2024/03/29 14:51

IP News Bulletin for Japan and China, March 2024

View this email in your browser

March 2024
Contents
News about Sonoda & Kobayashi
1. Sonoda & Kobayashi holds webinar on Chinese patent law implementation ruleamendments
2. Sonoda & Kobayashi participates in the Global IP Exchange 2024 in Dusseldorf
JPO and CNIPA News
1. JPO publishes additional examples on the examination of AI-related

technologies
2. JPO’s Trial and Appeal study group publishes annual report
3. CNIPA issues notice on the handling patent open licensing system
4. CNIPA introduces progress of intellectual property work in 2023 in press
conference
Latest IP News in Japan
1. Behind the Curve: Japan's Struggle with University Patents
2. Conveyor Belt Conflict: Sushi Chains Clash Over Alleged Unfair Competition

Latest IP News in China
https://mailchi.mp/2006030ad043/japan-ip-news-bulletin-17967383?e=76ba65459e

1/12

2024/03/29 14:51

IP News Bulletin for Japan and China, March 2024

1. Huawei and Amazon enter into global patent cross-licensing agreement
2. Oppo ends long-standing legal dispute with Nokia, will pay 5G royalties

IP Law Updates in Japan: Insights from Sonoda & Kobayashi
1. Patent Term Extensions (PTE) in China- News about Sonoda & Kobayashi 1. Sonoda & Kobayashi holds webinar on Chinese patent law implementation ruleamendments
On the 29th of February, Sonoda & Kobayashi held a webinar on the theme “News about
China’s Patent Term Extension, Open Permissions System, and more! Points to note on therevised Implementing Regulations of the Patent Law of China.” presented by Mr. Ma(Chinese Patent Attorney, Sonoda & Kobayashi Beijing IP Group). We extend our thanks tothe attendees of this online event.
2. Sonoda & Kobayashi participates in the Global IP Exchange 2024 in Dusseldorf
Sonoda & Kobayashi attended the Global IP Exchange, in Dusseldorf, Germany on the 11thand 12th of March. Dr. Yoshitaka Sonoda (Founder), Mr. Munenori Sakurai (Japanese
Patent Attorney), and Ms. Debora Cheng (New Zealand Lawyer, International Affairs)
represented our firm at our booth, and Dr. Sonoda gave a presentation on “Strategic use ofAdvisory Opinions of the JPO” as an official speaker. We would like to thank everyone whointeracted with us during the event.

- JPO and CNIPA News 1. JPO publishes additional examples on the examination of AI-related technologies
On the 13th of March, the JPO published new additional examples on its website on theexamination of AI-related technologies.
As technologies that relate to artificial intelligence continue to develop further and patentapplications for these technological fields continue to increase, the JPO continues to add
new types of examples that were not covered by existing cases.
Further information can be found here in the presentation describing the new cases,
as well as here in the updated examination handbook that contains these 10 cases.
2. JPO’s Trial and Appeal study group publishes annual report
On March 22nd, the Trial and Appeal Study Group of the JPO published its annual report forthe 2023 financial year.
https://mailchi.mp/2006030ad043/japan-ip-news-bulletin-17967383?e=76ba65459e

