Posts Tagged: "jpo"

The Japan Patent Office recently added ten new case examples pertinent to artificial intelligence-related technology to Annex A of its Japanese Patent Examination Handbook. The examples are meant to facilitate understanding of the description requirements and the inventive step requirement in Japan as applied to AI-related inventions. In doing so, they provide a useful preview for how other patent offices might begin treating AI-related inventions. The examples are also very useful for any practitioner with clients in the AI space who intend to file in Japan.

In a recent trademark opposition, the Opposition Board of the Japan Patent Office (JPO) dismissed an opposition by Mattel, Inc. – maker of the world-famous Barbie doll – who claimed “Salon BARBIES” is likely to cause confusion or association with famous Barbie doll when used on restaurant and fan club services.

The Swiss watchmaker Swatch’s effort to acquire the trademark for “SWATCH ONE MORE THING” has run in to opposition from Apple, which argues the phrase ‘one more thing’ is closely associated with the software giant’s founder Steve Jobs. During Apple press events, Jobs was known to precede new product announcements and introductions with the phrase “there is one more thing” in his keynote addresses. The “one more thing” prelude became a fixture at Apple events… Immediately after the JPO granted protection to the trademark, Apple filed an opposition in May 19, 2015 on the grounds that the trademark violates the main paragraph of Article 3(1) as well as 4(1)(vii), 4(1)(x), 4(1)(xv), and 4(1)(xix) of Japanese Trademark Law.

Given the broad range of countries deploying UAVs and the large number of applications for UAVs, we took a look at patent data from the last 20 years (1997 to 2016) to determine whether any trends in UAV development could be identified. Our findings show some surprising results with regard to development and patenting of drone technology. In this analysis we focuses on the top-5 patent offices for obtaining UAV related patents, the State Intellectual Property Office (SIPO) in China, the United States Patent and Trademark Office (USPTO), the European Patent Office (EPO), the Korean Intellectual Property Office (KIPO) in South Korea, and the Japan Patent Office (JPO).

At an initial examination proceeding, JPO examiner refused the trademark with respect to all goods in class 9 on the grounds that consumers can easily perceive or conceive the late Whitney Houston, an American famous singer from the applied mark “WHITNEY HOUSTON” written in a common font design. Besides, in a business to deal with music recordings, the title of a song or an album as well as name of performer or player are routinely indicated on goods or packages to show contents of it. Therefore, relevant consumers and traders at a sight of the applied mark used on designated goods in class 9 are just likely to conceive the goods contains music or performance by the late Whitney Houston. If so, IR no. 1204044 is subject to refusal based on Article 3(1)(iii) of the Trademark Law. Furthermore, when the applied mark is used on music recordings unrelated to Whitney Houston, consumers will surely be in trouble since they expect the goods contains song or performance of the late Whitney Houston. If so, it should be refused for registration based on Article 4(1)(xvi) due to misconception of quality of goods.

The Appeal Board of Japan Patent Office (JPO) has reversed an initial decision by JPO examiner to refuse the mark “GOTHAM CITY” with a logo, and ordered to grant protection for the mark by decision of March 14, 2017 [Appeal case no. 2016-9140]. The JPO decision states that consumers are unlikely to confuse or associate the mark “GOTHAM CITY” with Batman’s place of residence and DC Comics when used on apparel, bags and fashion accessories.

For non-residents, getting an invention to market in Japan is no small task. Filing patents there can pose significant challenges. More than cultural and language barriers, unique Japanese filing requirements and an unforgiving post-grant landscape could undo even the best and brightest market opportunities. Avoid the hassle and heartburn with these seven things that will help prepare you for filing in Japan.

The IP5 is the name given to a forum of the five largest intellectual property offices in the world that was set-up to improve the efficiency of the examination process for patents worldwide. The top five Patent Offices (IP5) have recognized this internationalization phenomenon and many directives have been introduced to facilitate cooperation between the patent offices… For example, the IP5’s Common Citation Document (CCD) application now allows access of up-to-date citation data of all five patent offices.

According to WIPO data, USPTO, EPO and KIPO are major ISAs for U.S. applicants; about 94% of intentional searches have been done by these three patent offices. U.S. applicants may consider the quality of search reports and cost of search fees as the most important factors in selecting an ISA. Search fees vary by ISA, for example, EPO’s rate is relatively high $2,125, USPTO’s rate is $2,080, and KIPO is well known to provide high quality earches with a relevantly competitive cost at $1,219.