NEWS

Feb.10, 2022IP news

Restriction of the use of multiple dependent claim depending from multiple dependent claim (“multiple-multiple dependent claim”)

The Industrial Structure Council (ISC) is currently considering the restriction of the use of multiple dependent claim depending from multiple dependent claim (referred to as “multiple-multiple dependent claim”) in patent applications and utility model applications. In patent applications, the use of multiple-multiple dependent claim will be rejected under Art. 36(6)(iv) of the Patent Act. In utility model applications, it will be objected to as failing to meet the basic requirements defined under Art. 6-2 of the Utility Model Act.

The restriction of the use of multiple-multiple dependent claim will be effective from April 1, 2022.

This restriction will be applied to applications filed on or after April 1, 2022.

For more information, see the Japan Patent Office (JPO)
website: https://www.jpo.go.jp/e/news/public/220210_tokkyo-shinsakijun.html

Accordingly, please consider amending claim dependency before the start of substantive examination (e.g., at the timing of JP national entry or request for examination).

Dec.01, 2021Firm

Ayako Takemura joined Shin-Ei firm on December 1, 2021

We are pleased to announce that Ayako Takemura joined Shin-Ei firm on December 1, 2021.

Aug.18, 2021IP news

Revision of Patent Act, Utility Model Act, Design Act, Trademark Act, and Patent Attorney Act in 2021

A bill for revising Patent Act, Utility Model Act, Design Act, Trademark Act, and Patent Attorney Act has been approved by the Diet and then issued on May 21, 2021, which will become effective within 1 year from the issue date.
Main points of the revised Acts are summarized as follows

For more information, see the Japan Patent Office (JPO) website:
https://www.jpo.go.jp/system/laws/rule/hokaisei/tokkyo/tokkyohoutou_kaiei_r030521.html

1. Relaxation of criteria for restoration of various procedures
Under the current Patent Act, when Applicant is unable to timely carry out a patent procedure such as a request for examination by the statutory deadline, the JPO may apply a relief measure to allow Applicant to complete the procedure if there is a legitimate reason for Applicant’s inactivity .
On the other hand, since such legitimateness has been strictly construed by the JPO, it is very difficult to benefit from the relief measure in Japan as compared to other countries that ratify Patent Law Treaty (PLT). The acceptance rate of requests for reinstatement of rights in Japan has been 10-20%, as opposed to the rate of 60% or more in major PLT contracting states.

According to the revised Patent Act, even when Applicant is unable to complete one of six particular procedures as stated below by its expiry date, the JPO shall allow Applicant to complete the procedure after the expiry date if the Applicant’s lapse is unintentional. As such, the criterion of rationale for reinstatement will be relaxed from “due-care-basis” to an unintentional-basis.

  • Submission of Japanese translation of foreign language application (i.e., patent application with specification written in any foreign language other than Japanese) (Art. 36-2(6) of Patent Act)
  • Submission of Japanese translation of PCT application (i.e., JP national entry of PCT application) written in any foreign language other than Japanese (Art. 184-4(4) of Patent Act)
  • Filing of patent application claiming priority under the Paris Convention (Art. 43-2(1) of Patent Act) or filing of patent application claiming domestic priority from another Japanese application (Art. 41(1) of Patent Act)
  • Restoration of a patent right by late payment of patent fees (Art. 112-2(1) of Patent Act)
  • Appointment of a JP patent administrator such as JP patent attorney (Art. 184-11(6) of Patent Act)
Likewise, in the revised Utility Model Act, Design Act, and Trademark Act, even when Applicant fails to complete particular procedures (e.g., a procedure for trademark renewal) by the statutory deadline, the restoration of the procedures will be allowed if the reason for lapse is unintentional.

2. Consent of stakeholders for abandonment of patent right
In the current Patent Act, a patent owner is required to obtain a consent of stakeholders, such as exclusive licensee, pledgee, and non-exclusive licensee to abandon his/her patent right. According to the revised Patent Act, the consent of non-exclusive licensee will be no longer necessary for a patent owner to abandon his/her patent right (Art. 97(1) of Patent Act).