2/12

2024/03/29 14:51

IP News Bulletin for Japan and China, March 2024

In this study group, participants came together to study trial and appeal decisions as wellas court decisions. Participants included corporate IP professionals, patent attorneys, andattorneys at law, as well as professionals from the public sectors such as chief
administrative judges and administrative judges.
For 2023, the group studied 4 fields of patent applications (Machinery, Chemistry 1 andChemistry 2, and Electricity) as well as general issues related to designs and trademarks.
The study group had in-depth discussions on specific cases in the above fields and shared
their perspectives from their different positions.
The results of the group’s discussions were based on “a multifaceted consideration ofissues and points of contention that are important in practice and lead to concrete
understanding or clarification of the criteria for determination” (can be found in part two of
the report linked below). These results were then used by the JPO’s administrative judges,
examiners, and other officials at the JPO.
An English summary of this year’s report is available here.
3. CNIPA issues notice on the handling patent open licensing system
From January 20, 2024, the CNIPA has started examining the patent open license
declaration submitted by the patentee in accordance with Article 50 of the Chinese Patent
Law and Articles 85 to 88 of the Detailed Rules for the Implementation of the Patent Law
and Chapter 11 of Part V of the Patent Examination Guidelines.
1. Timing of submission
After the publication announcement of the grant of the patent right.
2. Submission method
In electronic form.
3. Submission of materials
Including signed or sealed declaration of the patent open license, a brief explanation of thebasis and method of calculating royalties, etc (Section 3.3 of Chapter 11 of Part V of the
Patent Examination Guidelines).
4. Fees
If the patentee submits a request for the filing of a patent open license exploitation
contract in accordance with the provisions of Article 51, Paragraph 2 of the Patent Law and
Article 87 of the Detailed Rules for the Implementation of the Patent Law, and is granted
permission for filing, the CNIPA shall, after the implementation of the patent fee standards
and payment reduction policies issued by the development and reform department of theState Council, the finance department and the CNIPA, implement a reduction in thepayment of the patent annuity fee that has not expired from the date of filing of thecontract during the implementation period of the patent open license in accordance with
Section 8 of Chapter 11 of Part V of the Patent Examination Guidelines.
5. Review and notification
https://mailchi.mp/2006030ad043/japan-ip-news-bulletin-17967383?e=76ba65459e

3/12

2024/03/29 14:51

IP News Bulletin for Japan and China, March 2024

If the patent open license statement meets the requirements after examination, the CNIPA
shall issue a notice of approval of the announcement of the patent open license statement.
6. Registration and announcement
Matters related to the declaration of patent open license shall be registered in the patentregister and published in the patent gazette, including main classification number, patent
number, open license declaration number, patentee, title of invention, filing date, date of
grant announcement, payment method and standard of patent license royalties, patent
license term, contact information of the patentee, effective date of the declaration of open
license, etc.
7. Remedies
If the patentee is not satisfied with the decision on whether to reduce the annual fee during
the implementation period of the patent open license, the patentee may make a statement
to the CNIPA, consult by telephone, or apply for administrative reconsideration.
Further information can be found here. (Chinese)
4. CNIPA introduces progress of intellectual property work in 2023 in press conference
On January 16, 2024, the CNIPA introduced the progress of intellectual property work in
2023.

1. Patents
921,000 invention patents, 2.09 million utility model patents and 638,000 design patents
were authorized throughout 2023. 65,000 patent re-examination cases were concluded,
and 7,700 invalidation cases were concluded. 74,000 PCT international patent applications
were received. Chinese applicants filed 1,814 international Hague design applications.

2. Trademarks
There were 4,383,000 registered trademarks throughout the year of 2023. The examinationof 153,000 trademark opposition cases was completed, as well as the trial of 373,000
trademark review cases. 6,196 Madrid applications for international trademark registration
were received from Chinese applicants.
By the end of 2023, the number of valid trademark registrations in China will be at
46,146,000.

3. Geographical indications
During the year, thirteen geographical indication products were granted, and 201
geographical indications were granted for registration as collective trademarks andcertification trademarks. 5,842 business entities have been granted to use special
geographical indications.
By the end of 2023, China had granted a total of 2,508 geographical indication products,
granted 7,277 geographical indications as collective trademarks and certification
trademarks, and the total number of business entities for geographical indications has
https://mailchi.mp/2006030ad043/japan-ip-news-bulletin-17967383?e=76ba65459e

4/12

2024/03/29 14:51

IP News Bulletin for Japan and China, March 2024

reached 26,000, with an annual output value of more than 800 billion yuan.

