News

Regarding the Coronavirus crisis – we are here for you!

 

 

Regarding the Coronavirus crisis – we are here for you!

 

The coronavirus crisis is currently causing worldwide distress and uncertainty. Many companies curtail business travel and cancel meetings and conferences. Human and social contact is becoming more difficult. To fight the disease is the prerogative of medical staff. Responsible behavior is in everybody’s interest.

 

Our experts at SONDERHOFF & EINSEL want to help you minimize the effect on your business activities in Japan and China and to further your agenda even in this difficult time.

 

We are here and we can be reached easily. Our offices in Tokyo, Beijing and Hamburg cooperate closely with each other. Talk to us about how our team of experts can assist you with your matters in Japan and China, even when you yourself are unable to travel.

 

You can have hassle-free meetings with us online. You can reach us, or if you’d like be contacted by us, via:

 

Skype

Skype for Business / Lync

Skype for Business (new version) Microsoft Teams

FaceTime

GoToMeeting (tel call)

 

(In case you prefer a different conference software, please simply let us know: )

In addition to this: We are – of course – always only a phone call or an email away, be it in English, German, Japanese or Chinese:

 

 

It is right what they say: The word „crisis” in both the Japanese and Chinese languages consists of two characters: “danger”, but also “opportunity”. Use contacting us as an opportunity and as your connection to Japan and China.

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Article written by Watanabe Naoki, one of our attorneys at law, published in the February 2020 issue of “Jiyu to Seigi” (Freedom and Justice), the bulletin of the Japan Federation of Bar Associations.

An article written by Watanabe Naoki, one of our attorneys at law, has been published in the February 2020 issue of “Jiyu to Seigi” (Freedom and Justice), the bulletin of the Japan Federation of Bar Associations. The article introduces “Kodomo Roppou” (The Six Law Codes for Children”, which was written by Souichirou Yamazaki and published in August, 2019 by Koubundou.

Click here for details.

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We Welcome a New Corporate and M&A Partner and Former Big Four Associate to the Firm

We are pleased to announce that Mr. Naoki Watanabe and Mr. Shohei Teramae have joined our firm.

Naoki was a partner at a Magic Circle UK firm and a global U.S.-based law firm in Tokyo and looks back on nearly three decades of practice as a lawyer.  He has various experience in the area of domestic and international M&A, compliance and regulatory matters for healthcare companies. Following his private practice experience, he moved in-house to Sojitz Corporation and held various executive positions where he supervised legal matters, M&A, post-merger integration, internal control and group governance as the head of the M&A Management Office, Controllers’ Office, and member of the investment committee and the internal control committee. He was also the non-resident board member at some of Sojitz’s key subsidiaries.  Shohei has been mainly involved in banking and finance transactions, and general corporate matters at one of the Big Four domestic law firms in Japan.

We are excited to have Naoki and Shohei join our team of lawyers who advise multinational clients, and the breadth of their experience and capabilities will further strengthen our international capabilities.

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Upcoming revision of the Patent Act and the Design Act

Due to the partial revision of the Patent Act and Design Act which passed the Diet in 2019, and as we reported on our website (https://se1910.com/news/201905-patent-law-news/), the following changes will be implemented on and after April 1, 2020.

 

Ⅰ. Revision of the Patent Act

1. Calculation of damages caused by a patent infringement

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

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) (Art. 102, Par. 4 of Patent Act).

 

The same changes will also be made to the Utility Model Act, the Design Act and the Trademark Act.

Ⅱ Revision of the Design Act

1. Expansion of the scope of protection

Designs for graphical user interface (GUI) that are not stored or indicated on objects; e.g., images stored in a cloud and made available via a network or images projected on areas other than objects will be protected by the design right.

Also, designs for buildings such as museums or hotels, as well as interior designs will be protected as designs in order to encourage design investments which constitute a source of the company’s competitive advantage (Art. 2 and 8bis of Design Act).

(Source: “Revision of the Design Act in Japan – Contributing to innovation and branding – Revised in 2019” by the JPO)

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

It will be possible to register multiple designs developed under a consistent concept.  The new changes include the following:

(a) The time limit for filing related designs will be extended to 10 years from the filing date of the principal design (currently, it is only until disclosure of the registered principal design; i.e., about 8 months from the filing date of the principle design); and

(b) Registration of designs which are similar to related designs only will be possible.

(Source: “Revision of the Design Act in Japan – Contributing to innovation and branding – Revised in 2019” by the JPO)

3. Change in the duration of design rights

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

 

4. Clarification of the level of creativity

Shapes, patterns, etc., or images published or made available through the internet will be considered in the determination of the creativity of a design (Art. 3 of Design Act).

 

5. Introduction of a partial design for a set of articles

Registration of a partial design for a set of articles such as the handle of a knife, fork and spoon in a cutlery set will be allowed (Art. 2 and 8 of Design Act).

 

6. Expansion of indirect infringement acts

By defining subjective factors such as “the knowledge that an object can be used for the working of a registered design”, actions such as the manufacture and import of disassembled individual parts which may constitute infringing products can be controlled as an “indirect infringement” (Art. 38 of Design Act).

 

Please also take a look at the pamphlet issued by the JPO regarding the revision of the Design Act:

https://www.jpo.go.jp/e/resources/report/sonota-info/document/pamphlet/isho_kaisei_en.pdf

 

We will keep you updated regarding the above mentioned revisions. If you have any questions, please do not hesitate to contact us.

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THE LEGAL 500 ASIA PACIFIC 2020

We are pleased to announce that Sonderhoff & Einsel Law and Patent Office has been recommended by The Legal 500 in the practice area of “Intellectual property: Independent local firms” in Japan.  The Legal 500 Asia Pacific 2020 editorial recognized S&E as a firm that has “many very competent members in the team” and with its lawyers and tax consultants collaborating on IP-related matters, it was noted for its “outstanding collaboration”.

Mr. Felix Einsel has also been highlighted as a patent attorney who has “excellent knowledge and gives excellent recommendations concerning the special problems and challenges of German companies and IP strategies in Japan.”  In addition to Mr. Einsel, six of our firm’s patent attorneys were recommended for the IP practice area; Mr. Hiroshi Morita, Mr. Hiroyasu Ninomiya, Mr. Junichi Maekawa, Mr. Rui Ueshima, Ms. Saori Maekawa, and Mr. Shogo Matsunaga who is also an attorney-at-law.

Please click here for the website of The Legal 500 for more details.

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Notice: Year End Holiday

Please note that our office will be closed during the following year-end holiday period:

Saturday, December 28, 2019 to Sunday, January 5, 2020

A calendar showing our business days from January 6, 2020 can be found here.

We wish you a very happy holiday season and look forward to working with you in 2020!

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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 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

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“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.

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