3. Consent of stakeholders for request for correction trial
In the current Patent Act, a patent owner is required to obtain a consent from stakeholders, such as exclusive licensee, pledgee, and non-exclusive licensee to request a correction trial to correct patented claims or specification. According to the revised Patent Act, a consent of non-exclusive licensee will be no longer necessary for a patent owner to request a correction trial (Art. 127 of Patent Act).

4. Introduction of Amicus Brief system in court
According to the revised Patent Act, a Japanese version of Amicus Brief system, which has been already introduced in the United State, will be newly introduced in cases of patent or utility model litigation. The new system will allow a court (i.e., Tokyo District Court, Osaka District Court, and IP High Court) to seek opinions of third parties as Amicus Curiae on a request from a party in lawsuit (Art. 105-2(11) of Patent Act).

5. The adoption of video conference system in oral hearing of trial cases
Remote work from home and online meeting has been rapidly spread in Japan due to COVID-19 pandemic. In view of such social changes to digital transformation society, the JPO will utilize a video conference system n an oral hearing of trial cases such as invalidation trial, in order to allow parties summoned to the hearing not to physically appear before the JPO. Whether to use such a video conference system in the oral hearing will be determined based on a request from a party in the trial case or by a discretion of a chief appeal examiner (Art. 145(6) of Patent Act).

6. Strengthening regulations for import of infringing goods based on private use
In the current Design and Trademark Acts, when an individual imported goods that infringe a design or trademark right from an overseas dealer, Japan customs could not crack down the infringing goods because the individual imported them for his private use, not business. Furthermore, the Japan customs have been unable to effectively crack down infringing goods due to a defense argument that the goods are imported based on a private use not a business purpose. According to the revised Design and Trademark Acts, the statutory definition of “import” is changed to cope with such a situation. That is, the concept of “import” will be able to cover an action where an overseas dealer brings infringing goods into Japan with an international carrier (Art. 2(2)(i) of Design Act and Art. 2(7) of Trademark Act). With the extended definition of “import”, Japan customs will be able to crack down infringing goods which are imported based on private use.

7. Stipulation about official fees such as registration fees
  • In the current Acts, the amounts of registration fees (e.g., patent registration fees) are expressly indicated. According to the revised Acts, only the upper limit amounts of registration fees are prescribed for the respective revised Acts (Art. 107(1) of Patent Act, Art. 31(1) of Utility Model Act, Art. 42(1) of Design Act, and Art. 40(1) and (2) of Trademark Act), whereas the detailed amount of registration fees is indicated in the respective cabinet orders related to the revised Acts (Generally, the cabinet order can be established by the Cabinet, not the Diet). With the revision of each Act, the JPO will be able to flexibly adjust the amount of registration fees depending on their financial situation.
  • The search fees and transmittal fees for PCT applications, which are filed with the JPO as a receiving office, will be increased (Art. 18 of International Application Act).
  • In the revised Patent Act, when a patent owner cannot complete a late payment for maintenance fee by the statutory due date due to some reasons (e.g., great disaster or pandemic) that cannot be attributable to him, he is exempt from the surcharges for the late payment (Art. 112(2) of Patent Act).

8. International Design application based on Geneva Act of the Hague Agreement
  • According to the current Design Act, in international design applications based on Art. 1 of Geneva Act of the Hague Agreement, Applicant is required to submit a document to the JPO, showing that the design is applicable to the exception to the loss of novelty within 30 days from the international publication date. In the revised Design Act, it will be possible to submit such a document for the exception to the loss of novelty at the filing of the international design application (Art. 60-7(2) of Design Act).
  • It is stipulated in the revised Design Act that the JPO may omit sending a hard copy of notice of allowance for an international design application (Art. 60-12-2 of Design Act).

9. International trademark application based on the Protocol relating to the Madrid Agreement
  • According to the current Trademark Act, in international trademark applications based on the Protocol relating to the Madrid Agreement, the JPO requests Applicants to pay individual fees twice at different timings. However, the JPO has reconsidered the twice payments of individual fees at different timings because it is so inconvenient for foreign Applicants. In the revised Trademark Act, the JPO allows Applicants to pay individual fees only once before the international registration (Art. 68-30 of Trademark Act).
  • In the revised Trademark Act, the JPO may omit sending a hard copy of notice of allowance for an international trademark application (Art. 68-18-2 of Trademark Act).