4. Layout design of integrated circuits
In the whole year, 11,000 integrated circuit layout design certificates were registered andissued.
By the end of 2023, a total of 72,000 integrated circuit layout designs have been issued in
China.

5. The enforcement of intellectual property rights
The registered amount of patent and trademark pledge financing was 853.99 billion yuan,
benefiting 37,000 enterprises. Statistics show that in 2022, the added value of China's
patent-intensive industries will be 15.3 trillion yuan, an increase of 7.1% over the previous
year (before deducting price factors), and the proportion of GDP will rise to 12.7%.
Further information can be found here. (Chinese)- Latest IP News in Japan 1. Behind the Curve: Japan's Struggle with University Patents
Nikkei Asia, March 9, 2024
On the 9th of March, Nikkei Asia reported on the struggle of Japanese universities tocommercialize their researched intellectual property, despite having a comparable numberof patents to American universities.
According to the article, Japanese universities struggle to effectively utilize theirintellectual property due to a lack of support systems connecting research outcomes tobusinesses. This deficiency is highlighted by the fact that top Japanese universities earn
only 2% as much from patents as their U.S. counterparts.
Unlike some overseas universities, where experts assist in identifying commercial potential
in research, Japanese institutions face staffing shortages and limited funding for patent
strategies and commercialization. Despite having a comparable number of patents to
American universities, Japanese institutions generate significantly less revenue from them.
Few Japanese universities offer support programs for researchers looking to startbusinesses, and only a small percentage have patent attorneys. This disparity in support
infrastructure hampers researchers' ability to engage in both research and businessdevelopment. In contrast, leading U.S. and European universities benefit from robust
support systems for patents and business strategies, contributing to the success ofstartups and the proliferation of unicorns in those regions.
The Japanese government's focus on research programs leaves a gap in funding formechanisms linking research outcomes to revenue generation. Experts emphasize theneed to bolster support for commercializing research findings and to cultivate individuals
https://mailchi.mp/2006030ad043/japan-ip-news-bulletin-17967383?e=76ba65459e

5/12

2024/03/29 14:51

IP News Bulletin for Japan and China, March 2024with expertise in both technology and business to drive innovation and entrepreneurship inJapan.
Further information can be found here. (English)

2. Conveyor Belt Conflict: Sushi Chains Clash Over Alleged Unfair Competition
NHK, March 12, 2024
On the 12th of March, NHK reported on a conflict between two conveyer belt sushi chains,
stemming from a potential violation of the Unfair Competition Prevention Act.
Kappa Sushi and Hama Sushi are two competing sushi restaurant chains in Japan. The
parent company of Hama Sushi, Zensho Holdings Co., filed a suit in the Tokyo District
Court against Kappa Sushi’s parent company, Kappa Create Co., its former president Koki
Tanabe (47) and another entity.
Zensho alleges that Tanabe, formerly an executive at Zensho prior to working for Kappa,
illegally took trade secrets such as cost data and an earnings statement of Hama Sushi
and shared them within Kappa. Zensho claims that this has caused them a loss of over 6.3
billion yen and is seeking 500 million yen in damages from Kappa Sushi, Tanabe and theother party, and also demands the destruction of the information allegedly taken.
If Kappa Sushi did violate the Unfair Competition Prevention Act, this unauthorizedacquisition and use of sensitive business information could provide Kappa Sushi with an
unfair advantage in the market by potentially allowing them to gain insights into Hama
Sushi's strategies, pricing, or operations. Such actions could undermine fair competition in
the sushi restaurant industry by giving Kappa Sushi an unfair edge over its competitors,
including Hama Sushi.
The potential violation of the Unfair Competition Prevention Act, for which Kappa Create
was fined, underscores the legal repercussions of engaging in practices that distortcompetition by unlawfully accessing and exploiting confidential business information fromcompetitors. The legal action taken by Hama Sushi’s parent company, seeking
compensation for damages resulting from this alleged unfair competition, reflects theseriousness with which such breaches are regarded and the efforts made to protect faircompetition within the industry.
Further information can be found here. (Japanese)- Latest IP News in China 1. Huawei and Amazon enter into global patent licensing agreement
Reuters, March 5, 2024
Reuters reported that on March 5th, Huawei Technologies of China and the U.S. tech giant
Amazon have announced the signing of a multi-year agreement for patent licensing,marking the resolution of their ongoing litigation. While specific terms of the deal remain
https://mailchi.mp/2006030ad043/japan-ip-news-bulletin-17967383?e=76ba65459e

