-1. Internal News Sonoda & Kobayashi in 2021

Sonoda & Kobayashi hopes that all our clients and contacts have been off to a good start in this new year. While in many countries, the Covid19 pandemic is far from over, we like to be optimistic over some improvement later in this year.

In Japan and Tokyo in particular, the situation has worsened compared to the final months of 2020. On the 7th of January 2021, the state of emergency was declared for Tokyo and other regions in the country. Despite the name, the present measures are not as strict as those that many of our clients around the world may be facing right now. In practice, Sonoda & Kobayashi has shifted even further to working from home, prompting our staff to only make use of the office when really necessary.

Over the past year, Sonoda & Kobayashi has made significant improvements to its IT infrastructure to allow for remote working for all its employees, while safeguarding its systems. In 2021, we are continuing to streamline our procedures for remote work while also improving efficiency.

Finally, in an effort to improve our service offer for our clients, we have reduced our prices for English to Japanese translation, while also expanding our general translation services to other areas outside of the realm of IP. Therefore our experts in translation and technology are now performing translation of legal, technical and marketing materials as well as interpretation and assistance in communication between HQ and local entities.

Feel free to reach out for more information and we are looking forward to a fruitful cooperation in this new year.


-1. JPO Releases Handbook for Trial and Appeal in Japan

The JPO released in January the English version of the Handbook for Trial and Appeal in Japan, which provides information on the Trial and Appeal Department of the JPO ("TAD").

Specifically, the TAD serves two major roles. First, the TAD handles appeals to determine the appropriateness of a JPO Examiner's decision of refusal with respect to various forms of intellectual property. Second, the TAD handles various intellectual property disputes between parties (Oppositions, Nullity Actions, etc.), reviewing the validity of certain IP rights.

Specific information on this topic can be found here: (English)

2. JPO Announces Formation of Support Team for AI-Related Patent Examination

On January 20, 2021, the JPO established an AI examination support team which works across relevant examination divisions and their respective technical fields in order to accumulate and share knowledge and examination examples of the latest AI-related technology, and to study related patent examination measures. The purpose of this support team is to improve the quality and efficiency of examination for AI-related applications.

The responsible members of the AI examination support team will serve as a "hub" for the prosecution of AI-related inventions, consolidating the knowledge of each prosecution division and providing consultation to Examiners, thereby helping to realize efficient and high-quality prosecution.

Specific information on this topic can be found here: (Japanese)

3. Seals and Signatures of all Applicants no Longer Needed for Exception of Loss of Novelty Submissions

In Japan, inventions that have been made public before a patent application is filed cannot be patented. However, Article 30 of the Patent Law allows for an exception to the loss of novelty for applicants if they file for the exception within one year of the disclosure.

On December 16, 2020, the JPO announced that seals and signatures of all applicants will no longer be required in the initial submission for the loss of novelty exception which must be made within 30 days of filing of the initial patent application. Specifically, no seals will be required, but the written name of at least one individual (the name typed on a computer suffices) associated with one applicant will still be necessary.

The JPO's announcement also includes a warning for practitioners. Even though the exception for loss of novelty generally covers disclosures made by an applicant within one year of the filing of a patent application, the JPO notes in an example that where (1) the applicant discloses an invention in a paper presented at an academic conference, and (2) a third party discloses the invention following the applicant's disclosure at the conference, the applicant may not obtain a patent for the invention even if it files a patent applicant and application for the loss of novelty exception within one year of academic conference.

Specific information on this topic can be found here: (Japanese)

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