10.Patent Attorney Act
In the revised Patent Attorney Act, a name of corporation established by at least one patent attorney will be changed from “Patent Corporation” to “Patent Attorney Corporation”.

Aug.17, 2021IP news

JPO has published Status Report 2021

The JPO (Japan Patent Office) has published Status Report 2021. The summary of the Report is as follows.

1. Time period for receipt of first examination result

Patent Application:

  • Super Accelerated Examination (Average time period from the request to receipt of first examination result): 0.9 months
  • Accelerated Examination (The same as above): 2.7 months
  • Normal Examination without any request for accelerated examination (Average time period from the request for examination to receipt of first examination result): 9.5 months
  • Average pending time period from filing to grant: 14.3 months.
Note that the first examination result means a first office action or a notice of allowance.

Design Application:
  • Accelerated Examination (Average time period from the request to receipt of first examination result): 2.0 months
  • Normal Examination without any request for accelerated examination (Average time period from filing to receipt of first examination result): 6.0 months
  • Average pending time period from filing to grant: 6.8 months

Trademark Application:
  • Accelerated Examination (Average time period from the request to receipt of first examination result): 1.9 months
  • Normal Examination without any request for accelerated examination (Average time period from filing to receipt of first examination result): 9.9 months
  • Average pending time period from filing to grant: 10.9 months

2. Number of Patent Applications

288,472 patent applications were filed with the JPO in 2020, including 67,634 cases for JP national entry from PCT application and 220,838 cases for non-JP national entry.

The number of patent applications filed in 2020 is decreased by 8.4 % from 241,001 cases filed in 2019. This decrease rate is the largest over the past 10 years.

The Nationalities of Applicants (excluding Japan) with the largest number of patent applications are in the following order.

USA > China > South Korea > Germany > Switzerland > France > Netherlands > Taiwan > Sweden

3. Allowance Rate for Appeal against Decision of Rejection

In 2020, allowance rate (patent grant decision rate) for appeal against decision of rejection was about 70% in patent applications. The allowance rate for the appeal is within the range of 66 % to 70% over the past 5 years.

For more information:
JPO website:https://www.jpo.go.jp/resources/report/statusreport/2021/index.html

Jul.30, 2020IP news

Recent Court Decisions on Trademarks Related to Technical Names in Japan

In recent years, trademark rights are frequently acquired not only for product names but also for the name of technologies used in the products. However, since technical names are different from product names, trademark registrations for technical names might be cancelled due to non-use. We would like to introduce some cases for non-use cancellations against trademark registrations for technical names.

Case #1: High court case for administrative litigation No. 10096 (2011)

Registered trademark GENESIS (Registration No.1689805-2)
Designated goods Class 9: Telecommunications equipment; electronic applied equipment and their parts.
End product Facsimiles
Technology Image processing technology used for facsimiles
Actual use The trademark "GENESIS" was used in the catalogs and/or websites for facsimiles manufactured and sold by the plaintiff. "GENESIS" is used conspicuously, and the product catalogs described that “GENESIS” indicates an original image processing technology developed by the plaintiff. Meanwhile, catalogs did not give any detailed descriptions for the image processing technology.
Court decision The actual use of the trademark should be regarded as a proper trademark use since consumers could understand that "GENESIS" was the trademark for facsimiles sold and manufactured by the plaintiff.

Case #2: High court case for administrative litigation No. 10031 (2013)

Registered trademark Rグラム (“Gram” in Japanese) (Registration No. 0646237)
Designated goods Class 25: Clothing
End product Clothing
Technology Clothing materials
Actual use The trademark which indicates the other company's brand was attached to the clothing product. In addition, the characters "TORAY" were described on the front surface of the hanging tag, and the characters "Extra Light Weight" and "Gram" were integrally described in the middle of the front surface. The characters "Extra light special material" and "Toray's special light weight material" and the characteristics of the material were described on the back surface of the hanging tag. Like the front surface of the hanging tag, the characters "Gram" integrated with "Extra Light Weight" were described in the lower part of the back surface. Furthermore, "Toray's fibers are used in this product" was described below the lower part of the back surface.
Court decision It could be understood that the mark "Gram" was used as an indication of the source and quality of the clothing product. Meanwhile, it is unreasonable to consider that the mark "Gram" was used in the clothing product as an indication of materials.

