December Issue [General] Newsletter

2023 US Patent Acquisition Ranking by Company

The United States Intellectual Property Owners Association (IPO) has announced the patent acquisition ranking by company for 2023. According to IPO, 2023 patents were issued in 312,486 (down 3% from the previous year).
In the ranking, Samsung Electronics took first place for the second time last year with 9,036 cases. LG was in second place with 2 cases, while IBM, which was second last year and the leader from 4,170 to 2, came in third with 1993 cases. Fourth place Qualcomm has 2021 cases, an increase of 3,953% from the previous year, a significant jump from his 3th place last year. Also, in this year's ranking, major US IT companies (Big Tech) such as Alphabet (Google's parent company) and Apple have moved up their rankings and entered the top 4.
Among Japanese companies, CANON has the most cases with 3,199, an increase of 2,667% from the previous year, but has fallen from 2,057th place last year to XNUMXth place. In addition, Toyota fell from XNUMXth place to XNUMXth place with XNUMX cases, down XNUMX% from the previous year, and SONY fell from XNUMXth place to XNUMXth place with XNUMX cases, down XNUMX% from last year.

Revision of examination request fee reduction/exemption system

Regarding the reduction/exemption system for examination request fees for patent applications available to small and medium-sized enterprises, etc., based on the "Act for Partial Amendment of the Unfair Competition Prevention Act, etc. (Act No. 5 of June 6, 14)," There will be a limit on the number of cases. This system will be applied to applications for reduction or exemption of examination request fees for applications requested for examination on or after April 51, 2024. A system of reduction and exemption of examination request fees has been established for small and medium-sized enterprises, etc., with the aim of encouraging inventions by people who have high potential but are unable to fully carry out intellectual property activities due to financial and human resources constraints. However, in light of the fact that the system has recently been used in ways that are inconsistent with the purpose of the system, the "Act for Partial Amendment of the Unfair Competition Prevention Act, etc. (Act No. 4 of June 1, 5)" has been enacted. We have decided to set some limits on the number of cases in which exemptions can be applied. In addition, in the "Cabinet Order Concerning the Development of Related Cabinet Orders (Cabinet Order No. 6 of November 14, 51)" in conjunction with the enforcement of the Act to Partially Amend the Unfair Competition Prevention Act, etc., startup companies, universities, research institutions, etc. etc. will be exempted from certain number limits for application of reduction/exemption, and the upper limit will be calculated by taking into account the average number of requests for examination by large companies. The maximum number of cases is set at 5 in the Ministerial Ordinance to Partially Amend the Enforcement Regulations of the Act on Special Provisions for Procedures, etc. Regarding Rights (Ministry of Economy, Trade and Industry Ordinance No. 11 of January 29, 338).

USPTO charges fees for filing patent applications in non-DOCX file formats

The USPTO will finalize its policy at the end of 400 to impose an additional fee of $2023 on non-provisional patent applications if the electronic specification, claims, and abstract files are not in DOCX file format, and Application started from non-formal applications.
Previously, when electronically filing an application with the USPTO, it was possible to file in PDF or DOCX format. Promoted the transition to filing in DOCX format and imposed an additional fee on filing in PDF format. Initially, the application of the additional fee was scheduled to start from January 2022, 1, but due to the possibility of DOCX files causing problems such as incorrect conversion on the electronic application system, intellectual property related parties There were many concerns raised, and the start date of its application was postponed several times.
In addition, in response to concerns from intellectual property stakeholders, the USPTO has long allowed backup PDF files to be submitted free of charge when filing in DOCX format, and the new additional fee has not been applied. The company explained that even after the start, the same operation will continue until further notice. He resolved in December 2023 that the Intellectual Property Owners Association of America (IPO) would support a move to the DOCX format if backup PDF file submissions were permanently allowed.

European Parliament adopts position on draft SEP regulation in Committee on Legal Affairs

欧州議会は、2024年1月24日、法務委員会（JURI）にて、欧州委員会が 2023年4月に提案した標準必須特許（SEP）に関する規則案（「欧州委員会、標準必須特許など知的財産に関する一連の規則案を発表（2023年4月27日）」を参照）に対する立場を賛成多数（賛成：13 票、反対：0 票、棄権：10 票）で採択した旨、プレスリリースにて公表した。
According to this, the European Union Intellectual Property Office (EUIPO) has established the SEP Licensing Assistance Hub as a one-stop shop that provides free training and support to small and medium-sized enterprises (SMEs) and startups. (Article 3, Paragraph 2 (h) of the Proposed Regulations).
Also, which SEPs should small and medium-sized enterprises use and pay for when developing products, and if they own such patents, how should they get paid for them? (Article 61, Paragraph 1 (a), (b) of the draft regulation).
Additionally, it will create a register of SEP owners, verify which patents are truly essential to a particular standard, what is the fair compensation for the use of such patents, and assist in related negotiations between companies. (Article 13 of the proposed regulations).
Additionally, an electronic database containing detailed information on SEP conditions should be established for registered users, including academic institutions (Article 5 of the proposed regulation).
In addition, the Center of Competence will train SEP evaluators and mediators between parties and create a roster of candidates for these positions. A provision will be added to ensure that these candidates have the necessary qualifications and are impartial (Article 27 of the proposed regulations).
In addition, the Competence Center will further cooperate with domestic and foreign patent offices and third country authorities that handle SEP to obtain information on SEP-related regulations outside the EU (Article 12 of the Draft Regulation).

