June 2019


On June 21, 2019, S&E sponsored a US IP law seminar titled, “Applying Extraterritoriality of US Patents: Effect on the Patent Practices of Japanese Companies.”

The speakers were Professor Toshiko Takenaka who, while teaching at prominent universities such as Keio University Law School and Washington University School of Law, is involved in the acquisition and exercise of patent rights at the Seed IP Law Group in Seattle, and Mr. Paul T. Meiklejohn (US Attorney at Law), who is an adjunct professor at the University of Washington School of Law and is a partner in Dorsey & Witney’s Intellectual Property Litigation Practice Group.

In recent years, the tendency of courts has been to recognize the extraterritorial reach of U.S. patents. Last year, the U.S. Supreme Court supported a jury verdict that the defendant should award $93.4 million for worldwide damages caused by their infringement act where they shipped a component to be used in a patented invention to the United Kingdom. As this case indicates, there is an increase of risk for certain acts in Japan to be regarded as an infringement of a patent in the US. While it is necessary to take measures to avoid this infringement, we also need measures to acquire the right to positively utilize US patents for which the potential amount of damages is high.   

At the seminar, Ms. Takenaka gave a presentation on the “Territoriality Principle of US Patent Law and Applying Extraterritoriality – Comparative Study” and explained the basic ideology which applies extraterritoriality of US patent law, and direct and indirect infringements of U.S. patent law in comparison with German and Japanese patent laws. In addition, Mr. Meiklejohn gave a presentation on the “Direct and Indirect Infringement of U.S. Patents” and introduced many judicial precedents of direct and indirect infringements under 35 U.S.C. Section 271. He also explained the know-how to avoid such infringements and to write method and system claims to use the applied extraterritoriality.

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Revision of the Patent Act – Patent Disputes and Extension of the Scope of Protection for Designs

The draft law for the partial revision of the Patent Act was passed and adopted by the Cabinet on May 10, 2019 and announced on May 17, 2019. This revision will create a new system for collecting evidence in a potential infringement matter where an expert will have the opportunity to carry out an on-site investigation which is necessary for the provision of evidence in an infringement case. In addition, the calculation guidelines for compensation amounts will be revised (the same changes will also be made to the Utility Model, Design and Trademark Acts) and the scope of protection for designs will be extended.

The below-mentioned revisions are to be implemented within one year from the announcement.

I. Partial revision of the Patent Act

1. Established a system where neutral experts can carry out on-site investigations

A system will be created under which, in the event of suspicion of a patent infringement and after the filing of an infringement action, the aggrieved party may request that neutral experts appointed by the court carry out on-site investigations at the production facility of the infringing party which are necessary for the provision of any evidence of infringement and to submit a report to the court (Art. 105bis Patent Act and others).

2. Revised the calculation guidelines for compensation amounts

a) Previously, it has not been possible for a patentee to claim as damages a portion of the patent infringer’s profits which exceeds the patentee’s production capacity. With the new amendment, it will now be assumed that the infringer had a license for said portion, and the patentee can claim damages corresponding to the license fee (new Art. 102 Par. 1(2) Patent Act).

b) For the calculation of the damages corresponding to the license fee, the court will consider a license fee which would have been negotiated on the presumption that there had been an infringement (i.e., possibly a higher license fee than that of a normal license agreement) (new Art. 102 Par. 4 Patent Act). These changes will also be made to the Utility Model Act, the Design Act and the Trademark Acts.

II. Partial revision of the Design Act

1. Extension of the scope of protection

Images that are not applied to objects, e.g. images stored in a cloud and made available via a network, and exterior views of buildings or interior designs etc. can now also be protected as designs (Art. 2 Design Act).

2. Revision of the system for related designs (system that allows the registration of designs that are similar to one’s own design application or registered design (principal design)) (Art. 10 Design Act)

It is now possible to register multiple designs developed under a unified concept.  The new changes include: a) the time limit for filing related designs is extended to 10 years from the filing date of the principal design (previously it was until disclosure of the registered principal design, i.e., about 8 months from the filing date); and (b) designs similar only to related designs shall also be granted registration.

3. Change of term

The term is extended from “20 years from the date of registration” to “25 years from the filing date” (Art. 21 Design Act).

4. Simplification of the application procedure

a) Multiple applications may be filed; i.e., several designs may be combined in one application.

b) Classifications will be abolished in order to allow a flexible designation of the subject-matter.

5. Extension of the definition of indirect infringement

By defining subjective factors such as “the knowledge that an object can be used for the working of a design”, actions such as the manufacture and import of infringing products that have been disassembled into individual parts in order to escape control can now also be controlled.

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On June 6, 2019: S&E Held a Study Group on Intellectual Property in China and Taiwan.

On June 6, 2019: S&E held a study group on the Intellectual Property in China and Taiwan at Sonderhoff and Einsel’s firm office.

Ms. Xiaofen Wu (Chinese patent attorney) of S&E gave a presentation on the “Patent Linkage System in China and Taiwan”, in which many Japanese pharmaceutical companies have shown great interest.

In China, which ranks second after the United States in the global pharmaceutical market, reforms of the pharmaceutical industry have been progressing to expand and develop the industry.

In this study group, Ms. Wu explained the situation surrounding the pharmaceutical industry in China, the latest information on the legal system related to pharmaceutical patents, and the patent linkage system in detail. She also described a system in Taiwan which was introduced for the purpose of participating in the TPP (Trans-Pacific Partnership) in the future.

The study group lasted about an hour, and given that there was a lively exchange of questions and opinions, we believe this study group was highly successful. S&E also had a reception after the study group to allow participants further opportunities for communication with Ms. Wu and our other patent attorneys.

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On May 28, 2019: S&E gave a presentation at the LESI 2019 – Annual Conference Yokohama Japan –

The Licensing Executives Society International (LESI) held an annual conference in Yokohama, Japan at the Pacifico Yokohama during May 26 through May 28, 2019. On May 28, 2019, Mr. Felix Einsel gave a presentation on “AI – a danger or chance for the job of a patent attorney” in the workshop titled on “Artificial Intelligence – What is It and How Do You Own and License AI-developed inventions and Data?” This workshop explained the basic forms of AI and discussed the various aspects of ownership and licensing of AI and its output. Mr. Einsel’s presentation focused on whether the job of a patent attorney will be overtaken by AI and the importance of exploring new areas of expertise for the patent attorney and making a change in a patent attorney’s education. Based on the lively discussions and Q&A, it is indeed true that AI is being watched closely by everyone with great interest.

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On May 13, 2019 and in Frankfurt on May 16 (Frankfurt), 2019: The China IP Law Seminar was held by the Hamburg Office.

The Chinese Patent Law Seminar organized by the Hamburg Office was held on May 13, 2019 (Hamburg) and May 16 (Frankfurt).

At this seminar, patent attorneys from the Hamburg, Beijing, and Tokyo offices provided an overview of the latest trends in China’s patent law and patent practice that are changing dynamically.

Dr. Zhao (Chinese attorney at law) of the Hamburg Office gave a presentation on the “Revisions of the Patent Law and the Opportunities for Patent Infringement Litigation in China” Ms. Wu (Chinese patent attorney) of the Tokyo office explained the “Pharmaceutical Patent Linkage System in China”, and Mr. Zhao (Chinese patent attorney) of the Beijing Office presented on the “Latest Information on the Practice of Patent Prosecution in China”.

Seven participants attended the seminar in Hamburg and 22 participants joined the seminar in Frankfurt. During the Q&A session, there was a lively exchange of questions and opinions, and we believe the seminars were highly successful.

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