Case #3: Trial case No. 2007-301148

Registered trademark M-Dot (Registration No. 4783353)
Designated goods Class 9: Electronic applied equipment and their parts etc.
End product Printers
Technology Ink drop controlling for printers
Actual use The characters "M-Dot function" and "M-Dot installed" were described in catalogs and pamphlets as characteristic technologies or functions relating to ink drop controlling for printers.
Court decision The actual use should not be regarded as a proper trademark use. The characters "M-Dot" were merely described as an indication of the name for the ink drop controlling technology, which is not an independent product. The mark “M-Dot” was not displayed on the end product.
Mar 06, 2020IP news

Utility Model System in Japan

For your better understanding of utility model system in Japan, we want to give you some basic information on utility model system in Japan.

The subject matter to be protected by utility model law is limited to the shape or structure of a product. Methods, manufacturing methods and software cannot be protected under the utility model law.

The term of protection for a utility model is 10 years from the filing date. There is no substantive examination, but a utility model owner needs to request a technical opinion on the novelty and inventive step of the registered utility model with the JPO if they wish to enforce the utility model right.

The subject matter of a utility model must be novel and involve an inventive step. The inventive step of a utility model is rejected in a case where a person skilled in the art could have extremely easily achieved the utility model (Art. 3(2) of the UTILITY MODEL law). To the contrary, in the patent law, the inventive step of an invention is rejected in a case where a person skilled in the art could have easily achieved the invention (Art. 29(2) of the patent law). Despite the difference in the test, the levels of inventive step for patent and utility model as applied in actual practice are not substantially different from each other in view of the Examination Guidelines.

A utility model application is usually registered in 3 to 5 months from the filing date. It is only possible to amend utility model applications within one month from the filing date. Correction for registered utility models is admitted only once, and cannot be used to amend utility models to extend the scope. Conversion from a patent application to a utility model, and vice versa, is possible.

A utility model owner needs to give an infringer a warning and provide the infringer with the technical opinion issued from the JPO before enforcing the utility model right (Article 29-2). A utility model owner is liable to compensate for damages caused by the enforcement of the utility model right in a case where the utility model right is made invalid after the enforcement (Article 29-3).

About 5300 utility models were filed in FY2018. The system in Japan may not be attractive for users who wants to strategically utilize the utility model rights in view of the following:

  • Limitation of the subject matter: The subject matter is limited to the shape or structure of a product.
  • The level of inventive step: The levels of inventive step for patent and utility model are not substantially different from each other in view of the examination guideline and actual practices.
  • Earlier Published: Utility model applications are usually registered in 3 to 5 months from the filing date and then published.
  • The term of protection: The term of protection for utility model is shorter than that for patent (10 years vs 20 years).
  • Liability of UTILITY MODEL owner: A utility model owner is liable to compensate for damages caused by the enforcement in case where the utility model right is made invalid after the enforcement. Thus, an injunction demand based on utility model right involves a high risk.
As discussed above, a relatively high level of inventiveness is required in the utility model system as a matter of practice. A utility model right may be granted with a lower inventive height (since there is no substantive examination) but it is likely to be invalid, and thus enforcement based on such a utility model right involves a high risk in view of the liability of utility model owner.

Currently, there is no movement to remove the utility model system in Japan. As described above, utility models have many disadvantage points as compared with patent, and thus large companies do not utilize utility models at all. However, utility models are sometimes filed by for SMEs and individual inventors in view of the lower costs and shorter periods to grant.

Nov.21, 2019Awards

Shin-Ei listed as International Patent Advisory Firm of the Year in Japan

We are pleased to announce that Shin-Ei has been listed as International Patent Advisory Firm of the Year in Japan 2020 in Corporate INTL Magazine.

Oct.07, 2019Publications/papers

Calculating Damages for Patent Infringement in Japan

We proudly announce that Tomoyuki Serizawa has contributed an article “Calculating Damages for Patent Infringement in Different Jurisdictions” published from Association of Intellectual Property Firms (AIPF) as a contributor of its Japan section.

Please check the following link.
https://aipf.com/2019OctIPLawBugle

Oct.01, 2019Firm

Nozomi Morita joined Shin-Ei firm on October 1, 2019

We are pleased to announce that Nozomi Morita joined Shin-Ei firm on October 1, 2019.

