent attorney at Sonoda & Kobayashi Beijing IP Group, will help you
understand the recent changes to patent law in one of the largest IP jurisdictions in theworld. If you are interested in learning more, please register here.

- JPO and CNIPA News 1. JPO published an English language guide to obtaining a design right in JapanOn January 15th, 2024, the Japan Patent Organisation published a new English language
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guide.
Intended for applicants in Japan, it is particularly meant for those that may understand therules regarding design rights in their own country but are not necessarily familiar with theJapanese system.
The guide introduces the Japanese design system, explains recent changes in laws andregulations, and clarifies points in the application process where foreign applicants are
more prone to make mistakes. The 25-page long guide uses many practical examples,
images and flowcharts to provide insight into the design system in Japan.
Specific information on this topic can be found here. (Japanese)
The guide can be found here. (English)
2. JPO releases case studies of newly eligible registered designs following the expansionof designs eligible for protection under design law
On January 15th, the JPO updated its figures on filing trends of designs falling under the
new design law. In April 2020, Japan’s amended design law began to allow design
applications for protecting images, buildings and interior decorations. Additionally, it
expanded on the already existing related-design system.
Since then, the JPO has periodically been reporting the filing trends for these newly
allowed design rights.
The below table, compiled by Sonoda & Kobayashi using past data, includes the new data
released in January 2024, as well as the previous data from May 2023 and November
2022.

No. of applications,November 2022
No. of applications,
May 2023
No. of applications,January 2024

No. of registrations,November 2022
No. of registrations,
May 2023
No. of registrations,January 2024

ImagesBuildings

Interior decorations

3366

925

676

4241

1165

807

5226

1447

975

1817

538

336

2499

766

441

3577

979

630

Specific information on this topic can be found here. (Japanese)
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3. CNIPA passes Regulations for the Implementation of the Patent Law
The CNIPA issued the revised Detailed Rules for the Implementation of the Patent Law of
the People's Republic of China
On December 21, 2023, the CNIPA announced the revised Detailed Rules for the
Implementation of the Patent Law of the People's Republic of China, which came into force
from January 20, 2024.
Some of the amendments are as follows:
1. On the refinement of the principle of good faith and credibility
Article 20 of the revised Patent Law introduces the principle of good faith, which statesthat "the application for patents and the exercise of patent rights shall follow the principleof good faith. The abuse of patent rights shall not harm public interests or the legitimate
rights and interests of others.". Legislators hope to use this provision to combat nonstandard patent applications or abuse of patent rights. On this basis, the " Detailed Rules
for the Implementation of the Patent Law " make more specific provisions, requiring patentapplicants to "submit various types of patent applications based on real invention andcreation activities and not engage in fraud" (Article 11 of the "Detailed Rules"), and "patent
holders shall not make open license statements or obtain patent annual fee reductions
during the implementation period of the open license by providing false materials,
concealing facts, and other means" (Article 88 of the "Detailed Rules").
At the same time, the "Detailed Rules" stipulate the administrative responsibility for theabove-mentioned illegal acts: "The department responsible for patent law enforcement at
or above the county level shall give a warning and may impose a fine of up to 100000
yuan." (Article 100 of the "Detailed Rules").
2. Examination of utility model and design patent applications that clearly lack inventive
step
Article 50 of the revised " Detailed Rules for the Implementation of the Patent Law " further
adds the provisions on whether a utility model or design patent application is obviously
lacking inventive step and whether a utility model or design patent application obviously
does not conform to the principle that "the design for which the patent right is granted shallbe significantly different from the existing design or the combination of features of theexisting design on the basis of the obvious lack of novelty in the existing examination".
3.The establishment of a " deferred examination"
Paragraph 2 of Article 56 of the revised "Detailed Rules for the Implementation of the
Patent Law" provides that "the applicant may file a request for deferred examination of apatent application". So far, the deferred examination has been clearly stipulated in thedetailed rules for the implementation of the Patent Law. With the implementation of the
new Regulations, applicants can file a request for deferred examination for three types ofpatent applications: invention, utility model and design. An invention patent can bedeferred for 1, 2 or 3 years. A utility model can be deferred for 1 year. A design patent canbe deferred for up to 36 months.
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4. Regarding partial designs
Articles 30 and 31 of the revised "Detailed Rules for the Implementation of the Patent Law"
stipulate the requirements for the filing of drawings or photographs of a design application,
as well as the requirements for a brief description. First of all, the applicant applying for apartial design patent should still submit a view of the overall product, and indicate thecontent of the part to be protected by combining dotted lines and solid lines. Secondly, forpartial designs that do not use a combination of dashed and solid lines to indicate thecontent of protection, the applicant should specify the part for which protection is soughtin the brief description.
5. Regarding domestic priority of design patents
The Patent Law stipulates the filing time (within six months from the date of the first filingof a patent application in China) and the time for filing a copy (within three months after
the filing of the application). Article 35 of the revised "Detailed Rules for the
Implementation of the Patent Law" stipulates that an earlier application for the domestic
priority of a design may be either a design application or an invention or utility model
application. When the earlier application is a design application, the earlier application isdeemed to be withdrawn from the date on which the later application is filed. However, if
the earlier application is an invention or utility model application, the earlier invention or
utility model application will not be considered withdrawn because of the later application
for a design.
6. Regarding Patent Term Compensation System
A new chapter "Patent Term Compensation System" has been added to the revised"Detailed Rules for the Implementation of the Patent Law", which provides specific anddetailed provisions.
Patent term compensation can be divided into PTA（Patent Term Adjustment）and PTE（Patent Term Extension）. Each system has its own characteristics:
Firstly, the applicable objects are different. The former applies to various invention patents,
while the latter only applies to "new drug related invention patents that have obtained
marketing permits", and is limited to "new drug product patents, preparation method
patents, and pharmaceutical use patents that comply with regulations". Secondly, theapplicable situations are different. The former is about "unreasonable delays in theauthorization process of invention patents", while the latter is about "time occupied by thereview and approval of new drug marketing". Thirdly, the request conditions are different.
The former shall be submitted to the CNIPA within 3 months from the date of publicationof the grant of patent rights, while the latter shall be submitted to the CNIPA within 3months from the date of obtaining the marketing license for the new drug in China. Fourth,there are different compensation methods. The compensation period for the former iscalculated based on the actual number of days of unreasonable delay in the authorization
process of the invention patent, excluding "reasonable delay". The compensation period forthe latter is determined by subtracting 5 years from the number of days between the patentapplication date and the date when the new drug is granted market authorization in China,
in accordance with Article 42 (3) of the Patent Law.

