Japan IP News Bulletin

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Issue #1 March 16, 2016

Sonoda & Kobayashi IP Group is pleased to present this inaugural issue of the Japan IP NewsBulletin. The Japan IP News Bulletin will be published bimonthly with brief summaries of thelatest IP news from Japan. Please email us at newsletter@patents.jp for details about any topic.

IP PROSECUTION AND PROCEDURES
Summary of New Procedures with Accession to New Treaties for Applicants
domiciled outside Japan
In preparation for Japan’s accession to the Patent Law Treaty (PLT) and the Singapore Treaty onthe Law of Trademarks (STLT) in 2016, the Act to Partially Amend the Patent Act etc. will takeeffect on April 1, 2016. Major changes are described below. Other details to follow.
Patents If no specification is attached to a patent application, the filing date will be recognized
if a statement is made in the application that a prior patent application (including a foreignapplication), filed by the same applicant, is to be referenced. The specification and anynecessary drawings must be submitted within 4 months from the filing date with an additional
fee of JPY 14,000.
Patents The period for response to a Notice of Reasons for Rejection will be extendable evenafter the original deadline. As long as no other extension has been obtained, request forextension may be made within 2 months after the original deadline, and the extension is for 2
months from the original deadline. No further extension is possible.
Trademarks The period for response to a Notice of Reasons for Rejection will be extendable
even after the original deadline. Request for extension may be made within 2 months after theoriginal deadline, and the extension is for 2 months from the original deadline.
Patents A translation of a foreign-language application can be submitted even after thedeadline. The translation must be submitted within 2 months from the date of receipt of a JPO
notice to submit the translation.
Patents Utility Models A priority document can be submitted even after the deadline. Thepriority document must be submitted within 2 months from the date of receipt of a JPO notice tosubmit the priority document.
[Original Announcement (in Japanese): JPO Website, Feb. 10, 2016]
Third Party Can Confirm Patent Opposition
The “Patent Opposition Q&A” published by the JPO has been updated.
According to the Q&A, a third party may confirm whether or not documents such as a Patent
Opposition have been submitted in connection with a patent, by performing a history information
search on J-PlatPat (although updates about submitted documents may take three weeks). In
order to view the contents of submitted documents, a browsing request must be submitted to theJPO.
[Original Announcement (in Japanese): JPO Website, Feb. 22, 2016]
Statistics on JPO Applications and Registrations
Monthly statistical data are updated at the JPO website with a delay of a few months, including
the numbers of patent, utility model, design and trademark applications filed, the numbers ofregistrations, the numbers of trials and appeals etc.
Data for December 2015 is here.
[Original Announcement: JPO Website, Feb. 16, 2016]

LITIGATION
Japanese Company Takes a Bite Out of Apple – “US Jurisdiction” Agreement
Invalid, Case to be Tried in JapanApple component supplier Shimano Manufacturing sued Apple for approximately JPY 10 billion(about USD 88 million) for violation of the Anti-monopoly Act and patent infringement, theTokyo District Court ruled, in an interlocutory judgment on jurisdiction, that “the agreement
between the companies that ‘disputes will be resolved in US courts’ is invalid”, and that the casewould continue to be handled by the Tokyo District Court. The Tokyo District Court will now
judge whether or not Apple is liable for damages.
The Japanese Code of Civil Procedure provides that agreements regarding dispute venues must
be defined separately for each transaction agreement, but the agreement in question appears tohave been a general agreement to the effect that the state of California would have jurisdiction.
This is the first time an agreement between companies pertaining to international court
jurisdiction has been found invalid.
[Feb. 16, 2016]