Sep.25, 2019International
conferences

The APAA annual meeting 2019 in Taipei, Taiwan

Tomoyuki Serizawa will attend the Asian Patent Attorney Association (APAA) annual meeting 2019 in Taipei, Taiwan on November 9-12, 2019. Should you wish to schedule a meeting with us, send us email to our general email address.

May 23, 2019International
conferences

INTA annual meeting 2019 in Boston

Hidetsugu Kanayama attended the International Trademark Association (INTA) annual meeting in Boston, USA May 18-22, 2019 so as to share the latest world IP information and have meetings with our colleagues from all over the world.

May 20, 2019IP news

Hot Topic for Japanese Trademark Applications

We are pleased to inform that we have uploaded a document regarding the hot topic for Japanese trademark applications (written in English).
Please click here to read.

May 17, 2019IP news

Partial Revision of the Patent Act, Design Act and Trademark Act

On May 17, 2019, the amendments to the provisions of the Patent Act, Design Act and Trademark Act were formally published by the Government. These amended Acts will come into force within one year from the publication date. The major amendments of each Act are summarized as follows.

1. Revision of Patent Act

1) Introduction of new inspection system under which third party technical experts can conduct on-site inspection for accused infringers

In this new inspection system (Articles 105-2 and 105-2-4 of the revised Patent Act), in case where a defendant (accused infringer) is likely to infringe its patent right of a plaintiff (patent owner), in accordance with the inspection order by the court, third party technical experts (inspectors) are entitled to conduct on-site inspection for plant or the like of the defendant so as to collect evidences for demonstrating the fact of patent infringement and then submit an inspection report to the court.

In this regard, requirements for issuing the inspection order are as follows:

  • The inspection is required to demonstrate the fact of patent infringement;
  • There is a likelihood that the defendant infringes the patent right;
  • Any evidence for demonstrating the fact of patent infringement cannot be sufficiently obtained in any manner other than inspection; and
  • No excessive burden can be imposed on the defendant.
Upon requesting inspection, the petitioner (plaintiff) is required to submit to the court a document describing items defined under each paragraph of Article 105-2-2 of the Patent Act.

2) Change in the damage calculation method for patent infringement (Article 102 of the Patent Act)

According to previous damage calculation defined under Article 102(1) of the current Patent Act, in a case where the amount of products sold by an infringer exceeds the production capacity of a patent owner, the patent owner is not able to demand damages for a portion of the sold products exceeding the production capacity. Meanwhile, in the new damage calculation method defined under Article 102(1), the second paragraph of the revised Patent Act, even in a case where the production amount of products sold by an infringer exceeds the production capacity of a patent owner, it is possible to demand damages for a portion of the sold products exceeding the production capacity. In this case, damages for the portion of the sold products will be calculated based on license fees for the sold products.

In the damage calculation defined under Article 102(3) of the current Patent Act, it is stipulated that a patent owner can demand damages equivalent to license fees for patent infringement. In the meanwhile, according to the damage calculation method defined under Article 102(4) of the revised Patent Act, damages equivalent to license fees will be determined in consideration of the possible amount of money to be agreed through a negotiation given that patent infringement is found.

2. Revision of Design Act

1) Expansion of the protection scope of designs protected by the Design Act
According to Articles 2(1) and 8-2 of the revised Design Act, graphic images that are not recorded or displayed on articles and interior and exterior designs of buildings are newly added as designs that can be protected by the Design Act.

2) Revision of Related Design System
According to the current Design Act (Article 10(1)), Applicant can file an application for a related design on or after its filing date of an application for a principal design and before its publication date of the design bulletin of the principal design (i.e., within about 8 months from the fling date of the application for the principal design).

Meanwhile, in the revised Design Act (Article 10(1)), Applicant can file an application for a related design within 10 years from the fling date of the application for the principle design.

Also, in the revised Design Act (Article 10(4)), application for a design that is similar to only a related design can be registered. In this case, the related design will be deemed as a principal design for the design that is similar to only the related design. This rule change is a kind of surprise for Japanese practitioners.

3) Change of the term of design rights

The term of design rights will be changed from 20 years from the registration date to 25 years from the filing date (Article 21(1)).

