Saturday, December 23, 2017

ID Pharma fishes in troubled waters, while Kyoto University requests Fujifilm Corp for reduction of licensing fee on iPS cell-related patents

It was reported that iPS Academia Japan, which manages iPS cell-related patent portfolio of Kyoto University, lowered the patent royalty rate for regenerative medicine from 2% to 1.5% of sales of related products. iPS Academia Japan has so far signed patent license agreements with more than 170 entities worldwide. It is attempting,  by reduction of patent royalty rate, to increase companies which enter into regenerative medicine market.

It was also reported that Dr. Yamanaka, a Japanese Nobel Prize-winning stem cell researcher and Director of Center for iPS Cells Research and Application at Kyoto University, requested Fujifilm to reduce licensing fee for the key patents for producing transplanted cells which are owned by Cellular Dynamics International (CDI), a Fujifilm’s subsidiary. Dr. Yamanaka argues that the iPS cell business contributes to the public good, thus the cost should not be raised.

Further, Kyoto University reportedly began to consider another production method, as a bargaining chip in negotiations with Fujifilm. Currently, it is adopting a production method using DNA of Escherichia coli, and concerns the risk of patent infringement of CDI. So, it is considering an alternative method using a type of virus which is patented by ID Pharma, I’rom Group Co., Ltd. 

Fujifilm used to conduct a joint research with Kyoto University on Alzheimer's Dementia medication in 2014, but after that, it acquired CDI in May 2015. It is unknown whether Fujifilm has any reasons to accept the request from Kyoto University. Also, it is unknown how ID Pharma sets licensing fee. Its paretent company I’rom Group jumped in stock price, in response to this news story.

The following are possible patents Kyoto University concerns. Please note that Kyoto University does not disclose specific patents.

CDI’s related patents
JP5897002 (PCT/US2011/043218)
JP5968871 (PCT/US2011/032309)
JP6005666 (PCT/US2012/024098)

ID Pharma’s related patents
JP5856949 (PCT/JP2011/059429)
JP5908838 (PCT/JP2011/069588)

Sunday, December 3, 2017

A brief study of Japan patent infringement case decisions in 2017

December - it’s a good time to take a look back over the past year.

The previous article in March introduced the statistics 
of patent infringement case decisions in 2014-2015 which were disclosed by the Supreme Court. Now I just made a brief study of patent infringement case decisions in Tokyo District Court  and Osaka District Court ruled in 2017, using the judicial decision database provided by the court, though it may be too early.

Thirty seven (37) decisions are retrieved from the database. The latest one was ruled on September 28. Around fifty (50) cases may be ruled by the end of December at this pace. The exact number is expected to be published by the court later. Maybe you think this number is very small. But, in Japan, only about 200 patent lawsuits are filed in a year. Then, they often end with a settlement. Judges often encourage settlement in Japan. For your reference, 77 cases ended with a settlement, while 125 cases got court decisions in 2014-2015, according to the statistics provided by the Supreme Court above.

The winning rate of patent holders is 27% (10 cases uphold; 25 cases dismissed; 1  counterclaim uphold; 1 case seeking declaration of non-existence of obligation uphold). This looks still unfavorable to patent holders. However, there is a counter-arguement against such an opinion that it is not unfavorable to patent holders, considering settlement cases. For your reference, 79% cases (61 of 77 cases) of settlements are favorable to patent holders.

Invalidity defense was made in the proceeding of 26 cases. The patent in question was regarded as invalid in 6 cases, and regarded as valid in 5 cases. No decision was made in the remaining 15 cases, where the court determined in front on whether the claim covers the accused device and made a negative judgement. 

The maximum of damages awarded by court is approximately JPY 200 million (USD 1.8 million) the plaintiff - Chugai Pharmaceutical - requested JPY 315 million (USD 2.8 million) based on the jointly held patent with Columbia University (a priority claim based on U.S. provisional application 60/025361).

There are no cases in which a plaintiff seeks huge damages. The maximum of damages claimed is JPY 1 billion (USD 9 million), though it was dismissed by the court. 

The basic concept of damage recovery in Japan is to fix actual damages, not liable for punitive damages. Even so, I’m wondering if the Japanese market is so small, or patent holders just seek damages to the extent allowed by court.

