News

The Firm’s Aircraft Finance and Securities Practice Expands with the Addition of Partner Tsuguhito Omagari

Sonderhoff & Einsel welcomes Tsuguhito Omagari as a partner in the Law practice of the firm.  Tsuguhito has a diverse background as a finance/corporate partner who has been practicing law for over 15 years.

 

After graduating from University of Tokyo and the Legal Training and Research Institute, Tsugu began working at the Tokyo office of a Magic Circle UK law firm where he focused on banking and finance and corporate M&A transactions.  During his career at the UK law firm, he also had the privilege of working out of the firm’s London and Hong Kong offices as well as being provided the opportunity to obtain his LLM from the University of Pennsylvania Law School and his New York State Bar license.  He also has the experience of being seconded to a Japanese bank and a Japan office of a French cosmetics company.

 

In 2011, he joined the Tokyo office of a large US-based global law firm where he advised on domestic and cross-border transactions and focused on banking, asset finance (especially aircraft finance and real estate finance), and securities matters.

 

“I am very excited to be here and work with a number of talented professionals in various areas, which should definitely expand my practice and knowledge.   I would like to make as much contribution as possible to the firm” said Tsugu.  With our firm’s growing aircraft finance practice, we look forward to working with Tsugu to take our aircraft finance practice to the next level.

 

In his free time, Tsugu likes to take a jog along with the Arakawa River as well as spend time with his 4 children.

Continue Reading

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

The “Bill for Amendment of the Unfair Competition Prevention Law” in Japan, which was approved by the Cabinet on February 27, 2018, was passed on May 23, 2018. This amended law was promulgated on May 30, 2018 and will be implemented on June 9, 2018.

 

Due to this amendment, the time period regarding the exception of the loss of novelty, the so-called grace period, for inventions, utility models and designs will be extended from six months to one year (Patent Law Article 30, Utility Model Law Article 11, Design Law Article 4).

 

This new law will be applied to applications for patents, utility models and designs filed on and after June 9, 2018, which is the day the law goes into effect.

 

Please note, however, for applications made public on or before December 8, 2017, the revised Article 30 of the Patent Law or Article 4 of the Design Law will not be applied even if the relevant applications are filed on or after June 9, 2018.

 

Source:

http://www.jpo.go.jp/shiryou/kijun/kijun2/hatumei_reigai_encho.htm

http://www.jpo.go.jp/shiryou/kijun/kijun2/ishou_reigai_encho.htm

 

Continue Reading

IP Stars 2017

We are pleased to announce that our firm was ranked in the practice area of “Patent Prosecution” in IP Stars 2017 issued by the Managing Intellectual Property.

Please click here for more details.

Continue Reading

Public Holidays – September 2016

Please note that Monday 19th September 2016 and Thursday 22nd September are public holidays in Japan. Our office will be closed on these days.

 

A list of all Japanese public holidays for the remaining year can be found on our contact page.

Continue Reading

Comments by Our Managing Partner, Felix Reinhard Einsel

Nikkei Shinbun on the Brexit and possible implications for the European Unitary Patent

 

Great Britain’s vote to leave the European Union and its possible implications for the European Unitary Patent system have also been a topic of interest in the Japanese media, as for example in the Japanese newspaper Nikkei Shinbun (July 4, 2016 issue), which included comments of our Managing Partner Felix Reinhard Einsel.

 

Continue Reading

Use inventions of foods

Revised Examination Guidelines allow patenting of food/drink inventions

 

According to the Examination Guidelines in place before the revision, it used to be considered that the discovery of a new attribute of publicly-known foods provides no new application which is distinguishable from publicly-known foods. Therefore, an invention of foods specifying a use application in a claim is not acknowledged as a use invention. Thus, even if a new attribute of publicly-known foods is discovered, the food cannot be protected by a patent.

Meanwhile, due to recent increasing health consciousness and desire for health enhancement, the health food market has expanded and R&D relating to functionality of foods has been promoted. In the above context, the user’s needs for patent protection have increased. Additionally, there are countries where a use invention of foods is patentable.
Due to the above, the Examination Guidelines regarding a use invention of foods were inspected and revised so as to protect and utilize an invention of foods in related technical fields.

 

A. Details of revised Examination Guidelines regarding a use invention of foods

The novelty of a use invention of foods is determined first, and subsequently the requirements such as inventive step and description requirements are examined in a manner similar to other fields.

(1) When a claim of an invention of foods specifies a product by use application, it is recognized that the limitation of use application specifies the invention according to the claim.
Cases in which an invention of a product with an expression specifying the product by use application such as “for use in …” (the limitation of use application) in a claim should be interpreted as a use invention:
A use invention is defined as the invention based on

a) discovering an unknown attribute of a product and
b) finding out that the product is suitable for a novel use application because of such an attribute.

(2) When limitation of use application refers to animals or plants, since such limitation of use merely indicates the utility of the animals or plants, the animals or plants are interpreted as animals or plants per se without limitation of use application.

(3) As a test for verification of an effect of a use invention of foods, it is sufficient that, as in other technical fields, the person skilled in the art can understand from the description in the specification and common technical knowledge that the foods can be used in the application.

 

B. Example 1

Claim 1: A food composition for use in preventing a hangover containing an ingredient A as an active ingredient.

The cited invention: A food composition containing ingredient A.

Even if the above food compositions have no difference except the limitation of use application such as “for use in preventing a hangover”, the examiner acknowledges the claimed invention including the limitation of use application provided that both of the following conditions (a) and (b) are satisfied. Accordingly, the above inventions are recognized as different inventions = a novel invention.

a) “The use in preventing a hangover” is derived from discovery of an unknown attribute that promotes alcohol metabolism by an ingredient A.
b) The use application which is derived from the attribute is different from conventionally known applications of “food composition containing an ingredient A” and is novel.

 

C. Example 2

Claim 1: A food composition for preventing periodontal disease comprising ingredient A as an active ingredient.
Claim 2: Grapefruit juice for preventing periodontal disease comprising ingredient A as an active ingredient.
Claim 3: Grapefruit for preventing periodontal disease comprising ingredient A as an active ingredient.

Examples: The examples describe that ingredient A was isolated from grapefruits and that an antibacterial effect was confirmed.

Citation: The Citation describes that ingredient A was isolated from grapefruits as an ingredient for lowering LDL cholesterol in the blood and that LDL cholesterol was lowered by taking a supplement containing ingredient A or juice containing ingredient A produced by squeezing grapefruits.

The inventions according to Claims 1 and 2 differ from the cited invention in the presence of the limitation of use application such as “for preventing periodontal disease” and thus have novelty. If the citation does not suggest the feature wherein the ingredient A has an effect of preventing periodontal disease, inventive step is also acknowledged.
Meanwhile, in the invention according to Claim 3, the limitation of use application such as preventing periodontal disease merely indicates the utility of plants, i.e. grapefruits. Therefore, it is recognized that the invention according to Claim 3 is a grapefruit without limitation of use application. Since the citation describes a grapefruit containing ingredient A, the invention according to Claim 3 has no novelty.

Please contact us any time for more detailed information about patentability of food inventions.

Continue Reading