4) Streamlining of procedures for filing design applications (Article 7 of the revised Design Act)

According to the revised Design Act, Applicant is allowed to file a design application for multiple designs at one time. Also, Applicant is not required to describe an article based on the existing article classification table. Accordingly, Applicant will be allowed to describe an article in a more flexible manner under the revised Design Act.

Article 7 of the revised Design Act is stipulated as follows:

(Article 7) An application for design registration shall be filed for each design in accordance with an Ordinance of the Ministry of Economy, Trade and Industry.

5) Introduction of a new type of Indirect Infringement against design right (Article 38 of the revised Design Act)

According to Article 38(ii) of the revised Design Act, a new type of indirect infringement against design right is newly introduced. In this new type of indirect design infringement, a subjective element (i.e., “the fact that an infringer is aware that its product is involved in design infringement”) is newly added as one of requirements for demonstrating indirect design infringement. With this new type of indirect design infringement, a design right owner will be able to enforce its design right against an infringer who produces and/or imports components consisting of infringing products.

For more information:
https://www.meti.go.jp/english/press/2019/0301_003.html

Apr.01, 2019IP news (fees)

New Official Fee Reduction System started from April, 2019

On April 1, 2019, Japan Patent Office (JPO) has started the operation of new official fee reduction system. Under this new system, examination fees and patent annual fees (1st to 10th annual fees) will be reduced by half if Applicant is Small and Medium-sized Enterprise (SME), and by two-third if Applicant is Micro-Enterprise or Startup.

The new system also eliminates needs of filing any separate application forms or certificate documents, which were required for seeking official fee reduction under the previous system, thereby enhancing the usability of new system.

On the other hand, the JPO has launched increase of normal examination fees from April 1, 2019. The examination fees for standard patent application are changed to 138,000 JPY plus 4,000 JPY/per each additional claim from 118,000 JPY plus 4,000 JPY/per each additional claim. This new examination fee schedule will apply on patent applications filed on or after April 1, 2019.

Mar.31, 2019IP news

JPO has published its status report 2019

The JPO has published its status report 2019. According to the report, the number of patent applications newly filed with the JPO was 313,567 in 2018, which is slightly decreased from 318,479 in 2017. These 313,567 applications include about 64,000 JP national entries of international patent applications and about 240,000 applications non-international patent applications. Japanese applicants filed about 228,000 patent applications in 2018.

In 2018, the averaged time between the date of examination requests and the date of issuance of first actions on the merit (including first office actions and notices of allowance) is about 9.3 months for normal examinations, 2.3 months for accelerated examinations, and 0.7 months for super accelerated examinations.

For more information:
https://www.jpo.go.jp/e/resources/report/statusreport/2019/index.html

Mar.18, 2019IP news
(trademark)

Canada has joined the Madrid Protocol, Nice Agreement, and Singapore Treaty

Canada has joined the Madrid Protocol, Nice Agreement, and Singapore Treaty. Canada became the 104th member of the Madrid System which now covers 120 countries. The Protocol will enter into force for Canada three months after the formal date of accession.

Read more: https://www.wipo.int/portal/en/news/2019/article_0012.html

Feb.01, 2019Firm Info

Hiroshi Hattori joined Shin-Ei firm on Feb. 2019

We are pleased to announce that Hiroshi Hattori joined Shin-Ei firm on February 1, 2019.
Please check the profile of Hiroshi by clicking on “Professionals”.

Jan.31, 2019Awards

Shin-Ei firm listed as International Patent Advisory Firm of the year in Japan in Corporate INTL Magazine

We are proud to announce that Shin-Ei firm has been listed as International Patent Advisory Firm of the year in Japan in Corporate INTL Magazine.

Please check the following link to see the 2019 edition of Global Awards Publication.
https://issuu.com/jrscorporateltd/docs/pb4146_corp_intl_global_awards_2019

Dec.25 2018International conferences

The APAA annual meeting 2018 in New Delhi, India

Tomoyuki Serizawa of Shin-Ei firm will attend the Asian Patent Attorneys Association (APAA) annual meeting 2018 in New Delhi, India on November 17-21, 2018. Should you wish to schedule a meeting with Shin-Ei firm and NGB, send us email to our general email address.