Currently, the government is planning to mark down patent fee to half-price for SMEs.  This is to make patent system more accessible to SMEs which don’t have enough funds. Also, it is planning to expand grace period from 6 months to one year. The government is continuously improving patent system, including speed and quality of examination. 

That’s nice. But just because patent fee is cheap or services are nice, doesn’t mean that companies increase patent filing. Showing the value of holding patents or the risk of doing business without patents in Japan must be rather effective. When they learn the value of patents, they would manage to obtain patents even if they are expensive for them.

Saturday, November 25, 2017

Japan defers the introduction of SEP ADR system

As introduced in the previous article, Japan discusses the solution to dispute over standard essential patents (SEP); for example, the introduction of the Japan Patent Office (JPO) ADR system to determine appropriate license fee of SEP and the development of the SEP license negation guidelines.

However, the SEP ADR system is likely to be deferred. The document (available only in Japanese) distributed for the committee meeting to be held on November 27 2017 provides reasons for the deferment: for example, it cannot resolve dispute globally because the award system is applied to only Japanese patents, and the JPO is questioned about its ability to set out appropriate license conditions in individual cases. The government thinks introducing the SEP ADR system is difficult unless these problems are solved.

Instead, it suggests to extend the JPO’s advisory opinion service on the technical scope of a patented invention, referred to as ‘HANTEI’, to indicate whether or not a patent in question is a standard essential patent.

In addition, the SEP license negation guidelines for which the public opinions were requested worldwide is expected to be published in Spring 2018. However, it just organizes trend of legal precedent of the world on SEP dispute, and shows elements to consider in determining reasonable royalty rate to improve predictability, but not indicate specific royalty rate.

The outcome of the committee is going to be realistic but looks to be considerably toned down from the initial challenging goal. Now the interest will shift to the SEP guidelines which the European Commision is planning to release.

Sunday, November 12, 2017

AI becoming trendy in the Japanese IP industry

Recently media is crowded with the stories about products and services using artificial intelligence (AI) technologies. The use of AI technologies looks becoming hot equally in the IP industry.

On November 2 2017 Toshiba Digital Solutions (TDS), which was spun off from Toshiba Corporation in July 2017, announced that it has developed the image search technology which allows to identify similar logo, design, emblems and the like. The AI is used for similarity judgement. TDS proposes the use of this technology in the search of trademarks, designs, and copyright work. 

TDS exhibited this technology as a reference at Patent Information Fair & Conference held on November 8 - 10 2017. According to a representative in the booth, it is characterized by (i) extracting elements from the targeted image data object and searching them respectively (See the figure extracted from the TDS's press release, though it is in Japanese.) and (ii) identifying the element even if it is embedded in comparison image data. It might be a useful tool for searchers, since design search requires more effort than text search. It is expected to be available in 2018. On a side note, the Japan Patent Office (JPO) plans to start picture trademark search using AI on a trial basis in 2019, while AI design search is not yet in sight.

In the fair, several IP service companies were found which provide AI solutions for patent search, e.g. FRONTEO and It seems to be, as a whole impression, currently in the stage where the use of  AI itself calls attention to the market. In the next step, each company may be required to demonstrate precision of its AI solution. It’s just an idea, but how about holding a contest in the part of a project like ‘Peer-To-Patent’?

For patent licensing professionals, the EoU (Evidence of Use)  feature of XLPAT may be interesting, which is not a Japanese company’s solution though. It retrieves the Internet information to identify potential infringers based on input patent number and claims.

Any AI solution - If we are going to become more effective in our use of working time, it would be welcome.

Friday, November 3, 2017

Japan Supreme Court reverses taxation on DENSO’s subsidiary in tax haven

On October 24 2017, the Japan Supreme Court reversed the taxation based on the Anti-Tax Haven (or Controlled Foreign Company: CFC) rules imposed on the income of DENSO’s subsidiary in Singapore.

