News

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.

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.