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Further information can be found here, here, and here. (Chinese)
4. 921,000 invention patents were authorized in China in 2023
It was learned from the CNIPA that the quality and efficiency of intellectual property
examination continued to improve, and the level of innovation in subjects continued toincrease.
In 2023, a total of 921,000 invention patents, 2,090,000 utility models, 638,000 designs,
4,383,000 registered trademarks, and 11,300 registered integrated circuit layout designs
were authorized in China. Also, 13 geographical indication products were identified, 5,842
business entities were approved to use special geographical indication indications, and201 collective trademarks and certification trademarks were approved to be registered withgeographical indications. Applications for international registration of patents, designs andtrademarks were filed through the PCT, Hague and Madrid systems, 73,812, 1,166 (in theprevious 11 months of 2023) and 6,196 respectively, ranking among the top in the world.
Further information can be found here. (Chinese)- Latest IP News in Japan 1. China's rise in bendable solar panel patents overcomes Japan's reign
Nikkei Asia, November 29th, 2023
On the 29th of November, Nikkei Asia reported on how China has rapidly caught up withJapan in patent filings for next-generation bendable perovskite solar cells.
Japan has been the global leader in total patent filings for perovskite panels over the past
20 years. But since 2020, China and South Korea have surpassed Japan in yearly
applications. In 2021, China submitted 70 applications, South Korea submitted 39, andJapan submitted only 19. Perovskite panels, known for their flexibility and ability to beplaced in unconventional locations, are considered a potential game-changer for
expanding solar power generation.
The data reveals that China is also dominating in academic papers related to perovskite
solar cells. If the current pace continues, China is likely to achieve superiority in this field.
Additionally, Chinese battery leader Contemporary Amperex Technology is already inseventh place in total applications.
Japanese companies, including Panasonic Holdings, Sekisui Chemical, and Toshiba, arealso among the top 10 in patent applications. Panasonic plans to bring its perovskite solar
cell technology to the market by 2028, emphasizing light-to-electricity conversion rates.
Sekisui Chemical focuses on durability, while Toshiba aims to commercialize large
perovskite panels around fiscal 2025.
The global market for perovskite solar cells is projected to reach 1 trillion yen ($6.74
billion) in 2035, up from 32 billion yen in the previous year. Challenges include a potential
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dip in power conversion efficiency with larger panels and issues related to lasting power
due to moisture absorption and cell degradation. Development of new sealants is crucial toaddressing these challenges. It seems that if China continues to dominate this field, it
might be best for Japan to collaborate with other countries in its efforts regarding solar
panels.
Further information can be found here. (English)
2. New guidelines to safeguard cutting-edge technologies in Japan for national security
NHK, December 19th, 2023
On the 19th of December, NHK reported on new guidelines to safeguard cutting-edge
technology in order to strengthen economic security.
The Japanese government has introduced new guidelines under the Economic Security
Promotion Act, allowing companies with proprietary technology to keep patentapplications private for certain cutting-edge technologies related to national security. This
move aims to prevent the disclosure of sensitive information in fields such as radarevading aircraft and unmanned aerial vehicles. Designated companies must implement
measures to safeguard their inventions, including limiting the number of people who share
information about invented technologies to the minimum necessary, restricting access toareas where information is managed, and designating a person in charge to promote
countermeasures.
Starting May 1, patent applications will be assessed for potential non-disclosure, andcompensation will be provided for any losses incurred. Minister of Economic Security
Takaichi emphasized the importance of preventing information leaks and highlighted the
publication of comprehensive guidelines to manage invention information effectively.
Further information can be found here. (Japanese)- Latest IP News in China 1. Continued patent disputes in China for Nokia despite agreement with Honor
Reuters, January 5th, 2024
Reuters reported on January 5th, 2024, that Finnish telecom equipment manufacturer
Nokia recently announced a significant development by signing a 5G patent agreementwith Honor, one of China's leading smartphone makers. However, amidst this positive
news, Nokia is entangled in ongoing legal disputes with other Chinese companies, namely
Oppo and Vivo, regarding the utilization of 4G and 5G patents, a conflict that has persisted
since 2021.
Nokia, once a dominant force as the world's number one mobile phone maker, boasts a
substantial patent portfolio encompassing key technologies crucial for phone
manufacturing. Notably, the revenue generated through licensing these patents accounted
for 39% of Nokia's operating profit in 2022.
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The agreement with Honor, a former subsidiary of Huawei Technologies and recently
