Japan: IP News Bulletin, May 2021

- NEWS ABOUT SONODA & KOBAYASHI -

1. Sonoda & Kobayashi attending trade fairs in China

As the Covid-19 pandemic has pushed Tokyo into its 3rd state of emergency, the global picture starts to diverge more and more. While certain countries have been practically Covid-free since the beginning, others recently had to face unexpected search, yet others again have made progress in vaccinations and are able to relax their prevention measures.

In this uncertain situation, Sonoda & Kobayashi has so far not been able to visit you or meet you at physical trade fairs around the world. It has instead relied on digital meetings and digital congresses to maintain and expand its network of partners and clients.

With the changing situation comes unexpected opportunity, and it is therefore that Sonoda & Kobayashi will soon be present physically at a trade fair for the first time in 1,5 years.

We will be present on several fairs in China throughout this year:

• The Global Med Device IP Summit 2021, on 2nd-4th of June in Shenzhen.
• The CIPF, on 21st-23rd of July in Shanghai.
• The 6th China Pharma IP Summit 2021, on 16th-18th of September in Beijing.
• The CIPAC, on 8th-9th of November in Suzhou.

We would be pleased to meet our clients and business partners at these occasions.

JPO NEWS

1. JPO relief measure procedures and how they are affected by Covid-19

The Japanese Patent Office (JPO) has several procedures or relief measures in place that can be used if one accidentally misses the time limit for applying for a patent. There is a procedure for "reasons beyond one's control" and one called "legitimate reasons". While the there are rules in place on using these procedures, the JPO is flexible for procedures negatively affected by Covid-19.

In practice, this may be not being required to submit certain documentary evidence. One is also allowed to submit reasons such as the office being closed and the work being not done in time because of Covid-19.

Examples of situations where one can cite Covid-19 as one of their reasons are:

• When the applicant or their representative has been infected with the COVID-19;
• When the offices of the applicants or their representatives have been closed due to people who were infected with the COVID-19;
• When (local) governments order or request movement restrictions and access to the office is severely restricted. When the applicant is unable to perform the procedures due to financial difficulties caused by the Covid-19 epidemic.

The flexibility regarding these procedures will be in place for an unspecified amount of time.

Click here for details. (in Japanese)

2. Change in fees for international registration of marks in Japan

The JPO reported that as of May 29th 2021, the individual fees for designating Japan on an international application for trademark registration will change. This fee also applies when Japan is designated after international registration has been completed, and at renewal of an international registration.

The fees are set in Swiss Frank by the World Intellectual Property Organisation (WIPO) in Geneva. In many cases, the new fees are lower than the old ones:

Click here for details. (in Japanese) Click here for details. (in English)

- LATEST IP NEWS IN JAPAN -

1. Japanese pharmaceutical industry opposes US back for vaccine patent waver

Kyodo News, May 8, 2021

On the 8th of May, Kyodo news reported on the opposition by the Japanese pharmaceutical industry to the US support for temporarily waving patent rights related to corona virus patents.

The Japan pharmaceutical industry claims this would increase shortages for vital vaccine components worldwide, and affect views on vaccine quality.

As the United States spoke out in favour for temporarily waiving COVID-19 vaccine patents, it was supported by the World Health Organisation that encouraged other countries to follow the example.

While the Japanese government had not yet made its stance clear on the issue. The Japanese pharmaceutical sector is against the waiver. It claims that the even if a waiver were to be granted, this does not guarantee that vaccines of equivalent quality to current ones would be produced. It is worried that some non-effective products could circulate, while the risk of side effects from vaccines would rise too.

In a statement, the association said that "we are deeply concerned that if vaccines are made in an uncontrollable environment, it will intensify scarcity of raw materials as well as further disperse and disrupt supply chains, possibly leading to a further delay in distribution".

Meanwhile in Europe, France's president Emmanuel Macron expressed strong support for the patent waiver. Germany for its part opposes the idea.

Click here for details.

2. The competition for automated driving patents: Car manufacturers recovering while IT companies fall back

Nikkei, May 16, 2021

Nikkei wrote about the global competition for patents for automated driving on May 16th.