Under the CFC rules, income arising from a foreign subsidiary located in the state or territory with significantly lower tax rates is deemed to arise as the income of the parent company under certain conditions, for example when its ‘principal business’ is holding shares or bonds, licensing industrial property rights etc. However, the CFC rules is not applied when the subsidiary is a substantial independent company and it is economically rational for the subsidiary to conduct business in the state or territory. More specifically, the CFC is not applied when it meets all of the following conditions;

  1. Its principal business is not holding shares or bonds, licensing industrial property rights or any other rights concerning technology etc. (Business)
  2. Having an office, store, factory or any other fixed facility that is considered to be necessary for conducting its principal business in the state or territory where its head office or principal office is located. (Substance)
  3. Taking charge of managing, controlling and operating the business by itself. (Control)
  4. When its principal business is wholesale business, banking business, trust business, securities business, insurance business, water transportation business or air transportation business, it conducts business mainly with a person other than a predefined related party. (Non-related party); When its principal business is not above-mentioned business, it conducts a business mainly in the state or territory where its head office or principal office is located. (Business location)

The Supreme Court ruled that the ‘principal business’ should be determined based on its concrete and objective business activities in the fiscal year. And when it conducts multiple businesses, it should be comprehensively examined based on its revenue or income obtained by each business activity, the number of employees required for the business activities, the situation of offices, shops, factories and other fixed facilities etc.

In this case, the DENSO’s Singapore subsidiary manages subsidiaries or affiliates in ASEAN and other territories, and its sales of service to improve logistics in the territories amounted to 85% of its revenue, while 80-90% of the pretax income is from dividend on the shares of the subsidiaries and affiliates. 

The Supreme Court stated that the Singapore subsidiary, with reasonable size and substance, conducts a broad range of businesses including finance and logistics with economically rational purpose of streamlining its ASEAN operations, and then judged the taxation based on the CFC rules illegal.

Saturday, October 21, 2017

Toyota forced to pay JPY 400 milion in back taxes due to failure to declare withholding tax on royalty to foreign companies

On October 13 2017, it was reported that Toyota was forced to pay JPY 400 million in back taxes by Tokyo Regional Taxation Bureau due to failure to declare withholding tax on intellectual property royalty to foreign companies. Toyota outsourced the development of rally cars to a subsidiary company in Germany and a Finnish company, and paid them JPY 2.6 billion for the development. The bureau recognized JPY 0.9 billion of the JPY 2.6 billion as IP royalty to be withheld. Toyota reportedly didn't get patent license from the foreign companies, but get some technologies and data for the development. And the bureau recognized such technology and data as 'knowledge with special technological value' for tax treatment.

When a company pays royalties to foreign companies for the use of their 'industrial property rights etc.' in Japan, it is required to withhold income tax payment for the foreign companies. The 'industrial property rights etc.' includes 'knowledge with special technological value' such as know-how and the like, according to the definition of 'industrial property rights etc.' in the circular notice for legal interpretation (161-34) [in Japanese].

Withholding Tax Guide 2017 [in English] page 34
6. Procedure for Withholding from Income Paid to Non-Residents or Foreign Corporations
(8) Any of the royalties or considerations listed below received from a person who performs operations in Japan pertaining to that operations
a. Royalties on or consideration for the transfer of rights concerning technology such as industrial property rights, production methods involving special technologies, or know-how

In case of a patent license agreement or a technology license agreement, it clearly identifies licensed rights and royalties. However, when some data is provided as part of development of something under a development agreement as here, it may not identify royalties on such data as distinguished from the development fee for other development activities. It would be desirable to list expense items carefully, so that you do not have to pay more taxes than necessary in response to findings by the bureau.

Saturday, October 14, 2017

Patent analysis reveals 1000+ Japanese engineers moved to Asian manufacturers

Increasing mobility of employment is recently highlighted in Japan to improve productivity and competitiveness of Japanese companies. Ironically, it seems to have been progressing, especially from Japanese companies to foreign companies.

Reportedly, at least more than 1000 Japanese engineers have moved from Japanese electronic manufacturers to other Asian manufacturers in about 40 years from 1976 to 2015. It was revealed by patent analysis, particularly by tracking inventors. According to the result of the analysis, 490 engineers moved to Korean companies from Japanese electronic companies such as Hitachi and Panasonic, while 196 engineers moved to Chinese companies. Many of such transferers reportedly lost their jobs to corporate restructuring from the 1990s onward but got well-paid job offers from Asian companies.

