News

1. Regarding the Grace Period (as of April 17, 2020)

For the application of the exception to loss of novelty of invention, according to Article 30, Paragraph 2 (Grace Period) of the Patent Act, submission of a certificate which is an original document with a signature or a stamp by the applicant is necessary.

However, if such a submission is not possible within 30 days from the filing of the patent application due to the spread of COVID-19, the following measures are possible:

(1) Submit the certificate without the signature or the stamp by the applicant within 30 days from the filing of the patent application;

(2) Describe in the certificate, instead of using the signature or the stamp, that the signature or the stamp was not possible due to COVID-19 and that a certificate with the signature or the stamp will be submitted later; and

(3) Submit immediately to the JPO the original certificate with the signature or the stamp as soon as it is ready for submission.

In case submission of a certificate per se is not possible within the prescribed period due to COVID-19, it may be submitted within 14 days after it has become possible to do so. For applicants residing abroad, this time period is within 2 months.  Please note that this procedure needs to be taken within 6 months after the prescribed period has elapsed.

2. Regarding extension of designated periods in trial procedures (as of April 21, 2020)

When the necessary procedures for trials cannot be taken within the designated periods due to COVID-19, including appeals against the decision of refusal, invalidation trials and oppositions, an application for extension of the designated period may be filed.

(1) How to apply for extension of the designated period

A written statement describing:

(i) Requested time period for extension; and

(ii) Concrete reasons for extension.

Extension of the designated period will be treated case-by-case, and payment of fee is not needed.

(2) Examples of reasons presented by the JPO

• Company / office closure

Example language of reason for extension:

Due to the effect of the new coronavirus infection, the applicant (company) X / the agent (firm) Y is closed and will not be able to complete the procedure until the reopening on dd/mm/yy.

Therefore, please extend the time period for xx days with respect to the time period designated in the office action.

Other examples:

• Closure of the library holding materials necessary for the procedure
• Closure of the laboratory for collecting experimental data
• Preparation of telework environments

(3) Judgment of extension

In principle, a one-month extension at the maximum will be granted as long as the reason for the extension is concretely specified. Cases where it is difficult to determine that COVID-19 has impacted a deadline will be excluded from these exceptional measures.

(4) Possibility for re-extension

If further extension of the designated period is needed after the grant of an extension in the same procedure due to the continuation of the COVID-19 situation, another request may be made.

The Japan Patent Office (JPO) is open for all procedures, including electronic filings, but made the following announcement regarding the handling of applications for patents, utility models, designs and trademarks affected by COVID-19.

I. Periods designated by examiners

In case it was unable to proceed with applications or trials pending before the JPO within the designated period due to COVID-19 infection, such procedures shall be treated as valid even after the expiration of the term when a document explaining the circumstances is submitted and the remedy is deemed necessary.

II. Legal period

For periods determined by law or ordinance of the Ministry, procedures which could not be completed within the prescribed period due to COVID-19 infection can be taken only during the period for rescue as below.

In such cases, in the same manner as above I, procedures shall be treated as valid even after the expiration of the term when a document explaining the circumstances is submitted and the remedy is deemed necessary.

1. Procedures for which remedy can be granted by proceeding within 14 days

The below mentioned procedures need to be completed within 14 days after it has become possible to proceed with them. For applicants residing abroad, this time period is within 2 months instead of 14 days apart from (7) for which the period is within 1 month.

Please note, however, that the procedures mentioned below need to be taken within 6 months after the prescribed period has elapsed. For (6), this period is within 9 months, for (7), within two months, for (21) and (23), within seven months instead of 6 months.

(1) Submission of certificate for grace period

(2) Submission of priority certificate for claiming priority under the Paris Convention

(3) Divisional applications for patent

(4) Conversion from utility model registration application or design registration application to patent application

(5) Patent application based on registered utility model

(6) Application for patent term extension

(7) Procedure relating to patent term extension before Patent Act amendment

(8) Payment of patent/registration fee

(9) Request for refund of paid patent/registration fee

(10) Appeal against decision of refusal

(11) Request for retrial

(12) Request for refund of examination request fee or fee paid by error

(13) Correction of the description etc. of utility model registration

(14) Withdrawal of invalidation trial of registered utility model

(15) Withdrawal of participation relating to refund of participation fee

(16) Request for trial against decision of dismissal of amendment for design and trademark applications

(17) Request for refund of designation fee for international design applications

(18) Submission of certificate in accordance with special provisions for trademark applications

(19) Application for trademark registration after cancellation of international registration

(20) Application for trademark registration after abandonment of Madrid Protocol

(21) Submission of certificate for grace period of PCT applications

(22) Submission of priority documents for claiming priority under the Paris Convention when filing PCT application or patent applications under Article 184-20, Paragraph 1 of the Patent Act

(23) Submission of certificate for grace period of international design applications

2. Procedures for which remedy can be granted by proceeding within two months

The below mentioned procedures need to be completed within two months after it has become possible to proceed with them and within one year after the prescribed period has elapsed.

For (7) to (9), this period is within 6 months after the prescribed period has elapsed.

