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March 2019
Contents - Latest IP News in Japan
1. Revision of fee for request for patent examination (effective April 1, 2019)
2. Cabinet decision on the relevant Cabinet orders for the partial enforcement of the Act of Partial
Revision of the Unfair Competition Prevention Act, etc.

3. Draft revision of examination guidelines for extension of patent term
4. Expansion of the Patent Prosecution Highway between Japan and Brazil
5. Potential revision of Japan's dispute resolution system
6. 7th Meeting of the Japan-China Joint IP Working Group and 2nd Japan-China Joint IP Seminar
Held

7. Cheaper goods in store as Japan-EU free trade pact enters into force
8. Japan to allow factory raids in patent litigation
9. WIPO Technology Trends - Arti cial Intelligence- News about Sonoda & Kobayashi Webinar - 'Patents: employee inventions - overview of legal systems and recent trends'

Sonoda & Kobyashi presents our latest webinar, titled 'Patents: Overview of Legal Systems and Recent
Trends' in collaboration with the EU-Japan Technology Transfer Helpdesk and Murgitroyd's Munich o ce.
This webinar was held on December 17th, 2018 and is now available to watch on our YouTube channel.

In this webinar, we cover the following areas:
The basics of the different legal systems on employee inventions and remuneration in Japan andseveral European jurisdictions;
Who owns the right to an invention and how a company can take possession of an invention;

What de nes adequate remuneration for inventors; andThe potential pitfalls for companies performing R&D.
Watch the full webinar on YouTube.
Welcoming our newest patent attorney!
Sonoda & Kobayashi is pleased to welcome our newest patent attorney, Ms. Rie Takahashi!
Ms. Takahashi has extensive experience in intellectual property. She started her career in IP in 2000, andworked at two IP law rms and was also an in-house patent attorney at Philips. At the IP law rms, shehandled patent applications and o ce actions for many clients, especially overseas clients, and also
engaged in writing professional opinions regarding patent validity and infringement. During her eight-year
career at Philips, she served in various roles not only for patent creation activities, but also for thoserelated to licensing and patent pools. She joined Sonoda & Kobayashi in 2019.

Read Ms. Takahashi's full pro le here.

- Latest IP News in Japan 1. Revision of fee for request for patent examination (effective April 1, 2019)
January 2019, Japan Patent O ce (JPO)The JPO has stated that, in accordance with the enactment of the Act of Partial Revision of the Unfair
Competition Prevention Act, etc. (see below), the fee for request for patent examination will be increased,
effective April 1st 2019.

Requests for examination for regular patent applications will rise from JPY 118,000 to JPY 138,000 +number of claims x JPY 4,000.

See the full list of revised fees here.
2. Cabinet decision on the relevant Cabinet orders for the partial enforcement of the Act of Partial
Revision of the Unfair Competition Prevention Act, etc.
28 December 2019, Ministry for Economy, Trade and Industry (METI)

Effective April 1st, 2019, all SMEs will be able to bene t from reduced patent fees.

The National Diet of Japan established the "Act of Partial Revision of the Unfair Competition Prevention
Act, etc.", under which the coverage for alleviating patent fees, fees for requesting examinations and fees
for ling international applications will be expanded to apply to all SMEs, beyond those covered under thecurrent measures. It will be possible for fees to be reduced by up to 75%.

To compensate for the loss in revenue of the Patent Special Account, the basic fees for application
examinations will increase (see article above).

For more information on whether your company can bene t from reduced patent fees, please contact us
at mailbox@patents.jp.

Read the METI full press release here. (English)
Read the JPO release here. (Japanese)
3. Draft revision of examination guidelines for extension of patent term
18 February 2019, Japan Patent O ce (JPO)The JPO released a statement announcing the preparation of a draft revision of the Examination
Guidelines and inviting the public to comment on the amendments.

Under the revision, requests for patent term extensions will be allowed for applicants from all technicalelds, not just pharmaceutical patents, if the patent is registered either ve years after the initial patentapplication ling date or three years after the date of ling a request for examination, whichever is later.
An extension may be requested as compensation for time lost by the applicants.

