Japan IP News Bulletin

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Issue #2 March 31, 2016

IP PROSECUTION AND PROCEDURES
Revised Design Examination Guidelines for Designs with Images
The JPO has revised the design examination guidelines for designs including images. The scopeof designs including images that can be registered has been expanded, and the guidelines
concerning the judgment of creative difficulty has been clarified.
Until now, in Japan, “images recorded ex post facto on articles” such as images displayed due toan update of an electronic instrument’s preinstalled functions, and images displayed by functions
that were added by installing software on computers, could not be registered, but from now, they
can be. However, images displayed by signals from outside the article in question (e.g. theinternet) and images of content (such as games) independent of the article in question willcontinue to be non-registerable. The revised design examination guidelines will apply to thefollowing:(1) For “creative difficulty”: applications for design registration examined on or after April 1,2016; and(2) For requirements other than “creative difficulty”: applications for design registration filed on
or after April 1, 2016.
For details, see Chapter 4 of Part 7 of the design examination guidelines here.
[Original Announcement: JPO Website, Mar. 11, 2016]
Japan to Become Party to the “Patent Law Treaty” and the “Singapore
Treaty on the Law of Trademarks”
On March 11, 2016, the Japanese government formally submitted documentation to become party
to the Patent Law Treaty (PLT) and the Singapore Treaty on the Law of Trademarks (STLT) tothe World Intellectual Property Organization (WIPO). Effective June 11, 2016, Japan will
formally become party to these treaties.
Prior to this, effective April 1, 2016, it will be possible to use the various relief measures as
stipulated in these treaties (see the previous issue of this newsletter). Details to follow.
[Original Announcement: METI Website, Mar. 14, 2016]
No Change in Response Period for Notices of Reasons for Rejection Issued
after Filing Appeal of Decisions of Rejection for Foreign Applicants
From April 1, 2016, while revisions for extensions of the response period for Notices of Reasonsfor Rejection issued for patent applications and trademark applications will be implemented, theJPO issued the following advisory: “There will be no revisions concerning this implementation
for Notices of Reasons for Rejection issued after filing an appeal against Decisions ofRejection.” That is, this will not be changed:*Requests for extension must be made within the time period for responding;*For patents, a maximum extension of three months, in one-month increments, is possible;*For trademarks, a maximum extension of one month is possible;*The official fee for a one-month extension is JPY 2,100.
[Original Announcement (in Japanese): JPO Website, Mar. 10, 2016]
English Translations of Decisions for Reference
The JPO provides English translations made by human translators for decisions (appealdecisions, opposition decisions, and JPO advisory opinions) that can be referred to for legal
interpretation and understanding of JPO practice as a part of its efforts to disseminate
information internationally regarding industrial property rights in Japan. The English translations
are available here.
[Original Announcement: JPO Website, Mar. 31, 2016]

LITIGATION
Generic Anti-Cancer Drug Infringes Patented Manufacturing Method Tokyo District Court Recognizes Brand-Name Drug Maker’s Argument
In the case of an anti-cancer drug that has already been approved and sold in Japan as a genericdrug, in a patent infringement lawsuit filed by Debiopharm International SA (Heisei 27 (wa)12416), a pharmaceutical company that has Japanese patents for manufacturing methods forbrand-name drugs, against Nippon Kayaku Co. Ltd., a generic drug maker and seller, the plaintiff
Debiopharm was successful in a first hearing at the Tokyo District Court.
The drug is the anti-cancer drug oxaliplatin for rectal cancer. The defendant Nippon Kayaku,argued the following: “Debiopharm’s patented manufacturing method for the anti-cancer druglacks novelty and should be invalidated.” However, the Tokyo District Court ruled that, “Nippon
Kayaku’s anti-cancer drug is within the technical scope of Debiopharm’s invention,” and orderedNippon Kayaku to suspend the manufacturing and sale of the drug in question and to destroy theproduct. Debiopharm has similarly filed suit against 12 other generic drug makers.
[Original Court Decision (in Japanese): Tokyo District Court, Mar. 3, 2016][Original Press Release: Debiopharm Website, Mar. 4, 2016]

OTHER IP-RELATED NEWS
Second Highest Number of Import Seizures Ever - Number of Cases ofArticles Violating Intellectual Property Rights in 2015
The Ministry of Finance of Japan announced that there were 29,274 cases of customs officials
seizing articles that violate intellectual property rights such as counterfeit brand name goods in2015. This was the second highest number of such cases following the highest number ever in
2014. Of these 26,670, or 91.1% of all cases, involved imports from China.
Articles violating registered trademarks, such as counterfeit brand name articles including selfie
sticks emblazoned with counterfeit logos like “Chanel”, accounted for more than 90% of the total
number of cases and articles. The number of seized articles violating copyrights, such ascounterfeit character merchandise having forged popular characters such as “Hello Kitty”,
increased roughly three fold when compared to the previous year.
[Original Press Release (in Japanese): MOFJ Website, Mar. 4, 2016]
Opposing “Fraudulent Trademark Applications” Abroad - JPO Subsidies
for Legal Fees
From fiscal 2016, the JPO is expected to start subsidizing small and medium-size Japanesecompanies for legal fees as a policy against fraudulent trademark applications abroad.
With the proliferation of the internet, it has become easy to obtain information concerning
foreign merchandise, so “fraudulent trademark applications” abroad are increasing (fraudulent
trademark applications refer to making use of the fact that a trademark of another party is notregistered in one’s territory or country so as to, for dishonest purposes, register said trademark asone’s own). As part of its intellectual infringement prevention policy abroad from fiscal 2014,
the JPO also plans to expand its legal fee subsidy program to include “fraudulent trademarkapplications” and plans to cap its support at JPY 5 million (USD 44,000) for 2/3 of related costs
such as consultation with attorneys and lawsuit preparations from this year.
[Mar. 8, 2016]

NEWS ABOUT SONODA & KOBAYASHI
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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.
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All statements in this News Bulletin are for informational purposes only and do not constitute legaladvice. All comments herein are the opinions of the authors and do not necessarily reflect the opinionsof Sonoda & Kobayashi Intellectual Property Law. Please contact us for specific legal advice.
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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