(1) Submission of translation of foreign language patent applications

(2) Examination request for patent applications

(3) Payment of patent/registration fee and surcharge

(4) Submission of translation of PCT application

(5) Appointment of patent administrator for PCT applications

(6) Submission of translation of foreign language utility model applications

(7) Application for trademark registration renewal

(8) Payment of latter half of registration fee and surcharge for trademark

(9) Application for renewal registration of defensive marks

3. Priority claim

The below mentioned procedures need to be completed within two months after the expiration of the period for filing an application with priority claim.

(1) Priority claim based on patent application in Japan

(2) Priority claim under the Paris Convention

(3) Priority claim for PCT applications

4. PCT applications

This procedure needs to be taken as soon as possible after it has become possible. This time period is limited to within 6 months after the expiration of the prescribed period.

(1) Submission of document relating to procedure for PCT applications

The Japanese Ministry of Justice has pointed out the following on Friday, 03 April 2020:

Foreign nationals falling under the following criteria (see below) will be denied entry to Japan unless special, extraordinary circumstances apply.

Foreign nationals holding the following residence status:

• Permanent Resident
• Spouse or Child of Japanese National
• Spouse or Child of Permanent Resident

or

• Long Term Resident

and having left Japan on or before 02 April 2020 on a regular or special re-entry permission will, in principle, be considered to fall under the special, extraordinary circumstances clause. The same holds true for the spouse or child of a Japanese national who does not have such residence status.

Foreign nationals holding such a residence status and having left Japan on or after 03 April 2020 on a regular or special re-entry permission will, in principle, not be considered to fall under the special, extraordinary circumstances clause and will be denied re-entry to Japan. If you are residing in Japan as such a foreign national, you are asked to refrain from traveling to the regions stated below.

Our legal experts point out that the Japanese immigration authorities generally have broad discretion when evaluating “special, extraordinary circumstances”. Further, in the Ministry of Justice’s preliminary report regarding the status of examination for arrivals (http://www.moj.go.jp/content/001318291.pdf) (in Japanese), this “special, extraordinary circumstances” exception appears to have been applied only in limited circumstances.  Given the limited scope of this exception, foreign nationals fulfilling the following criteria and leaving Japan on or after 03 April 2020 may not expect to be allowed to re-enter Japan until new directives are issued by the Ministry of Justice.

Please contact us for an individual assessment.

Foreign nationals who stayed in the following countries / regions within 14 days before the application for landing

・ Asia: Indonesia, Singapore, Thailand, Republic of Korea, Taiwan, China (including Hong Kong and Macau), Philippines, Brunei, Viet nam, Malaysia

・ Oceania: Australia, New Zealand

・ North America: Canada, United States of America

・ Latin America and the Caribbean: Ecuador, Chile, Dominica, Panama, Brazil, Bolivia

・ Europe: Iceland, Ireland, Albania, Armenia, Andorra, Italy, the United Kingdom, Estonia, Austria, Netherlands, Northern Macedonia, Cyprus, Greece, Croatia, Kosovo, San Marino, Switzerland, Sweden, Spain, Slovakia, Slovenia, Serbia, Czech Republic, Denmark, Germany, Norway, Vatican, Hungary, Finland, France, Bulgaria, Belgium, Bosnia and Herzegovina, Poland, Portugal, Malta, Monaco, Moldova, Montenegro, Latvia, Lithuania, Liechtenstein, Romania, Luxembourg

・ Middle East: Israel, Iran, Turkey, Bahrain

・ Africa: Egypt, Republic of Cote d’Ivoire, Democratic Republic of the Congo, Mauritius, Morocco

Foreign nationals holding a passport issued in Hubei or Zhejiang, China Foreign nationals who were onboard the cruise ship Westerdam that departed from Hong Kong

Webpage with the official announcement of the Ministry of Justice (with English translation):

http://www.moj.go.jp/hisho/kouhou/20200131comment.html

Facing the spread of infections with the new corona virus, our office had already implemented several measures to ensure the safety of our staff and the lag-free continuation of our operations, such as staggered work hours. We have now decided, with few exceptions, to let all our staff members work from their home office (“telework”) from 01 April until 31 May. Communication with our clients will be continued as detailed below:

1. In order to contact our patent attorneys or attorneys at law, please call their mobile number or email them directly. If you do not have the necessary contact data, please call our reception desk under +81-3-5220-6500. The operator in charge will get you in contact with your competent professional.
2. Besides phone calls, web-based video conferences (via Teams, Skype, etc.) can be arranged at any time.
3. Electronic applications and other proceedings before the Japanese Patent Office can be conducted by our professionals via telework.
   
4. Our Beijing and EU offices continue their operations by telework as well.
5. Please be informed that all deadlines before the Japanese Patent Office and Japanese Courts remain unchanged. Our staff will continue to supervise these deadlines for you.
6. In case of emergency or other cases which require contact with the representatives of our firm, please contact Mr. Felix Einsel (+81-80-3128-6481, ) or Mr. Keiji Isaji (+81-90-3406-6719, ).

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:

• +81-3-5220-6500

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.

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.

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.

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).

(Source: https://www.jpo.go.jp/e/system/laws/rule/hokaisei/document/tokkyohoutou_kaiei_20190517/outline.pdf: “Outline of the Act” by the JPO)

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.