1. A new team member joins Sonoda & Kobayashi's
International Affairs Department
At Sonoda & Kobayashi, we are regularly on the look-out for
new, talented colleagues.
We are then pleased to announce that as of March 2023, a new
member has joined our International Affairs Department.
Originally from New-Zealand, Debora Cheng will work with us in our Tokyo
office and support communications, negotiations and much
more.
Aside from her native English Debora speaks fluent Japanese and
Chinese, which will undoubtedly be a great asset to the team.
You will be able to meet Debora and other Sonoda & Kobayashi
staff at various IP events throughout the world.
- JPO and CNIPA News -
1. JPO to Allow Suspension of Divisional Application
while Parent Under Appeal
In February 2023, the JPO announced new examination procedures
to be enacted as of April 1, 2023 whereby the examination of a
divisional application will be suspended, upon request, while the
parent application is pending examination at the Board of Appeals.
The new examination procedures enable the maximization of the total
term of pendency of a parent and a divisional application and also
enable the formulation of the claims of the divisional application
in view of the examination results of the parent application.
A. Eligible Patent Applications
Patent applications for which examination is requested on or after
April 1, 2023 (and for which examination has yet to begin) are
eligible for the present provision as long as the applications meet
the conditions (1) to (3), as follows:
(1) They must be divisional applications filed after a Decision
of Rejection was issued by the Examiner against the parent
application;
(2) An Appeal must have been filed against the rejection issued
against the parent application and the examination of the parent
application must be pending a preliminary examination by the
Examiner or an examination by the Board of Appeals; and
(3) Waiting for the results of the preliminary examination or
examination by the Board of Appeals is considered appropriate.
B. Required Procedural Steps
Both of the documents described below must be filed within five
working days from the filing of the request for examination for the
divisional application.
(1) A petition describing the circumstances regarding the Request
for Suspension of Examination according to Article 54, Paragraph 1
of the Japanese Patent Law; and
(2) A statement of circumstances in a specific form regarding the
request for suspension of Examination according to Article 54,
Paragraph 1 of the Japanese Patent Law.
C. Procedure following the Request for Suspension of
Examination
A judgment shall be made on the Request for the Suspension of
Examination, and notice of the decision shall be provided. In the
case where a decision is made to accept the request, the
examination will be suspended until three months have passed since
one of (1) to (3) described below.
(1) A decision to grant a patent is issued on the parent
application as a result of the Preliminary Examination;
(2) The first Appeal decision is issued on the Appeal against
Rejection by the Examiner; or
(3) The Appeal against Rejection is dismissed or withdrawn.
When the suspension of the examination is cleared, the application
will be put on the list of cases to be examined and the examination
will start thereafter.
Specific information on this topic can be found here. (Japanese)
2. JPO Announces Continuation of Flexible Measures for
Deadline Relief Based on Circumstances Impacted by
Covid-19
On Friday, February 10, 2023, the Ministry of Health, Labour and
Welfare issued a new statement regarding relaxation of certain
measures undertaken during the Covid-19 pandemic, such as mandatory
use of masks in schools.
Nevertheless, it has been determined the JPO will continue to
provide flexible measures for deadline relief based on
circumstances impacted by Covid-19. For details on such flexible
measures, please see our previous newsletter.
Specific information on this topic can be found here. (Japanese)
3. JPO announces suspension of Fast-Track Examination
for Trademarks
The JPO previously announced that due to the shortening of the
examination period, the fast-track examination for trademarks would
be suspended in 2022. The resumption date has not yet been
determined.
On March 13, 2013, the JPO announced that for applications filed
on or before March 31, 2023 (Friday), those that meet the
requirements for fast-track examination will still be subject to
fast-track examination.
Previously, fast-track examination was allowed for examination
within 6 months of the filing date (as opposed for 10 months for
standard applications) for:
(1) An application for trademark registration in which only the
goods or services published in the "Examination Guidelines for
Similar Goods and Services", "Regulation for Enforcement
of the Trademark Act", or "International Classification
of Goods and Services (Nice Classification)" are designated at
the time of filing; and
(2) An application for trademark registration with respect to
which no amendment of the designated goods or designated services
has been made until the commencement of the examination.
Specific information on this topic can be found here (Japanese) and here (re previous track system; English).
4. CNIPA announces measures for Online Oral Proceeding
of Administrative Adjudication
On February 24th, 2023, CNIPA issued Measures for
Online Oral Proceedings of Administrative Adjudication Cases. The
measures aim to make it easier for the parties involved in patent
infringement disputes to participate in the process of the
administrative adjudication, improve the administrative efficiency,
and standardize the online oral proceeding of the administrative
adjudication cases.
As the background to this issue, in 2022, CNIPA concluded two
administrative adjudication cases of major patent infringement
disputes and 70 administrative adjudication cases of drug patent
disputes related to drug patent linkage system.
Specifically, there are 18 articles in the measures, which mainly
specify the effectiveness, scope of application, treatment of
non-participation in the online oral proceeding, online evidence
exchange, witnesses, regulations of public hearing, confidentiality
and other aspects.