subject to U.S. sanctions, is described by Nokia as an "amicable" arrangement. However,this positive development follows a setback in China where a local court sided with Oppo,
who were?demanding lower royalty rates for Nokia's technologies, as reported by the South
China Morning Post.
Susanna Martikainen, Nokia's Chief Licensing Officer, highlighted the significance of the
Honor deal, marking the fourth major litigation-free smartphone agreement Nokia has
secured in the past year. Wenyu Zhou, Head of Global Intellectual Property at Honor,emphasized the company's respect for intellectual property rights, emphasizing theimportance of a reasonable value for intellectual property in the mobile industry's
development.
In response to the Chinese court ruling, Oppo stated that it provides clear guidelines for 5G
standard essential patent royalty rates, suggesting broader implications for similar casesin the global communications industry.
Nokia recently announced its inability to meet financial targets for 2023, citing challenges
in recognizing revenue from license renewal discussions expected to extend into 2024. The
company has prioritized protecting the value of its patent portfolio overachieving specifictimelines for resolution.
Throughout the first three quarters of 2023, licensing income constituted over half ofNokia's operating profit, a critical revenue stream, as sales in network infrastructure andmobile networks faced a decline. Oppo and Vivo, both owned by Chinese BBK Electronics,
are key players in the smartphone market, while Huawei sold Honor in 2020.
Despite the challenges, Honor secured the top position in handset shipments in China
during the third quarter, according to research firm Canalys, further highlighting thecomplex dynamics within the competitive landscape of the smartphone industry.
Further information can be found here. (English)
2. Xiaomi and Huawei dispute over foldable phone patent as competitors increase
South China Morning Post, December 13th, 2023
On December 13th, 2023, South China Morning Post reported that Xiaomi and Huawei arein a public dispute over a foldable phone patent, reflecting heightened competition in
China's smartphone market. Last Saturday, Huawei's Richard Yu accused unnamed
competitors of appropriating their intellectual property, specifically citing Xiaomi's "keelhinge" design as a copy of Huawei's hinge used in its Mate X3, X4, and X5 models.
Xiaomi promptly refuted Yu's claims, stating that their three-element hinge was patented
before Huawei's two-track design was approved. The controversy arises amid increasing
competition in the foldable phone market, which is projected to grow substantially by 2027,
despite currently representing only 1% of smartphone shipments.
Since Samsung's introduction of the Galaxy Fold in 2019, various companies including
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Motorola, Xiaomi, Huawei, and Oppo have entered the foldable phone market. Google
joined in with its Pixel Fold, priced at $1,799. Efforts are ongoing to minimize the screen
crease, with Xiaomi and Vivo employing innovative hinge designs, and Samsung
introducing a teardrop-shaped hinge in its latest Galaxy Z Fold 5.
Huawei's Mate X5, featuring advanced technology despite US tech sanctions, sold out
upon release in September. The dispute underscores the significance of intellectual
property in the fiercely competitive smartphone industry.
Further information can be found here. (English)- IP Law Updates in Japan: Insights from Sonoda & Kobayashi 1. Relaxation of rules for reviving expired IP rights in Japan
Debora Cheng (New Zealand Lawyer, International Affairs Department)
From April 1st, 2023, Japan introduced significant changes to its restoration of rights
procedures, particularly concerning the expiration of procedural periods. These
modifications aim to streamline processes, reduce burdens on applicants, and enhance
predictability in applications.
Understanding the Changes
Previously, the standard in Japan to revive lapsed IP rights required that the failure to act ina timely manner must be due to a “valid reason,” and the JPO’s interpretation of this “valid
reason” has been extremely strict. Accordingly, revival of expired IP rights has been unlikely
outside of extraordinary circumstances. The JPO has announced, however, that rather thanrequiring the demonstration of a “valid reason,” a right(s?) holder will soon be able to revive
expired IP by showing that the failure to act in a timely manner was “unintentional.” Thelanguage of this proposed standard is similar to that used in the United States (see 35 USC§ 27), which suggests that the standard for revival has been relaxed.
Why the Change?
Japan's restoration rates for lapsed rights have been notably lower (10-20%) compared toother countries (over 90%). Japan's stringent requirements, particularly in documentary
evidence submission, posed challenges for applicants. To enhance approval rates, easeapplicant burdens, and enhance application predictability, the requirements have beenrelaxed.
Areas Affected by the Relaxation
The areas that are impacted by these relaxed requirements include:
Translation of Foreign-Language Applications (Patent Law)
Translation of International Patent Applications (Patent Law, Utility Model Law)
Priority Claims and Paris Convention Priority Claims (Patent Law, Utility Model Law,
Design Law)
Request for Patent Application Examination (Patent Law)