6/12

2024/03/29 14:51

IP News Bulletin for Japan and China, March 2024

undisclosed, Alan Fan, who heads Huawei's intellectual property rights department,
revealed that the Chinese company has withdrawn its lawsuits against Amazon in Germany
concerning patented technology related to Wi-Fi and video playback.
The backdrop of strained relations between the United States and Chinese telecom
companies, such as Huawei and ZTE, has been marked by regulatory actions, including thebarring of Chinese firms from the U.S. market over data security concerns. This has
necessitated the removal of Huawei and ZTE equipment from U.S. networks by American
carriers, further exacerbated by restrictions on U.S. firms supplying components to Huawei,
impacting its smartphone business.
Nevertheless, Fan emphasized that the patent licensing agreement signifies a noteworthy
collaboration between American, Chinese, and other global companies in standards andpatent licensing, despite geopolitical tensions.
Additionally, Huawei announced another cross-licensing patent agreement with the
Chinese smartphone manufacturer Vivo, covering communication technologies,
particularly 5G. This move echoes Huawei's existing patent arrangements with other
Chinese smartphone giants such as Xiaomi and Oppo.
Further information can be found here. (English)
2. Oppo ends long-standing legal dispute with Nokia, will pay 5G royalties
South China Morning Post, February 16, 2024
On February 16th, The South China Morning Post reported that Oppo and Nokia haveresolved their global patent dispute with a licensing agreement, ending years of legal
battles over cellular patent rates. The disagreement, spanning 12 countries since 2021,
resulted in bans on Oppo's smartphone sales in some markets where courts ruled in favorof Nokia. Following a recent ruling in China, Oppo petitioned for lower royalty rates for
Nokia's patents, which was supported by a Chinese court.
Under the newly announced agreement, Oppo will pay royalties to Nokia for using its 5G
and other cellular technology patents. Both companies will drop pending litigationworldwide. However, specific terms and fees of the deal remain confidential.
This agreement is crucial for Oppo, the fourth-largest smartphone brand globally, as it aims
to resolve legal challenges and boost sales amidst tough competition. Meanwhile, Nokia
has also struck similar licensing deals with other smartphone makers, including Honor, tosafeguard its intellectual property rights.
Further information can be found here. (English)- IP Law Updates in Japan: Insights from Sonoda & Kobayashi 1. Patent Term Extensions (PTE) in China
Yanhui Wang (Chief Attorney (Chinese Law), Sonoda & Kobayashi Beijing IP Group)https://mailchi.mp/2006030ad043/japan-ip-news-bulletin-17967383?e=76ba65459e

