2019/6/10

Japan IP News Bulletin by Sonoda & Kobayashi [Issue#0]

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Issue #0 March 1, 2016
(News in the Second Half of January 2016)

Sonoda & Kobayashi IP Group is pleased to present this inaugural issue of the Japan IP News
Bulletin. The Japan IP News Bulletin will be a bimonthly publication with brief summaries of thelatest IP news from Japan. Please do email us at the address at the bottom for details about anytopic.

IP PROSECUTION AND PROCEDURES
Revision of JPO Fee Schedule, Effective April 1, 2016
The JPO fee schedule for patents and trademarks will be revised. Click here for new fee schedule
effective from April 1, 2016.
[Original Announcement: JPO Website, Jan. 19, 2016]
Change in Examination for Food Product Use Inventions
The JPO will revise the Examination Standards for Patents and Utility Models effective mid-April
2016. Under the revisions, “recitations that specify a product by referring to the manner of use ofthe product (limitations of use)”, which were not previously recognized as technical features in foodproduct inventions, will be allowable for food product inventions.
[Original Announcement (in Japanese): JPO Website, Jan. 20, 2016]
Earlier Publication of Patents
Beginning mid-March 2016, Japanese patent publications will be published about three weeks afterregistration. Previously, publication was 6 to 7 weeks after registration, but this has been shortened
to respond to the need for earlier publication.
When a registrant plans to assign or license rights, the registrant may request indication of intent toassign or license rights in the publication. The deadline for requesting this service will besimultaneous with the deadline for payment of the issue fee.
[Original Announcement (in Japanese): JPO Website, Jan. 22, 2016]
Statistical Data on Japanese Applications and Registrations
Monthly statistical data are updated at the JPO website with a delay of a few months, including thenumbers of patent, utility model, design and trademark applications filed, the numbers ofregistrations, the numbers of trials and appeals etc.
Data for September 2015 is here.
[Original Announcement: JPO Website, Jan. 22, 2016]

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2019/6/10

Japan IP News Bulletin by Sonoda & Kobayashi [Issue#0]

Changes to “Guidelines for Use of Intellectual Property under theSubscribe
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Antimonopoly
Act”
The Japan Fair Trade Commission (JFTC) has published amended “Guidelines for Use ofIntellectual Property under the Antimonopoly Act” (IP Guidelines) to clarify its position on patents
that are essential for practicing a standard (Standard Essential Patents) in view of the AntimonopolyAct.
The new “IP Guidelines” explicitly state that a patentee of a Standard Essential Patent would violate
the Antimonopoly Act if the patentee were to file suit for an injunction or the like against a party
willing to receive a license under fair, reasonable and non-discriminatory conditions (FRAND).
[Original Press Release: JFTC Website, Jan. 21, 2016]
Over 400 Patent Oppositions Filed
Under the patent opposition system that began on April 1, 2015, more than 400 oppositions werefiled by mid-January 2016. Oppositions are being examined in the order of filing.
The patent opposition system allows third parties to request revocation of granted patents, allows forquick correction of patents, and helps ensure stronger granted patents. For details about theopposition system, please see our website.
[Original Announcement (in Japanese): JPO Website, Jan. 27, 2016]
Examination and Appeal for Product-by-Process Claims
Under current procedure for appeals of decisions of rejection, the JPO will usually issue a notice of
reasons for rejection when there are claims that specify a product by a method for producing theproduct (excluding cases in which the appeal examiners are able to judge that there are“circumstances of impossibility or impracticality” without the need to ask the appellant).
The JPO has additionally announced: “However, an appeal decision may be made without issuing afurther notice of reasons for rejection if the reasons given in the decision of rejection or in a noticeof reasons for rejection after the filing of the appeal can be maintained”.
[Original Announcement (in Japanese): JPO Website, Jan. 27, 2016]
Examples of Claims Not Product-by-Process Claims
The JPO has published further examples to be added to the Examination Handbook as examples ofclaims not considered to be Product-By-Process (PBP) claims, in light of terminology used
relatively frequently in actual patent applications as well as expressions about which inquiries werereceived.
[Original Announcement: JPO Website, Jan. 27, 2016]

LITIGATIONOmron and Tanita Agree to Settlement in Weighing Machine Design Dispute
A settlement was reached at the IP High Court in Omron Healthcare v. Tanita. Omron Healthcare
sued Tanita, alleging design infringement and demanding a sales injunction and damages for thedesign of a weighing machine that is also capable of measuring body fat percentage. Details of thesettlement have not been made public at the request of both parties.
[Jan. 27, 2016]
Game Over! SCOJ Dismisses Appeal in Magicon Case. Win for Software
Companies, Including Nintendo
A coalition of 49 software companies, including Nintendo, sued for an injunction against the importand sales of a device called “Magicon” for deactivating copy protection functions of game cassettes
under the Unfair Competition Prevention Act. The Supreme Court of Japan issued decisions (Heisei26 (o) 1314, Heisei 26 (ju) 1702) dismissing appeals by sellers of Magicons. As a result, the casehas been finalized with a win for the software companies.
[Original Press Release (in Japanese): Nintendo's Website, Jan. 19, 2016]
IP High Court Finds Copyright Infringement of Travel Company Database
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Japan IP News Bulletin by Sonoda & Kobayashi [Issue#0]

In a copyright infringement case in which BroadLeaf sued Azesta on the grounds of illegally
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databaseof software intended for travel companies, the IP High Court, which was the Translate
court of second instance, issued a decision acknowledging copyright infringement (Heisei 26 (ne)10038). The victorious plaintiff said, “this is a revolutionary decision, being the first time that theIP High Court has found for copyright infringement of a database”.
[Original Press Release (in Japanese): BroadLeaf's Website, Jan. 19, 2016]

OTHER IP-RELATED NEWS
November Current Account Balance Recorded 17th Consecutive Surplus, IP
Licensing Fees Second-Highest in History
According to the international balance of payments for November 2015 announced by the Ministryof Finance Japan (MOFJ) in a news brief, the current account balance, which shows the net balanceof transactions between Japan and other countries, amounted to JPY 1.1 trillion (USD 10.1 billion),recording a surplus for the 17th consecutive month. The surplus increased JPY 0.7 trillion (USD6.2 billion) over the same month a year earlier. In the international account balance, “Fees for useof IP rights etc.” were the highest since 1996, the highest ever for November, and the second highest
for any single month.
[Original Press Release (in Japanese): MOFJ Website, Jan. 12, 2016]

NEWS ABOUT SONODA & KOBAYASHI
Please do contact us if you have any general questions about Japanese intellectual property. We canreply in English, French, German, Chinese or Korean by email, telephone, or videoconference.

Our Firm
SONODA & KOBAYASHI, an intellectual property law firm, offers dependable legal services for intellectual
property in Japan. Our multinational team of 80 experts in technology, law, languages and international
communication has served companies from around the world and has gained a reputation for thoroughness andreliability. Our high standards, expertise and team work have defined us since the founding of our firm in 1998.
Visit Us
Sonoda & Kobayashi is located in Shinjuku, one of the main business districts in Tokyo. We welcome visitors andlook forward to seeing you at our office.

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