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Restoration of Patent Rights via Additional Payment (Patent Law, Utility Model Law,
Design Law)
Relaxation of Requirements for Trademark Rights Restoration (Trademark Law)
Special Provisions for Patent Administrators for Overseas Residents (Patent Law,
Utility Model Law)

Time Limit for Submitting Restoration Statements:
Applicants must submit a statement of reasons for recovery within two months after the
expiration of the time limit for the procedure. A one-year period (six months for
trademarks) follows for completing the procedure.
Procedures for Restoration
Applicants need to submit a Statement of Reasons for Restoration along with relevant
documents explaining the reasons for the lapse. Additionally, they may request exemption
from restoration fees if they can prove that it was not their responsibility that the procedure
could not be completed within the period.
Restoration Fees
Filing for revival of expired IP in this manner will also require the payment of a fee (JPY
212,100 for a patent applicant/patent, JPY 24,500 for a design patent/application, JPY
21,800 for a utility model/application, and JPY 86,400 for a trademark/application).
However, applicants may be exempt from fees if non-responsibility grounds can be provenwith supporting documents within two months of the procedure.
Notable Exemptions and Cases
Certain situations may not qualify for restoration, particularly those deemed as wilful
failure to comply. Examples include internal policy changes post-expiration, delayed
payments, and business decisions based on financial circumstances.
Impact of COVID-19
Special provisions address cases affected by the COVID-19 pandemic, providing relief andflexibility in procedures.
Changes in International Applications
Japan has also relaxed requirements for international applications under the Patent
Cooperation Treaty, allowing for unintentional lapses.
Final Considerations
While these changes aim to facilitate procedures, applicants must adhere to guidelines
diligently. Relief may not be guaranteed in all cases, especially those involving deliberatedelays or non-compliance.
In conclusion, Japan's relaxation of requirements for restoration of rights marks asignificant shift towards a more accessible and flexible system, benefiting applicantsseeking to navigate patent, utility model, design, and trademark procedures with greater
ease and efficiency. These adjustments not only simplify processes but also contribute toJapan's broader goal of fostering innovation and protecting intellectual property rights in
an increasingly globalized world.
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About

Contact

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
Beijing:
Times Fortune World Tower 2,
Room 2926, No.1 Hangfeng Road,
Fengtai District, Beijing 100070,
China
Main Line: +86-10-5365-6966

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