Moreover, the principles of online oral proceeding can be applied
to the following cases:
(1) Administrative adjudication cases of major patent infringement
disputes;
(2) Administrative adjudication cases of drug patent disputes
related to patent linkage system;
(3) Administrative adjudication cases of patent rights disputes of
integrated circuit layout-design
(4) Other administrative adjudication cases which are suitable for
online oral proceedings.
Specific information on this topic can be found here. (Chinese)
5. CNIPA will No Longer Accept the Submission of PCT
International Applications Documents by Fax
CNIPA issued a notification on February 3rd, 2023 that
it will no longer accept the submission of PCT international
application documents by fax. From March 1st, 2023, the
China National Intellectual Property Administration, as a receiving
office, will no longer accept the PCT international application
documents submitted by fax, nor any documents or letters related
thereto submitted after the application. PCT international
applicants can use the client-side of "Patent Business
Processing System" of CNIPA and its web version (https://cponline.cnipa.gov.cn) to submit PCT
international application documents and handle the relevant
business to the China Bureau in electronic or paper form.
Specific information on this topic can be found here.
- Latest IP News in Japan -
1. Japan's Cabinet to approve guideline for
non-disclosure of certain patents under Economic Security Promotion
Act
Yomiuri Shimbun, February 3rd, 2023
On the 3rd of February, the Yomiuri Shimbun reported
that draft guidelines for Japan's "non-disclosure of
patents" under the Economic Security Promotion Act passed in
May last year have been revealed. These guidelines will prevent
patents in certain advanced technological sectors, such as
hypersonic flight, outer space, and cyberspace, from being
revealed.
The guidelines are expected to be approved by Japan's Cabinet
in April, and related provisions of the law will be enforced by May
2024.
Although patents are generally made public 1.5 years after
application, the law stipulates that a newly established screening
organization will have the discretion to not disclose designated
protected patents.
Targets for such protection could be fields with a significant
influence on national security.
Additionally, the guideline targets "technologies that could
inflict serious damage to people's lives and economic
activities," giving "nuclear technology that can be
converted into weapons of mass destruction" as an
example.
For technology that can be used for both defense and civilian
purposes, it is important to avoid hindering innovation of civilian
technology . The patent protection designation would then be
limited to cases where the technology was developed for defense
purposes or commissioned by the government.
The Japanese government has created draft guidelines for
maintaining critical infrastructure across 14 sectors, such as
electricity and rail transport. The draft specifies that prior
screening will be necessary for the development of infrastructures
classified as "important," but this designation will only
be applied in cases that are deemed "truly
necessary."
To avoid undue influence from foreign entities, companies
associated with infrastructure construction and supplies will need
to register information, including their location, executive names
and nationalities, and details about transactions with foreign
governments.
More information can be found here. (English)
2. Extended protection of intellectual property in the
Metaverse in Japan
Nihon Keizai Shimbun, March 10th, 2023
The Nihon Keizai Shimbun reported that the government of Japan
approved amendments to six intellectual property laws, including
the Unfair Competition Prevention Act and the Trademark Act, on
March 10th. These amendments will make it possible to request an
injunction against the sale or transfer of counterfeit products in
digital spaces such as the metaverse, with a focus on clothing and
accessories worn by avatars.
The Unfair Competition Prevention Act prohibits the sale of
imitation products that closely resemble genuine products for three
years from the release of the original product. However, the
current law does not cover digital spaces. There is a growing need
for coverage in this area, as major apparel brands such as Nike and
Gucci are increasingly entering the metaverse.
Furthermore, amendments to the Trademark Act will broaden the
scope of registrable trademarks. Previously, unless the trademark
had a certain level of recognition, trademarks containing personal
names could not be registered without the consent of every person
with the same name.
In the fashion industry in particular, it is common to use the
founder or designer's name as the brand name. Although personal
names can be registered under certain conditions in Europe, China,
and Korea, many of these applications have been denied in Japan,
which has hindered brand development for companies.
The amendments will also allow for the registration of trademarks
that are similar to those already registered, as long as there is
no risk of consumer confusion, and as long as the consent of the
original trademark holder is obtained. This "consent
system" is already in use in many countries and has been in
high demand among applicants from overseas.
More information can be found here. (Japanese)
1. Patent lawsuit between Zhuhai CosMX and Japan MAXELL
has been settled
China's Capital Markets Information Disclosure Platform,
March 4th, 2023
On March 4th, 2023, Chinese battery manufacturer Zhuhai CosMX
Battery disclosed a progress announcement regarding its involvement
in litigation. Concretely, the lawsuit was filed by Maxell from
Japan in the Western District Court of Texas in the USA on August
13th, 2021 for patent infringement by Zhuhai CosMX. The lawsuit
pointed out that Zhuhai CosMX's products were suspected of
infringing four US patents owned by MAXELL and requested the court
to order Zhuhai CosMX to stop the infringement and compensate for
losses, but the specific amount claimed was not specified.