Body Fat Analyzer Trademark – Tanita v. Omron IP High Court Finds forOmron
Omron Healthcare holds the trademark “DualScan” for a medical visceral fat measurer and sued
for invalidation of a later-registered Tanita trademark for a household weighing machine with abody fat measurer. The IP High Court found the Tanita trademark to be invalid (Heisei 27 (gyoke) 10134).
Omron initially filed a trial for invalidation at the JPO on the grounds that the designated goodsof the Tanita trademark are similar. However, the JPO dismissed Omron’s complaint, statingthat “medical and household devices differ in their manner of use and those needing to usethem”. Omron then appealed to the IP High Court for cancellation of the JPO trial decision.
The IP High Court canceled the JPO trial decision which had held the Tanita trademark to bevalid, stating that “medical and household functions are in the process of converging, and there isrisk of confusion”.
The two companies are also involved in a dispute over the design of weighing machines with abody fat measurer. In 2015, the Tokyo District Court found in favor of Omron, stating that
Tanita had infringed the design, and in January 2016, the companies settled at the IP High Court.
[Original Court Decision (in Japanese): IP High Court, Feb. 17, 2016]
Whose “Hippo”? Developer and Former Distributor Fight Over Packaging ofMouthwash
A conflict over the packaging of mouthwash which arose between Mundipharma, the US
pharmaceutical company that developed Isodine, and Meiji, the longtime Japanese distributor ofIsodine, has developed into a court battle. In an unusual situation, the groups have filed demands
for provisional injunctions against each other at the Tokyo District Court.
Isodine is a mouthwash that has been sold by Meiji for over 30 years in a familiar package
bearing the image of a hippopotamus. The manufacture/sales agreement between the two groups
will lapse at the end of March 2016, and Isodine will be sold by Shionogi Healthcare beginning
April 1. On February 9, Meiji filed a demand for a provisional injunction on acts of unfaircompetition etc. against Mundipharma at the Tokyo District Court, on the grounds that thecharacter on the package for Isodine which Shionogi plans to use is “similar to ‘Kaba-kun’ [Mr.
Hippo] for which Meiji holds the trademark”. In response, Mundipharma filed a demand for aprovisional injunction against Meiji Group at the Tokyo District Court on the grounds that “theuse of a package design using the same hippopotamus character that has heretofore been used byMeiji to sell Isodine in order for Meiji to sell a new mouthwash constitutes a violation of theUnfair Competition Prevention Act”.
[Original Press Release (in Japanese): Mundipharma Website, Feb. 26, 2016]

OTHER IP-RELATED NEWSCopyright Protection Aims for US and European Standard While Preserving
Tradition - Government Proposes Revisions After TPP Agreement

The Council for Cultural Affairs of the Japanese Agency for Cultural Affairs has decided on
proposals for revising the Japanese copyright system in view of the Transpacific Partnership(TPP) agreement.
(1) Extending the copyright protection period for music and books from the current 50years from author’s death to 70 years
Seventy years is already common in the US and Europe, so the international standard will beadopted.
(2) Introduce “statutory damages” system allowing minimum damages to be claimed even
without establishment of the amount of damages in a civil suit for copyright infringement
Concerns over the possibility of frivolous suits as in the US were addressed by not adopting
an “additional damages” system such as the treble damages system in the US, and providing
suggested rules for usage fees determined by copyright management companies.
(3) Introduce “non-complaint offenses” by which police would be able to control pirated
works even without the author filing a complaint
In order to avoid adverse effects on Japanese “otaku culture” which includes secondary
creative activity such as anime parodies, allowances were made to exclude secondary works that
do not affect the income to the original author and acts of reproducing manga in part.
The Japanese government intends to amend the copyright law at the Diet in accordance with theviews of the Council for Cultural Affairs and plans to enact the law with the enactment of theagreement, which is likely to occur in 2018 or later.
[Original News: Nikkei Asian Review, Feb. 25, 2016]
Grace Period for Loss of Novelty for Patents to be Extended to One Year,
Patent Term Extension System for Term Compensation Also to be
Introduced in Government Proposal
The Japanese government has summarized proposals for amendments to the Patent Law and
Trademark Law with the general agreement on the Transpacific Partnership (TPP) agreement.
The amendment would extend the grace period for loss of novelty, during which inventions thatwere published before a patent application was filed can be exempted from loss of novelty, fromthe current “6 months from disclosure of the invention to the filing of the patent application” to“12 months”, so as to ensure that the inventor has the opportunity to announce results inpublications or at conferences, while making it easier to file patent applications.
Additionally, in order to compensate for “unreasonable delays”, the amendment would provide asystem for extending the patent term when a patent has been registered later than 5 years fromthe filing date or 3 years from the request for examination, whichever is later, in order to ensurethat an adequate protection term is obtained.
The government aims to make a cabinet decision, submit the proposal to the Diet, and establish
the amendment within the current session.
[Original Meeting Reference (in Japanese): JPO Website, Feb. 22, 2016]

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