In recent years, the Japanese government has been concerned about a decline in Japanese company competitiveness due to technology leakage resulting from transfer of Japanese engineers to foreign companies. Then, it amended Unfair Competition Prevention Act in 2015 to strengthen the protection of trade secrets (Please see my previous article for more information.). Generally, retired persons have a responsibility to protect confidential information of the companies they used to work for. However, it is just not realistic to restrict the use of skills they acquired during the term of employment. Therefore, companies should obtain patents of valuable technologies developed by their engineers to secure exclusive use of the technologies even after they leave, and ensure return or discarding confidential information when they leave. Meanwhile, companies should be aware that they have the potential to accidentally obtain other companies' confidential information by hiring engineers who used to work for other companies, and get embroiled in dispute.

We live in a globalized world. Both companies and individuals can be active in the most suitable place. It's natural for engineers to want to work at a company which appreciates them. Both the government and companies should know that they require efforts to be chosen by great talent.

Monday, October 9, 2017

SoftBank enters technology transfer & scouting business

On October 4 2017, SoftBank Corp. announced that it signed a partnership agreement with Wellspring Worldwide Inc. to enter technology transfer and technology scouting business.

Wellspring is a Chicago-based solution provider for technology transfer, technology scouting, and intellectual property management. In partnership with Wellspring, SoftBank begins selling Wellspring's integrated management system 'Sophia' for academic institutions and 'Wellspring' for enterprises in Japan from November 2017. The users of 'Sophia' and 'Wellspring' can find technologies or intellectual properties, and transfer or license them through the use of 'Flintbox' which is an innovation marketplace provided by Wellspring. SoftBank can sell the Wellspring's system only in Japan. However, the customers in Japan must be able to approach overseas universities and companies through Flintbox.

In Japan, increasing companies have an interest in technology transfer or business matching business, as introduced in the previous article. Now SoftBank enters this business. It's interesting to see how SoftBank develops it.

Thursday, October 5, 2017

Japanese government asks for suggestions on guidelines for SEP license negotiation

On September 29, the Japanese government started discussing issues involved in licensing of Standard Essential Patents (SEPs) in accordance with Intellectual Property Strategic Program 2017 which was published in May 2017. The Intellectual Property Strategic Plan 2017 includes an examination of ADR system which is expected to  determine appropriate license fee on SEPs, considering SEPs becoming highly influential along with popularization of IoT (Internet of Things) technologies.

At the meeting on September 29, three economic groups - i.e. Japan Electronics and Information Technology Industries Association (JEITA), Japan Business Federation, and Japan Intellectual Property Association (JIPA) - made presentations on the issues on SEP licensing, which covered;

  • Problems of 'holdup' (i.e. forcing to pay excessive licensing fee) and 'holdout' (i.e. free-riding patents). The holdout problem is prevalent, the presenter answered to a question.
  • Approaches to SEP injunctions taken in the US and EU. Panasonic is introduced as a supporter of the safe harbor approach.
  • Suggestion of different approaches between good faith and bad faith parties; i.e. for good faith parties, negotiations by the parties should be respected, while, against bad parties (e.g. NPE), some sort of a quick, binding, and transparent solution system should be prepared.
  • NPE problem. The presenter gave an answer that it is not a serious problem in Japan as of today, but Japanese companies concern about future possibility.

Finally, the JPO explained about guidelines for SEP license negotiation which is scheduled for publication next year. It covers licensing negotiation method, reasonable royalty levels, and the like. The tentative outline of guidelines is below.

Under criticism of lack of expertise in licensing, the JPO wants to develop a world-class guidelines, thus it decided to ask for suggestions from home and abroad. The deadline of submission of your suggestions is November 10 2017. If you are willing to contribute, please see here for details.

Saturday, September 30, 2017

The first registration of wordless sound marks in Japan

On September 26 2017, the Japan Patent Office (JPO) announced that it made a decision to allow registration of wordless sound mark for the first time. 

In April 2015, Japan expanded trademark protection to cover non-traditional marks in different formats which include sound, motion, position, hologram, and color per se marks without delineated contours. Approximately 1,600 trademark applications for these new types of trademarks have been filed and more than 300 trademarks have been registered. When color per se marks were allowed to be registered for the first time in Japan, I picked up the news in this blog in March this year. No other color per se marks have been registered since then. 