Read the public comments invitation here.
4. Expansion of the Patent Prosecution Highway between Japan and Brazil
16 January 2019, Japan Patent O ce (JPO)A METI press release has con rmed that the Patent Prosecution Highway between the national patento ces of Japan and Brazil will be expanded to cover additional technical elds, effective April 1st, 2019.

The PPH between Japan and Brazil was introduced on a pilot basis in April 2019, and has allowed
companies with Japanese patents to obtain Brazilian patents in a shorter time frame. PPH requests
usually receive nal examination results from the national Institutre of Industrial Property in Brazil (INPI)
within one year after ling, whereas for non-PPH requests, the INPI spends over 10 years on average
between receiving an application to issuing a notice of the rst examination results.

The technicalelds for PPH requests were previously limited to IT technologies and mechanicalengineering. From April 1st, 2019, the INPI will accept requests for applications in the following, additional
elds:

Macromolecularchemistry,

polymers;

Metallurgyandmaterials;

Agrochemicals,andMicroorganisms or enzymes, amongst others. For the full list of INPI eligible technical elds, click here.

The JPO will accept PPH requests for applications in all technical elds.

Read the full METI press release here.
5. Potential revision of Japan's dispute resolution system
2 February 2019, Nikkei Shinbun

According to an article published by Nikkei Shinbun, the Japan Patent O ce (JPO) is planning to amend
Japan's current dispute resolution system. The draft amendments would introduce discovery procedures,aligning Japan to the international standard followed by other large patent o ce such as those in the USA,
Germany and the UK. The revisions will also affect the way that damages are calculated.

Read the full article here (Japanese only).
6. 7th Meeting of the Japan-China Joint IP Working Group and 2nd Japan-China Joint IP SeminarHeld
24 January 2019, Ministry for Economics, Trade and Industry (METI)

METI held the 7th Meeting of the Japan-China Joint Working Group in Tokyo on January 22nd, 2019, andthe 2nd Japan-China Joint IP Seminar the following day. Participants included a range of governmental
agencies from both sides and areas of discussion included: trends of IP-related legislation; trends
concerning both countries' Unfair Competition Prevention Acts; cooperation concerning geographicalindicators; and regulations in China over licensing of technologies. Furthermore, China briefed participantson its crackdown on counterfeit and pirated products, an issue which the two sides committed tocooperate further. The next IP Working Group will be held in China in 2019.

Read the full METI press release here.
7. Cheaper goods in store as Japan-EU free trade pact enters into force
1 February 2019, The Japan TimesThe European Union and Japan have entered into an Economic Partnership Agreement, creating a free
trade area which covers approximately one third of the world's economy, according to the Japan Times.
The pact eliminates tariffs and many other non-tariff measures to encourage business investment andeffective trade, while also ensuring cooperation and intellectual property rights are protected.
Furthermore, geographical indications such as Kobe beef or Japanese sake will be recognized andprotected under the new agreement.

Read the full article here.
8. Japan to allow factory raids in patent litigation
25 January 209, Nikkei Asian Review

According to the Nikkei Asian Review, the JPO plans to create a framework allowing court-orderedinspections of facilities accused of patent infringement. The planned system would render Japan's IP
legal system somewhat friendlier towards patent holders, whereas under the current system the burden of
proof weighs heavily on the claimant. This is yet another measure intended to counter the disadvantage ofsmall business during opposition proceedings.

Read the full article here.
9. WIPO Technology Trends - Artificial Intelligence
World Intellectual Property Organization (WIPO)

The World Intellectual Property Organization released a study on Technology Trends and Arti cialIntelligence, analyzing data from patent applications and scienti c publications as its basis. After the USand China, Japan is the third most popular o ce for ling AI patents, however Japan overtakes its twocompetitors in the categories of fuzzy logic, computer vision and speech processing. In addition, 12 of thetop 20 companies ling AI-related patents are Japanese and 40% of AI patent applications that are rst
led in Japan are then subsequently led in other jurisdictions.

Read the full article here.

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