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What’s up in IP, Japan? AI and amended IP laws spark future wellbeing

19.10.2021
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How can AI, carbon-neutral goals, and expanded IP laws help in a battle with lack of workforce, ageing population, and climate change in Japan? Masahiro Asamura, the Senior Managing Partner of Asamura Patent Office, explains. In this article series, our global partner network reveals key IPR trends around the globe.

With a population of over 120 million people, Japan has the 3rd largest GDP in the world. Despite the sizable market and economy, Japan’s large segment of ageing population, decreasing birth rate, and conservative mindset towards immigration will inevitably burden the younger generations with a lack of workforce and decreasing productivity. To solve these upcoming problems, the spotlight has been turned on AI and automation solutions.

“Virtually all industries will face digital transformation. Good examples are autonomous vehicle technologies and image recognition, such as AI-assisted analysis in medical devices that help reduce medical costs of elderly care”, Masahiro Asamura, Senior Managing Partner of Asamura Patent Office, explains.

In addition to AI, carbon-neutral sustainable development goals (SDG) are driving Japan towards carbon neutrality by 2050. Innovations are an obvious key in achieving the goal.

“Toyota, for one, works on developing a hydrogen engine as a better alternative to electric vehicles. Additionally, about 85 percent of Japan’s energy still comes from fossil fuel power generation. As we had to shut down nuclear power plants due to the earthquakes and the “tsunami” in 2011 and cannot build new ones, we need to change our dependency on fossil fuel power with new innovations to meet the carbon neutrality goal.”

The pro-patent government encourages SMEs

Japan’s patent grant rate of 74.4 percent in 2020 is high in comparison to many other countries. The majority of patent applications in Japan and the PCT applications originating from Japan are currently filed by major companies, the likes of Mitsubishi Electronic, Canon, Toyota, SONY and Panasonic.

“Changes are coming! During the last decades, major Japanese companies have been reducing the number of patent applications. Recently more so, as they worry about the economic impacts of COVID. The decrease in patenting activity has caused the government to encourage SMEs and start-ups to file patents instead”, Asamura says.

As one characteristic of the Japanese market is a plethora of prolific SMEs, the tactic seems to have positive results. Especially the number of domestic and international patent filings by SMEs is steadily increasing. The number of patent filings of AI-related patents has also been increasing.

In the government’s efforts to increase IP activities and encourage patent filing, Japanese IP laws are constantly amended. One change has been made in Japan’s previously vulnerable evidence collection procedures.

“In the new inspection system, the plaintiff can ask for a court-appointed, fair, and neutral third-party technical expert, who can go into the defendants’ actuaries and other premises to find and collect evidence of infringement as a part of the evidence collection procedures”, Asamura explains.

Significant Design Law amendments open new doors for IP protection

Japan has previously denied all design applications not related to tangible objects that are mass-produced, but recent amendments have vastly broadened the subject matter of design.

“Novel exteriors of buildings can now be registered for design protection. Additionally, interior designs composed of e.g., furniture, walls, floors, and lighting that create a ‘uniform aesthetic appearance as a whole’ have become registrable in a single design, as opposed to the previous ‘one design for one application’ requirement”, Asamura says.

Broadened protection for images has made it possible to register designs for graphical user interfaces (GUI) and display images that are not necessarily pre-installed in the devices, such as GUI of web-applications.

“After the expansion of image protection, GUI image designs that are projected onto physical items can also be protected. In some cases, even a pattern, color or light such as car headlights or lighting equipment can be accepted as a design.”

The amendments bring new opportunities for IP protection to a vast variety of industries. For innovations that cannot be sufficiently protected by patents, broadened design protection can be a lifeline. As the new legislation is aligned with other jurisdictions in Europe and the US, it also brings more opportunities for international business and extending design protection to new countries.

Local IP expertise makes all the difference

Even though the Japanese IP law is constantly amended to keep up with new practices and to align with foreign jurisdictions, those seeking IP protection in Japan should be aware of the unique characteristics of the field.

“We have a non-use requirement for filing trademarks, so they can be registered even if they are not in use at the time under the principle of registration. However, if the rightsholder doesn’t use the trademark in three years, the rights will be canceled. Any third party can file such a cancellation trial”, Asamura says.

Patent dependent claims are very flexible in Japan, and multiple dependent claims are acceptable without a surcharge. However, when filing a Request for Examination, the official fee is calculated simply based on the number of claims.

“One important difference of the design appliations in Japan is that the applicants are required to submit a set of 6 drawings with the same drawing scale, including front view, rear view, left-side view, right-side view, top-view, and bottom-view of the article. The drawings for design registration have to be carefully prepared, especially for the applications claiming priorities to the foreign design applications that do not have six drawings. Details like these make local expertise and foreign IP partners invaluable for us, our clients, as well as foreign companies seeking IP protection in Japan.”

Masahiro Asamura is the Senior Managing Partner at Asamura Patent Office, p.c. and Asamura Law Offices, Tokyo, Japan. Asamura Patent Office, p.c. is the longest-running IP firm in Japan, established in 1891. Asamura Patent Office is part of Kolster’s global partner network that helps in IP matters around the world.
This article is part of a Kolster article series diving into IPR trends around the globe.

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