For sound marks, 566 trademark applications have been filed, and then 172 trademarks have been registered. However, sound mark consisting only of musical elements (i.e. melody, harmony, rhythm, tempo, tone color etc.) has never been registered so far. However, finally, the JPO has made a decision to allow registration of the following three wordless sound marks below.

Intel's sound mark (Class 9: Microprocessor,  Software Programmable Microprocessors)
BMW's sound mark (Class 12: Automobiles and parts thereof, included in this class)
Taiko Pharmaceuticals' sound mark (Class 5: gastrointestinal medicine)
A next topic of interest on the new types of trademarks could be their enforceability including judgement of similarity or confusion.

Also, it should be noted that the government started to discuss how trade dresses such as store designs should be protected in Japan.

Saturday, September 23, 2017

Japanese generic company works on strategic lawsuit with a recently acquired US company to develop the US market

A Japanese generic company, Sawai Pharmaceutical Co. is planning to actively work on lawsuits in the US in cooperation with its US subsidiary, Upsher-Smith Laboratories Inc., the Nikkan Kogyo Shimbun (the Daily Industrial News) reported on August 25. Sawai acquired Upsher-Smith for $1,050 million on May 31 this year. 

According to the article, Sawai will conduct invalidity search for patents which protect original drugs and of which remaining patent term is long until expired, to submit paragraph IV certifications. By invalidating patents for original drugs, Sawai expects to expand sales of its generic drugs. Sawai has a plan to release one or two generic drugs per year in the US, starting from early 2020's, through this kind of activities.

Sawai obtained ANDA (Abbreviated New Drug Application) approval for Pitavastatin Tablets in February this year. It is said that this is the first ANDA approval based on a paragraph IV for Japanese generic manufacturers. It seems that Sawai doesn't want to wait for expiration of patents, but rather wants to actively  invalidate patents for original drugs. IP service companies who excel in patent invalidity search may become good partners for Sawai.

The Japanese government concerns about the growth of medical expenses in recent years. In 2016, the amount of total national medical expenses amounted to JPY 41.28 trillion, which includes drug dispensing cost JPY 7.49 trillion. The government is promoting the use of generics to reduce medical expenses and announced a plan to make penetration rate of generics increase to 80% by September in 2020 (cf. 69.8% in December 2016). 

If Sawai goes well, other Japanese generic companies may follow the same approach as Sawai. I personally don't want to see many patents for original drugs invalidated, though.

Friday, September 15, 2017

Border Enforcement: China stays top in originating country of infringing imported goods into Japan

The US initiated Section 301 investigation of Chinese trade practices from the aspect of IP infringement, technology transfer and innovation. Regardless of whether Section 301 should be used, the issue of IP infringement by Chinese companies is not someone else's problem for Japan.

On September 8, the Japanese government published statistics on import suspension of IP infringing goods into Japan during the first half of this year.

The number of import suspension cases is 15,393, that shows an increase of 11.1% on the same period last year. However, the number of import suspension goods is down 4.8% (278,964 goods) from the same period last year. It may be because of increase in mail transportation caused by expansion of e-commerce.

Note: "Number of import suspension cases" is the number of import declarations or mails that contain IP infringing goods that the customs suspended. "Number of import suspension goods" is the number of IP infringing goods that the customs suspended. 

As for the country of origin, 14,282 import suspension cases (92.8% of the total) came from China, that is rise of 12.5% on the same period last year, and China remains top for the 7th consecutive year.
China files more than 1 million patent applications in a year, regardless of quality of the patents, and it is becoming an IP major power. Furthermore, the Chinese government is driving forward utilizing patents. Such circumstances should increase awareness of IP issues in more Chinese companies, and contribute to reduction of IP infringement.  

By types of intellectual property, most of the cases are import suspension due to trademark infringement  (15,147 cases or 98% of the total; 159,488 goods or 57.2% of the total). The remarkable change comparing to the same period last year is the increase of design right cases. 77,789 goods were suspended due to design right infringement.  It is approximately 18 times more than the same period last year. Recently, Japanese companies recognize the importance of design to improve product competitiveness, thus they may increasingly use design right for enforcement. As for patent, only 15 cases (0.1% of the total) or 21,390 goods (7.7% of the total) were suspended. Compared with trademark or design which are distinguishable in appearance, patent is not easy to check at the customs. We should recognize the importance of "detectability" (of infringing goods) and "provability" (of infringement) that are measuring factors often used in the evaluation of patents.