7/12

2024/03/29 14:51

IP News Bulletin for Japan and China, March 2024

The fourth amendment to Chinese patent law (Article 42) introduced PTE into China for the
first time in 2021, and 2 years later, China revised the Implementing Regulations of the
Patent Law and the Guidelines for Patent Term Extensions (PTE) which entered into force
on January 20, 2024.
CNIPA has yet to publish the official fees for PTE. Examinations will begin once the official
fees are published.
This article will describe an extensive overview of PTE applications, including ourrecommendations.
Deadline for filing PTE application
Within three months from the (drug) approval date.
Please note that drugs are limited to those approved after June 1, 2021.
The issue date of the patent must be earlier than the drug approval date in China.
Applicant eligibility
Only patentees can file the PTE application.
If the patentee is not the holder of the marketing approval, then written consent from theholder of the marketing approval shall be requested by CNIPA.
Allowable types of drugs
PTEs are available for drugs in China on new drugs and improved new drugs that havebeen approved for the first time in China according to Article 42(3) of the Chinese Patent
Law.
However, neither the Patent Law nor the Implementing Rules gives a specific definition for“new drugs”. Following the provisions of the Measures for the Administration of Drug
Registration (2020), “new drug” refers to innovative drugs. This refers to new drugs thathave not been approved in China or abroad, meaning Class 1 drugs of drug registration
classification, which are “new globally”, not just new in China.
“Improved new drugs” will be eligible if the classes listed on the drug certificates issued by
NMPA fall into one of the following categories (Guideline Part 5, Chapter 9, Section 3.4).
Chemical drugs of class 2.1 that perform esterification or salification on known
active ingredients
Chemical drugs of class 2.4 (i.e. drugs containing known active ingredients for new
indications)
Preventive biological products of class 2.2 that are vaccines improved against
bacterial or viral strains
Therapeutic biological products of class 2.2 for new indications
Traditional Chinese medicine of class 2.3 (i.e., traditional Chinese medicine withincreased indications).
The simplest way to know if the drug is eligible for PTE or not is to check the drug
certificates issued by NMPA. If the classes that have been approved by NMPA belong tothese five classes, then the drug is eligible for PTE in China.

https://mailchi.mp/2006030ad043/japan-ip-news-bulletin-17967383?e=76ba65459e

8/12

2024/03/29 14:51

IP News Bulletin for Japan and China, March 2024

It can be understood that medical devices/instruments/equipment cannot be the subject
matter for a PTE application.
Moreover, drugs eligible for PTE are those covering an active pharmaceutical ingredientthat is approved for marketing for the first time in China (“new API”).
Allowable Patents
PTE is available to patents related to products, preparation methods, or medical uses of
new drugs (Art. 42(3), Reg. 80).
Patents can claim a product (including compound, formulation, crystal, composition etc.),
medical uses (including both first and second medical uses), or a preparation method(including method of manufacture)
Moreover, although this is not explicitly described in the CNIPA Examination Guidelines,
starting material, intermediate patents, and administration methods are not eligible for PTE
in China.
We note that the medical use must be in the form of Swiss-type claims, as treatment anddiagnosis methods are not patent-eligible in China.
For example, the recommended format for medical uses by CNIPA is:“A use of substance A in the manufacturing of a medicament for treating indication X."
While the recommended format for medical uses by JPO is:“A medicament for treating indication X, the medicament comprising substance(s?) A.”
Scopes of Patents to be Extended (Guideline Part 5, Chapter 9, Section 3.5)
The protection scope during the compensation period does not directly extend to theoriginal patent rights.
The protection scope of claims related to new drugs shall be based on the structure,composition, and content of the new drugs approved by NMPA, as well as the approved
production process and indications.
The protection scope of product claims is limited to the approved new drugs for theapproved indications.
The protection scope of medical use claims is limited to the approved indications of
the approved new drugs.
The protection scope of preparation method claims is limited to production
processes filed with the NMPA for the approved new drugs for the approved
indications.
For example:
The approved new drug: Class 2.1 of chemical drugs
The active pharmaceutical ingredient: A1
The medical use approved: The treatment of asthma