While in the past IT companies used to hold the edge in this field, large automobile companies are making a comeback.

A U.S survey from the end of January had found that the Alphabet group has fallen back to 3rd place compared to 2,5 years ago when it used to hold the most patents. Instead Ford and Toyota hold the top 2 spots.

Among the top 50 companies, there were 12 Japanese enterprises, a group which did not only contain car manufacturers but also such as Sony group. The car manufacturers have been strong in patents for fundamental technologies such as driving, stopping, and turning. As the commercialization of self-driving technologies approaches, competition with IT competition will remain strong.

Nikkei asked a patent research company to look into this January data, and examine the competitiveness of patents related to autonomous driving in the United States. They added up the number of times competition companies were filing similar patents, and the number of times a company filed a court case against another. Their numbers indicate the important patents in this highly competitive area.

In terms of the competitiveness score assigned, Ford took the lead, followed by Toyota and Alphabet's Waymo (which came in No.1 in July 2018). Compared to past assessments, Ford's score increased by 3.6 times, Toyota's by 2.4 times and Waymo by 1.7. Ford and Toyota are both highly competitive in terms of technology for adjusting motor output and for mechanisms for systematizing steering wheel operations. Ford is also particularly strong in technology related to parking. Its competitiveness score in this area was 3 times as high as Toyota and 5 times that of Waymo.

Chinese and Korean companies also stand out in the top 50 in terms of patent competitiveness. In the previous survey, only South Korea and Hyundai Motor were in the top 50, but this time, five Korean companies and two Chinese companies were included. Among the Chinese enterprises, Baidu, a major search company, was 23rd, and Shanghai NIO, an electric vehicle (EV) maker, came in at 35th.

In the field of autonomous driving, major IT companies are seen to be selling their businesses one after another. For example, by the end of January 2021, Uber Technologies Inc. sold its development subsidiary, ATG, to its peer Aurora Innovation. The US company Lyft also announced at the end of April that it would sell its autonomous driving division to Toyota. Due to accidents during driving tests, IT companies are having difficulty in the practical application stage of the development of autonomous driving.

Click here for details. (in Japanese)

3. District court orders fine to Japanese messenger app LINE for patent infringement

Japan Today, May 20, 2021

Japan Today wrote on the 20th of May about the recent judgement on patent infringement for a case between LINE, the company behind a popular messenger app, and Future Eye Co, a Kyoto-based IT company.

The District court in Tokyo acknowledged that Future Eye held a patent for the system that allowed user to shake their smartphones in order to exchange account details since September of 2017. Future Eye had argued that LINE infringed on this patent and requested damages of 300 million JPY (27,6 million dollar). It claimed that the infringement of this patent had allowed LINE to expand its userbase and earn over 150 billion yen in advertising fees.

LINE for its part argued that the patent for the technology should be invalidated, as the invention was easy to make.

In its judgement, the court ruled that LINE had indeed infringed upon Future Eye's patent, though it stated that the impact of the technology on the LINE's revenues was limited.

Therefore, Line Corp was in structured to pay 14 million yen (128,500 dollar) in damages.

In a reaction, Future Eye said that the amount of damages was too low, given the huge profit he claims Line made using the feature.

Line on the other hand said the issue had been "resolved amicably" and vowed to "continue protecting intellectual property and improve our services."

Click here for details.

4. Japan's first insurance for infringement of 3rd party IP launched

Hokenshijo times, May 5, 2021

On the 5th of May, the Hokenshijo Times reported upon a new type of insurance in Japan that was announced by Sompo Japan Insurance just a few days before.

It concerns an insurance product that would compensate the policy holder for the its legal liability that arises out of infringement of a 3rd party's intellectual property right.

An amendment to Japanese patent law in 2020 states that an amount equivalent to the licensing fees is now a factor in determining the amount of damages for infringement. As a result, it is feared that the total amount of damages awarded will increase.

Responding to such legal changes, businesses seek to avoid IP related risks. The insurance product in turn caters to such demands.

Click here for details. (in Japanese)

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