Please refer to IPR Boarder Enforcement for details on the procedure for import suspension in Japan.

Saturday, August 26, 2017

AI v. Crowd Searching? - Article One Partners expands their business to Japanese market

In May, the partnership between Article One Partners (AOP), an patent research community, and Intralink, a consultancy specializing in market-entry and business development services was announced. A couple weeks ago, I had a chance to learn AOP's business from Will Jasprizza, Head of IPR and Managing Director of Intralink Japan.

AOP owns a network of 40,000+ researchers in more than 170 countries worldwide, and gives rewards to a researcher who successfully identifies the best literature to invalidate a target patent.

Recently, we see news report on AI-based services introduced in various industries every day. So, you may think that such a literature search service will be replaced by AI technologies soon. In fact, some companies already provide patent literature search system which uses AI technologies, and I have taken such system out for a spin to compare the results with our in-house researcher's. From our experience, human searchers are likely to have an advantage compared to the AI-based system for the near future.

However, as for patent literature search, the crowd searching may not capitalize on its strength. Because it almost depends on prepared search strings and scope of search (e.g. country, time period, database). In this field, AI system may come to help with most of the work in the near future, and human researchers just have to review the literature identified by the system. Probably, it is an ideal patent search system, when AI search system becomes more sensible.

Instead, I see more potential in the crowd searching (human search engine) when it is used for searching something out of the reach of the computer, e.g. investigating counterfeit goods in meatspace. In addition, it may have room for improvement in efficiency of research by managing their researchers not to conduct duplicated work.

Anyway, I'm expecting AOP to play an active role in Japan. Sony Corporation is introduced as a user in Japan of AOP's human search engine. I will wait hopefully for Sony publishing an experience report.

Saturday, July 29, 2017

Sharp determined to use an alternative name in U.S. TV market

This is the update of the trademark dispute between Sharp and Hisense in the US television market. On July 24, it was reported that Sharp will use an alternative name, instead of "Sharp" and "AQUOS", for their televisions in the US market.

In July 2015, Sharp once decided to withdraw their TV business in the US, and signed a trademark license agreement with Hisense in January 2016 to permit Hisense to use the "Sharp" and "AQUOS" marks for televisions in the US. However, after acquired by Foxconn in August 2016, Sharp decided to re-enter the US television market. Then, they tried to terminate the license agreement with Hisense, but faced difficulty in the negotiation and filed a lawsuit after all.

Now, Sharp is planning to sell mainly high-end TVs with large-screen of 60 inches or above in the US. They didn't unveil the trademark, but just commented it is under examination for trademark registration.

When looking into the USPTO's trademark database, the candidate mark may be "REVEL8TION". It was filed in July 2015, where the designated goods include LCD television receivers, and the examination status indicates "A third request for extension of time to file a Statement of Use has been granted." And "8" in the mark seems to imply 8K resolution.

Anyway, this will be a good lesson for how to handle trademarks for products and services which you have a plan to withdraw your associated business in some countries. Sharp will be required to reconsider their brand strategy, especially the relationship between the new mark and "Sharp" and "AQUOS" brands outside the US. They may result in bearing a large burden to build a global brand.

Sunday, July 23, 2017

Japanese companies falling behind in portfolio restructuring

The Japanese government recognizes rapid and flexible business restructuring as an issue for Japanese companies to improve international competitiveness.

The chart, which is included in the material distributed in the Industrial Structure Council, shows the distribution of profit rate in all business segments of Japanese companies, in comparison with American companies and European companies. Over 60% of businesses of Japanese companies have less than or equal to 5% in operating profit on sales.  On the other hand, for US companies, more than 70% of businesses have higher than or equal to 10% in operating profit on sales. It is pointed out that the Japanese companies cannot make a decision promptly to restructure their business even when it carries low margins, and they finally decide to restructure it  when they have to cut their losses. 