https://mailchi.mp/2006030ad043/japan-ip-news-bulletin-17967383?e=76ba65459e

9/12

2024/03/29 14:51

IP News Bulletin for Japan and China, March 2024

The patent claims involve compound A1 of the general formula.
In this case, during the compensation period, the scope of protection of this patent islimited to "the use of the treatment of asthma of compound A1" or "compound A1 for thetreatment of asthma.”
So generic drug companies may only need to remove the first indication in the label toovercome the possibility of infringement and the limitation of compound patents.
Term of Extension
PTE = (China marketing approval date – the filing date of the Chinese patent) – 5 years
The term is extendable up to a maximum of 5 years, and less than 14 years after marketing
approval.
Requirements
Here are the requirements for PTE in China. Failure to observe these may be a reason forrejection of the application.
1. The patent term must not have expired.
2. The new drug must fall within the scope of the patent.
3. The patent must not have been previously granted one PTE, which means eachpatent can only be extended once (Reg. 81)
4. If one patent covers multiple drugs, a PTE request can be based on one drug only
(Reg. 81);
5. If the drug is protected by multiple patents in China, PTE is granted for only one ofthe patents in the patent family covering the drug (Reg. 81).
For example, if a drug A1 involves multiple patents B1, B2... Bn, the patentee can only
choose one of the patents (such as B1) for the PTE application. If these patents B1, B2...
Bn, belong to different patent owners, then it is completely unclear and unknown whichpatent owner the PTE should be granted to. However, according to the consultation
window of CNIPA, these patent owners need to negotiate which one should be chosen for
PTE application. Otherwise, the PTE may be granted to the patentee who filed the earliest
application.
On the other hand, if a patent, such as B2, covers more than one drug (such as a
combination formula A1, A2... An with different claims involving different compounds), andall of these drugs have been approved by the NMPA, the patentee of patent B2 can only
choose one of the drugs (such as A2) for the PTE application.
Documents Needed for PTE Application
1. Request letter: the approval information and the patent information.
2. A copy of the approval certificate.
3. Written statement: if the patentee is not the same as the holder of the drug
marketing license.
4. A part of the approval application documents proof materials including relevantmaterials such as description, production processes, quality standards, etc.
5. Explanation of compensation reasons based on supporting materials, such as:

https://mailchi.mp/2006030ad043/japan-ip-news-bulletin-17967383?e=76ba65459e

10/12

2024/03/29 14:51

IP News Bulletin for Japan and China, March 2024

Identifying the claims related to drugs and provide specific explanations of theclaims including drug-related technologies based on the proof.
Calculating the basis for requesting PTE.
Clarifying the scope to be protected during the compensation period.
The required materials may vary depending on the approved new drugs for marketing andthe types of patent claims for compensation requested. The CNIPA has published formats
for reference, and we are also happy to assist with this if needed.
Examination and remedy
The CNIPA will give at least one opportunity for the applicant to make remarks andamendments. If there is any disagreement between a patentee and CNIPA regarding theeligibility or length of a term extension, the patentee or interested parties can apply foradministrative reconsideration by the CNIPA.
Subsequently, any party dissatisfied with the reconsideration decision can file a lawsuitwith a court within fifteen days of receiving the reconsideration decision.
Access to PTE Application Documents by a Third Party
After PTE is granted, the CNIPA will publish the relevant matters in the patent bulletin andpatent publication documents, including the IPC code, application date, patent number,
grant date, drug name, approved indications, the original patent term, and the new patentterm after extension.
The documents filed for the PTE application (for example, filed Remarks, issued Office
Actions and records of interviews with the Examiner) are not available so far.
If a third party wishes to access the PTE application documents, they can access the
CNIPA system here to check it.
If the materials involve trade secrets, the relevant content may be redacted, but this shallnot affect the judgment of whether the specified claims include new drug-related technicalsolutions according to the request of guidelines.
PTE in China is a new system, and many things are not clear yet, even for the CNIPA. We
will continue to monitor the new changes very closely and check for new updates.
If you have any questions, please feel free to contact us at mailbox@china.patents.jp.

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

https://mailchi.mp/2006030ad043/japan-ip-news-bulletin-17967383?e=76ba65459e

11/12

2024/03/29 14:51

IP News Bulletin for Japan and China, March 2024

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

Copyright © 2016-2024 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/2006030ad043/japan-ip-news-bulletin-17967383?e=76ba65459e

12/12