News

On March 12, 2019: Interview of Ayuko Nemoto by the INTA (International Trademark Association) was released as a podcast.

Sonderhoff & Einsel’s Ayuko Nemoto was interviewed by the INTA on the topic titled “Artificial Intelligence and Intellectual Property in Japan: A Deep Dive into Applications, and Legal and Policy Issues”. The interview was released by the INTA as a podcast on March 12, 2019. Ms. Nemoto commented mainly on the legal protection of AI-generated work, status of AI and intellectual property rights in Japan, and other legal issues.

The article was placed on the podcast “Brand & New” of the INTA: https://www.inta.org/Programs/Pages/Podcasts.aspx

“Golden Week” holidays 2019

We would like to inform you that our office and the Japan Patent Office are closed for ten consecutive days for the “Golden Week” holidays as follows:

Monday, April 29, 2019 until

Monday, May 6, 2019

Information on our business hours can also be found on our website: www.se1910.com

Please note that all official deadlines of the Japan Patent Office which fall during this holiday period will become due on the following business day.

We ask you to send us any requests or instructions for this period as soon as possible, but at the latest by April 23, 2019.

IP-Bulletin from Japan

According to JPO statistics, the number of patent applications filed in Japan decreased by 1.6%, while the number of design applications and trademark applications　increased by 1.0% and 4.8% respectively.

This increase in the number of trademark applications could indicate a tendency by companies toward brand protection. In point of fact, the number of publications of registered trademarks by Japanese cosmetic and pharmaceutical companies such as Kao, Shiseido, Kose, Kobayashi Pharmaceutical Co., Ltd, Taisho Pharmaceutical Co., Ltd, etc. is rather large, ranging from approx. 200 to 600 or more.

Following the revision of the trademark law in 2015, companies such as Taisho, Kobayashi and Hisamitsu have been registering sound marks which are used in television commercials and whose features are distinctive.

Trademark applications via the Madrid Protocol route show a similar tendency to that explained above.

The annual number of patent oppositions appears to have stabilized following the reintroduction of the opposition system in 2015. . Our internal research shows that out of approx. 3900 oppositions, approx. 200 patents were revoked, a revocation rate of 5.1%.

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Reduction of patent-related fees

On April 1, 2019, a new system will be introduced for the reduction of patent examination application and other fees. This system can be applied to all applications filed on or after April 1, 2019, regardless of the filing date.

The beneficiaries of this system are primarily small and medium-sized enterprises, venture companies and universities. The application procedure for this system was substantially simplified so that, as compared to the current system, it is not necessary to submit any application forms. In order to receive the reduced fee, it is sufficient to only indicate on the examination application form or registering and maintaining patent fee payment form that the applicant wishes to receive the reduction and it will no longer be necessary to submit the existing reduction application form. In addition, no supporting documents need to be filed and all applications will be addressed to the JPC in a unified manner. For further information, please contact us directly.

Sonderhoff & Einsel welcomes three new patent attorneys in January

Sonderhoff & Einsel Law and Patent Office is pleased to announce that we have welcomed three new patent attorneys: Saori MAEKAWA, Dr. Kazunari YOKOYAMA and Hisako TANAKA.

Since her registration as a patent attorney in 2001, Ms. Maekawa has been involved in a wealth of trademark registration applications at multiple patent attorneys’ offices. She will continue to work on domestic and international trademark cases for a wide variety of clients ranging from startup ventures to large corporations, always striving to understand her clients’ situation and needs and provide appropriate services.

After earning his PhD, Dr. Yokoyama began his career at a patent office, where he worked for a number of years. Thereafter, he spent 16 years in the domestic manufacturing and service industries and became experienced in intellectual property (IP) matters. Capitalizing on his strong IP background built over his time in private industry, Dr. Yokoyama handles the proposal and execution of IP strategies to contribute to the management and business of his clients in private industry, working across subjects including the mechanical and chemical fields in general with a special focus on control devices, and oversees patent-related tasks ranging from drafting of specifications to exercise of rights.
Dr. Yokoyama strongly believes that interpersonal communication is an important aspect of all his work.

After graduating university with a major in physics and working in management at an engineering company, Ms. Tanaka entered the patent field. Making use of her knowledge as a physics major, Ms. Tanaka performs domestic, outbound and inbound tasks in the electrical and mechanical fields, including software. She has experience at several patent offices, where she has mainly been engaged in patent rights acquisition. In addition to her work at patent offices, Ms. Tanaka is also a member of the Small and Medium-sized Venture Support Committee of the Kanto Japan Patent Attorneys Association, where she is involved in the dissemination of information on startup support. An article she wrote is available on the homepage of the Kanto Japan Patent Attorneys Association under the title “An Introduction to Patents for Startups” (Sutato-appu no tame no Tokkyo Nyumon).

THE LEGAL 500 ASIA PACIFIC 2019

We are pleased to announce that Mr. Felix-Reinhard Einsel and Mr. Hiroshi Morita have been recommended in the practice area of “Intellectual Property: Independent Local Firms” in the Legal 500 Asia Pacific 2019 editorial.　Mr. Einsel has been highlighted as a patent attorney who has an “excellent understanding of the demands of [the] European industry” and a “broad knowledge of and experience in relevant Japanese law, German and European law” and Mr. Morita has been recognized for leading the chemistry and pharmaceutical team with his extensive IP experience in the life-science field.

Please click here the Website of the legal 500 for more details.

Amendment of the fee for examination request (As of April 1, 2019)

Due to an enforcement of a revision regarding unfair competition law etc. in Japan, the fee for examination request for patent applications will increase from April 1, 2019.

This new fee will be applied to patent applications filed on or after April 1, 2019. The details of the amendment are as follows:

Ordinary patent application filed in Japan:

   ¥138,000 + ¥4,000/claim instead of ¥118,000 + ¥4,000/claim

PCT applications where the international search report has been established by an International Searching Authority other than the JPO (under the PCT):

   ¥124,000 + ¥3,600/claim instead of ¥106,000 + ¥3,600/claim

Please note that for divisional applications and converted applications, the original application will not be retroactive with respect to the fee for examination request, i.e. the new fee will be applied to divisional applications and converted applications which are to be filed on or after April 1, 2019.

Notice: Year End Holiday

Mr. Martin Krause, a German and European Patent Attorney, joined our partner office in Hamburg.

IP Practice: “Extension of Grace Period (exception of the loss of novelty) for inventions, utility models and designs”