Restructuring of patent portfolio seems to fall further behind the business restructuring. A typical pattern is:
1. An organization dissolved by withdrawal from business.
2. No one remained in the company who can assess the value of the related technologies and IP assets.
3. IP department maintains the IP assets, because they can not decide to abandon or sell them out.
4. IP department asks an outside IP service company's advice, when a problem (e.g. budget cut) occurs or asset maintenance management draws the attention. 

A patent portfolio manager who is independent from a business division and well-established in the related technologies surely can solve such a problem. But if your company does not have the patent portfolio manager and faces the problem, contact me!

Wednesday, July 19, 2017

Sharp sues Hisense for patent infringement in the US

Sharp seems to be trying everything to get back the US TV operation they gave up once. In June, Sharp filed a lawsuit to get Sharp’s name back from Hisense for use in the US.

And now, according to the press release, Sharp filed a patent infringement suit against Hisense (Hisense Electric Co.,Ltd,  Hisense USA Corporation, and Hisense Electronics Manufacturing Company of America Corporation) in New York Southern District Court on July 17. Sharp alleges that Hisense produces and sells smart TV which infringes Sharp’s wireless LAN related patents in the US, and seeks damages and an injunction.

Sunday, July 9, 2017

Japan aiming to enhance competitiveness by branding product designs

On July 5, the Japanese government announced that it has established a research group to discuss product designs to strengthen Japanese companies' competitiveness and publish a report by March 2018. 

The background is that it is recently difficult for Japanese companies to differentiate their products from competition in function and quality, and they tend to get caught in a price war with emerging countries' products. 

Apple and Dyson are mentioned in the press release as typical examples of successful companies in branding their products, where they put in design their  unique strengths and technologies to enhance the value of their products.

The media reported that the government considers amending the Design Act to protect a series of designs of a product series (e.g. iPhone) collectively, and also considers protection of store designs (e.g. Apple Store, Starbucks) in some way. It gives no further details but I'll watch the discussion and keep you updated.

For branding product designs, we need good designers who can design products in accordance with company's brand identity, and also need to make effective and unwavering marketing effort in accordance with the brand identity. 

For specifically Japan, first of all, maybe we should produce good designers in the field of industrial design. According to World Design Rankings, Japan is 7th place in overall ranking (cf. US ranks 1st, China 2nd, Germany 9th), but Japan is out of rank in the fields of "Digital and Electronic Devices" (cf. US ranks 3rd, China 2nd, Germany 9th) and "Home Appliances" (cf. US ranks 4th, China 3rd, Germany 5th). Just for information, in the field of "Vehicle, Mobility and Transportation" design, Japan ranks 15th (cf. US ranks 3rd, Germany 6th, China 23rd).

Sunday, July 2, 2017

Japan's SMEs increases patent applications

On June 29, the Japan Patent Office (JPO) released an annual status report (in Japanese). According to the report, 318,381 patent applications were filed in 2016, that is down 0.1% from the previous year. It has been on a downward trend since 2006.  But hopefully it may almost touch bottom, since it reduces the diminution.

In such a situation, the encouraging news is that SMEs actively file patent applications. In 2016, 39,624 patent applications were filed by SMEs, that is up 10% from the previous year.

I'm expecting SMEs to bring innovation. However, SMEs have limitations in resources, knowledge and skills of intellectual property. Therefore, they need good advisors and partners to develop IP strategy and utilize their IP assets. Also, SMEs don't have enough budget to build a large patent portfolio. A sovereign fund or others should consider to manage and utilize SMEs' good IP assets to increase their international competitiveness.

Monday, June 26, 2017

IP Bridge successfully closed patent license agreement for SEPs on wireless telecommunications

Japan's IP Bridge announced that, on June 22, they entered into a patent license agreement on standard-essential patents (SEPs) on wireless telecommunications (including the GSM, W-CDMA and LTE wireless telecommunications standards).

The name of licensee is not disclosed in their press release. But Chinese TCL Communication Technology is a possible candidate, since it was reported in 2015 that IP Bridge sued TCL for patent infringement on the W-CDMA and LTE telecommunication standards in the US.

This is the IP Bridge's second announcement this month on patent licensing, following the settlement with Broadcom. Is it becoming harvest season for IP Bridge?