The latest progress in this lawsuit is that Zhuhai CosMX and
MAXELL recently signed a settlement agreement. At the same time,
both parties have submitted a withdrawal application to the Western
District Court of Texas in the USA. MAXELL voluntarily withdrew all
charges against Zhuhai CosMX in this lawsuit, and Zhuhai CosMX has
also withdrawn the invalid application for the patent related to
this lawsuit. Each party shall bear corresponding litigation costs
and attorney fees.
Zhuhai CosMX stated that the progress of this lawsuit will not
have a negative impact on its daily management, nor will have a
significant impact on its current and future profits and
losses.
More information can be found here. (Chinese)
2. Huawei sued Xiaomi for infringement involving four
patent disputes
Changjiang Times, March 2nd, 2023
Huawei Technologies and Xiaomi Corporation, two well-known China
technology giants, have recently been involved in a patent dispute
as reported on March 2nd by Changjiang Times via their
WeChat Channel. According to the "Announcement on Acceptance
of Administrative Adjudication of Major Patent Infringement
Disputes" recently published by China Intellectual Property
News, Huawei has formally submitted an administrative adjudication
of patent infringement disputes against Xiaomi, and the case was
accepted by CNIPA on January 17, 2023.
At present, China adopts an administrative and judicial dual track
resolution mechanism for patent infringement disputes, and the
administrative adjudication has become the first choice for many
patent owners as a solution to patent infringement issues because
of its fastness and effectiveness.
According to Xiaomi, now both parties are actively negotiating on
patent licensing. Both parties believe that intellectual property
licensing and cooperation are conducive to promoting innovation and
the public interest, and that settlement is an effective channel to
help achieve licensing.
It should be noted that Huawei had previously reached global
patent cross-licensing agreements with Samsung and OPPO.
With regard to the administrative adjudication of major patent
infringement disputes, a time limit of three months for handling
cases exists, though upon approval this limit could be extended by
one month. Therefore, this patent infringement case between Huawei
and Xiaomi may be closed within three months.
More information can be found here. (Chinese)
Timeline and deadlines of a patent applications filed in
Japan
This article aims to explain the timeline and deadlines of a PCT
application or Paris Route application when being filed in
Japan.
Filing Deadline and Translation Submission
The deadline for entering a PCT application into the national
phase in Japan is 30 months from the earliest priority date.
Paris route applications may be filed either in Japanese or any
other language within one year from the priority date. When a Paris
route application is filed in English (or any language other than
Japanese), a Japanese translation must be filed within 16 months
from the priority date and mistakes in the translation may be
rectified by Amendments (during the patent prosecution procedure)
or Corrections (after grant of a patent).
Publication
Publication of non-examined Japanese patent applications in the
official gazette and on the JPO website takes place 18 months after
their filing or priority date, whichever is earlier. Any third
party may submit prior art documents to the JPO in relation to the
patent application.
Examination
Examination must be requested within 3 years from the filing date
in Japan (International Filing Date for a PCT application).
According to the JPO Status report 2022, FA Pendency (first action
pendency) on average was 10.2 months. First action pendency is the
period from the date of examination request until the JPO sends the
first notice of examination results to the applicant (in most cases
this will be either a Notice of a Patent Grant or an Office
Action).
Once an Office Action is issued, an international applicant is
given 3 months to respond to the Office action (only 2 months for
domestic applicants). The deadline to respond can be extended by up
to three months.
According to the JPO Status report 2022, the pendency on average
was 15 months in 2020. This is an increase from 9.3 months in 2018
and might be connected to the pandemic.
In our experience, total pendency for patent applications filed by
non-Japanese companies is generally slightly longer compared to the
average time indicated by the JPO. This could be due to the (on
average) smaller amount of patent applications being granted
without an Office Action, or may be due to the longer deadlines for
responding to Office Actions for international applicants.
Appeal Proceedings
The deadline to file an appeal against the examiner's decision
of rejection is 4 months for overseas applicants and three months
for Japanese domestic applicants.
Pendency from filing the appeal until a final decision is made by
the appeal board was 12 months on average in 2021.
Expediting Examination
Several measures are available to accelerate examination (e.g.,
PCT PPH, PPH) when 1) a decision to grant a patent is issued by one
of the participating offices, (2) an Accelerated
Examination when the relevance of the claimed invention as they
relate to the search results is explained, and (3) a Super
Accelerated Examination when the claimed invention will soon be
utilized, etc.
According to JPO statistics, the average FA pendency for
applications under Accelerated Examination is 2.3 months on,
average and less than 1 month under Super Accelerated
Examination.
Delaying Examination
Unlike CNIPA, the JPO does not provide a way to delay the
examination of a patent application, other than waiting until
deadlines are approaching and extending deadlines to respond to an
Office Action up to a maximum of three months.
As of April 2023, it will however be possible to delay the
examination of a divisional application if the parent application
is still pending in the Appeal stage.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.