Dec.25 2018IP news (Patent)

The Extension of Grace Period for the exceptions to the loss of novelty

The provision under Article 30 of the Reformed Patent Law, which was issued on May 30, 2018, became effective on June 9, 2018. As a result, the grace period for the exceptions to the loss of novelty under Article 30 has been extended from six months to one year. This one year grace period is applied to patent applications filed on or after June 9, 2018. On the other hand, this one year grace period is not applied to inventions disclosed on or before December 8, 2017 even if the patent applications are filed on or after June 9, 2018.

For more information:
https://www.jpo.go.jp/tetuzuki_e/t_tokkyo_e/e_pae_paa30.htm

Dec.25 2018International conferences

Shin-Ei firm attended the INTA annual meeting 2018

Hidetsugu Kanayama of Shin-Ei firm attended the International Trademark Association (INTA) annual meeting 2018 in Seattle, USA, on May 19-23, 2018. The INTA is one of the biggest global international conferences for intellectual properties (especially, trademarks) where over 10,000 IP professionals from all over the world attend.

Dec.25 2018IP news (Trademark)

Trial decision on the similarity of misspelling trademark

In January 2018, the trial decision that dictionary trademark and coined-term trademark (misspelling trademark) are not only phonetically but also conceptually similar was issued.

For more information: Appeal No. 2017-009439

Dec.25 2018IP news (Trademark)

Afghanistan joined the Madrid Protocol

On March 26 2018, Afghanistan has joined the Madrid Protocol. As a result, the number of Madrid Protocol member states has reached 101 countries.

Dec.25 2018IP news (Patent)

Expert Opinion for Standard Essential Patents (SEPs)

The JPO has launched its expert opinion for standard essential patents (SEPs). As can be seen from the patent litigation between Apple Inc. and Samsung Electronics Co., whether or not a subject patent is a SEP is becoming one of important factors that affect the patent enforcement or patent license fees. Especially, regarding patents directed to the 5th generation (5G) mobile communication system and autonomous driving technologies, it is considered that whether the patents are SEPs or not will greatly affect the future patent strategies of Tech companies.

For more information:
https://www.jpo.go.jp/torikumi_e/t_torikumi_e/hantei_hyojun_e.htm

Dec.25 2018IP news (Trademark)

Japanese Trademark Rule about Main Paragraph of Article 3 Reformed

In April 2018, Japanese Trademark Rule was reformed. This reform changes the rule about the main paragraph of Article 3.
After this reform, all subclasses which are given to designated goods/services are counted, but the threshold amount was changed from 7 to 22.

Dec.25 2018IP news

The JPO has published its status report 2018

The JPO has published its status report 2018. According to this report, the number of newly-filed patent applications was 318,479 in 2017, which indicates that the decline in the number of newly-filed patent applications has been stopped.

For more information:
https://www.jpo.go.jp/english/reference_room/statusreport/status2018_e.htm

Dec.25 2018IP news

Patent Administrative Annual Report 2017 published by JPO

The JPO has published its patent administrative annual report 2017. Summaries of the report are as follows.

  • Rate of the number of decisions to grant with respect to the number of requests for examination (191,000/240,000) was about 79% in 2016.
  • In Trial for Invalidation, Rate of the number of invalidation decisions with respect to the number of all final decisions (56/223) was about 25% in 2016, jumped from 17% in 2015.
  • In the new Opposition System, come into effect from April 2015, the rate of the number of decisions to revoke patent with respect to the number of all final decisions (55/707) was about 7% in 2016.
  • The period from Request for Examination to First Action on the merit, including Notice of Allowance, was about 9.5 months on average in 2016. Average period of Appeal Proceeding against Decision of Refusal was about 13.1 months, while Average Period in Opposition was about 5.8 months in 2016.
  • In recent years, the rate of the number of newly-filed patent applications without being represented by patent attorneys with respect to the number of all newly-filed patent applications was in a range of about 7% to 8%. Meanwhile, it was about 39% in newly-filed trademark applications, and it was about 27% in newly-filed design patent applications.

For more information:
https://www.jpo.go.jp/shiryou/toushin/nenji/nenpou2017/toukei/all.pdf

Dec.25 2018Awards

Tomoyuki Serizawa recommended by Global Law Experts

We are proud to announce that Tomoyuki Serizawa has been recommended by the Global Law Experts (GLE) as exclusive international patent law positon in Japan. Shin-Ei firm has been also recommended by GLE.