SONODA & KOBAYASHI Japan IP News Bulletin

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Japan IP News Bulletin

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JUNE 2018

NEWS ABOUT Sonoda & Kobayashi

20th anniversary of Sonoda & Kobayashi at Park Hyatt - What a party !- June 1, 2018

We are pleased to announce that Sonoda & Kobayashi is celebrating its 20th anniversary thisyear! Our team would like to take this opportunity to thank you sincerely for your continuous
support over these last two decades. We remain dedicated to providing you with the bestexpertise in protecting your IP rights in Japan, and we look forward to reinforcing our ties withall of you.

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On this occasion, we organized a competition among our members to create the 20thanniversary logo. We hope you like it.

Webinar – Patents: opposition proceedings and nullity actions – a comparison between
Europe and Japan - April 27, 2018
At the end of April, we had the chance to present a Webinar together with Dr. Robert Börner
from the German office of the European firm Murgitroyd. Thanks to our collaboration with theEU-Japan Transfer Desk, our viewers learnt practical tips on the opposition and nullity action
systems in Europe, Germany and Japan.

https://www.youtube.com/watch?v=Edh2rlrF2Ug

Webinar – Patents: Utility Models – Overview of Requirements, Procedures and Tactical Usein Europe, and Japan - June 29, 2018
We are excited to co-host another Webinar with Dr. Robert Börner from the German office ofthe European firm Murgitroyd, and with the cooperation of the EU-Japan Transfer Desk. Thistime, the Utility Model and its importance in a company’s IP strategy will be discussed. Please
register by June 28, 2018: here.

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We look forward to your presence online on Friday, 29 June, 2018.

Global Business Support 2018 – Tokyo. - July 18 to 20, 2018
Sonoda & Kobayashi is happy to announce its participation at the 2018 Tokyo Global BusinessWeek Exhibition. This is a great opportunity for Japanese companies to expand overseasbusiness. Such an expansion requires legal advice and we are ready to help any company in its
growth by providing the best expertise in the IP domain.
http://expo.nikkeibp.co.jp/gbw/gbs2018/en/

General Data Protection Rules - May 25, 2018

It is essential for us to respect the European Regulations concerning our European clients’
database. The GDPR came into force on May 25, 2018 and our firm is committed to following it
scrupulously.
https://ec.europa.eu/commission/priorities/justice-and-fundamental-rights/dataprotection/2018-reform-eu-data-protection-rules_en
For more details, please contact us.

LATEST IP NEWS IN JAPAN

Extension of Grace Period in Japan for Patent and Design Applications - May 30, 2018
The grace period for filing a Utility Model, Patent or Design Application following a pre-filingdisclosure was extended as of June 9, 2018 from 6 months to 1 year. As of June 9, 2018, anyutility model, patent or design invention is deemed to be novel if an application is filed within
12 months from publication occurring on or after December 9, 2017.

http://www.jpo.go.jp/shiryou/kijun/kijun2/ishou_reigai_encho.htm

Strengthening of the Requirements for Filing a Divisional Trademark Application in Japan May 30, 2018
According to the current Trademark Law, when an applicant files a divisional application, thedate of the new (child) application is deemed to be the date of the parent application.
It is clear this retroactive date should not apply to applicants who have failed to pay annuities
or other required fees for the parent application.
Pursuant to the new reform, only applicants who have paid all required fees for a parent
application will enjoy the benefit of the retroactive application of the parent application datewhen filing a divisional application.

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This reform will be applied to divisional trademark applications filed on or after June 9, 2018.
http://www.jpo.go.jp/seido/s_shouhyou/bunkatu_kyouka.htm

JPO releases the “Guide to Licensing Negotiations involving Standard Essential Patents” June 5, 2018
The JPO has released a final version of its “Guide to Licensing Negotiations Involving Standard
Essential Patents”. The Guide is aimed to be voluntary, but to have international credibility. It
will continue to be reviewed as appropriate.
http://www.jpo.go.jp/torikumi_e/kokusai_e/seps-tebiki_e.html
http://japanip.blogspot.com/2018/05/

Japanese patent applications in Israel - May 6, 2018
“Only Japan among non-European countries has a higher patent applications per million ofpopulation rate at the EPO than Israel”. But you have to square with the political and social
situation…
http://www.iam-media.com/Blog/Detail.aspx?g=9bd4f88b-dc38-4353-8d44-74900eda1348Broadcom hits Toyota with US patent suit, signaling auto licensing ambitions - May 8, 2018
This case shows how a company could let another one infringe its patent for years before goingagainst the alleged infringer and forcing a license agreement.
http://www.iam-media.com/Blog/Detail.aspx?g=a7f2fe14-362e-42d0-aa7b-0bbcf75563eb

What about 3D Trademarks registration in Japan? - April, 2018
Read about the Kikkoman Company’s case, to understand how previous and current use of your3D trademark is important to acquire distinctiveness in order to protect it.
https://trademarklawyermagazine.com/trademark-registration-for-kikkomans-soy-sauce3d-bottle/

The interesting JPO's point of view about renowned trademarks in Adidas vs Xiat - March 30,
2018
To prevent confusion in consumers’ minds, examiners and judges normally condemncompanies that register trademarks that look like very renowned trademarks, even if the latteris only protected in limited categories of good and services. But in this case, the JPO took has acompletely different point of view. Indeed, The JPO considered that, because of the famousnessof the trademark, consumers will not be confused even if the two figurative trademarks arevery similar.
Opposition case no. 2017-900038, Gazette issued on March 30, 2018.

http://shohyo.shinketsu.jp/originaltext/tm/1337218.html
The Tokyo District Court made an interesting decision wherein the court ordered damage
compensation to the plaintiff of a patent infringement lawsuit: Sprew vs Advanex - April,
2018

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SONODA & KOBAYASHI Japan IP News BulletinPage 5 of 6This decision includes two rare holdings: denial of inventorship and finding of tort in filing apatent infringement lawsuit. This seems to be the second case after Obayashi Seiko v AppleTDC H24 (wa) 10567 wherein the court held that a patent was invalid for the reason that theinventorship was fraudulent. Tort by an attempt to enforce right had been judged by theSupreme Court of Japan in S60 (o) No. 12 and H7 (o) No. 160. SEL v ChiMei was somewhat
related.
https://innoventier.com/archives/2018/03/5346

IP Stars rankings - April, 2018
Sonoda & Kobayashi is part of the IP Stars rankings of Japanese Intellectual Property LawFirms.
https://www.ipstars.com/firms/sonoda-and-kobayashi-intellectual-property-lawfirm/f-2869

Find one of our Patent Attorneys in the Global IP Experts List - May, 2018
Dr. Toshiyasu Ishioka, Partner and head of the Chemistry, Biotechnology and Pharmaceuticals
department, is listed by Global IP experts. He has extensive experience in pharmaceuticals,
biotechnology, and chemistry for leading global companies. He is also an expert in patent termextension, double patenting, and due diligence.
http://www.globallawexperts.com/AdminProfilePreview.aspx?PID=5548

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

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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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