Global Intellectual Property Strategy Forum 2024 held

On January 2024, 1, the Japan Patent Office co-hosted the "Global Intellectual Property Strategy Forum 25" with the Independent Administrative Institution Industrial Property Information and Training Center (INPIT). The purpose of this forum is to introduce the latest topics related to management and intellectual property strategies, and to help build intellectual property strategies that are linked to business strategies. This time, the event was held at a hybrid venue and live streaming, with a total of over 2024 participants.
In the morning program, after the opening address from the Japan Patent Office Commissioner Hamano, two keynote speeches and a panel discussion were held on the themes of solving social issues, improving corporate value, and IP landscape-related intellectual property initiatives. Ta. First, Keiichi Kobayashi, Chairman and Director of Furukawa Electric Co., Ltd., gave a lecture on management methods centered on intellectual property and intangible assets, as well as business, intellectual property, and R&D strategies that utilize the IP landscape. Next, Professor Emeritus Kunio Ito of Hitotsubashi University talked about the deepening and expansion of corporate management and governance reforms over the past 2 years, regarding the points necessary to realize management that creates increased corporate value using intellectual property and intangible assets as drivers. The lecture was based on the history of Afterwards, in order to popularize and promote GXTI, a panel will discuss the current status and future direction of business opportunities for GX-related technologies, as well as points that investors emphasize when disclosing non-financial information, including GX-related technologies. A discussion was held.
In the afternoon, two panel discussions were held, in which large companies, startups, and consultants supporting IP landscapes, who are leading the way in implementing IP landscapes, discussed the ideal human resources for implementing IP landscapes and internal companies. A panel discussion was held about the system, including specific examples, such as the mindset of intellectual property department members when putting it into practice and the need for a change in mindset. Afterwards, a panel discussion was held by three globally active startup companies to discuss intellectual property strategy initiatives at each growth stage and points to be aware of when planning global expansion.

Newsletter translated into English

US Patent Issuance Ranking by Company for 2023

The American Intellectual Property Owners Association (IPO) has released its ranking of patents granted by company for the year 2023. According to the IPO, 312,486 patents (down 3% from the previous year) were issued in 2023.
In the ranking, Samsung Electronics took the 1st place with 9,036 patents issued followed by LG with 4,170 patents issued. IBM, which ranked 2nd last year and was the leader from 1993 to 2021, ranked 3rd with 3,953 patents issued. Qualcomm has moved up significantly from last year's 10th place and came in 4th place, with 3,886, a 46% increase from the previous year. Major US IT companies (big tech) such as Alphabet (Google's parent company) and Apple moved up in the top 10 in this year's ranking.
Among Japanese companies, CANON had the highest number with 3,199 patents, up 5% from the previous year, but dropped to 6th place from 5th place last year. For other companies, TOYOTA with 2,667 entries, down 12% from the previous year, dropped from 4th to 7th place, and SONY with 2,057 entries, down 22% from the previous year, dropped from 11th to 14th place.

Revision of Exemption System for Examination Fees

In accordance with the “Law Partially Amending the Unfair Competition Prevention Law, etc. (Law No. 51, June 14, 2023)”, the reduction or exemption of examination fees for patent applications available to small and medium-sized enterprises, etc. will be partially limited by setting a limit to the number of applications. This system will be applied to applications for reduction or exemption of examination fees for examination requests filed on or after April 1, 2024. The system of reduction or exemption of examination fees for small and medium-sized enterprises (SMEs) was established for like encouraging inventions by those who have high potential but are unable to fully implement their IP activities due to financial and human resource purposes. However, in light of the fact that the system has recently been used in a manner that is not in line with the goal of the system, the “Law for Partial Amendment of the Unfair Competition Prevention Law, etc. (Law No. 51, June 14, 2023)” will set a limit on the number of cases to which the reduction or exemption may be applied. In addition, in the “Cabinet Order Concerning the Establishment of Relevant Cabinet Orders Accompanying the Enforcement of the Law for Partial Amendment of the Unfair Competition Prevention Law, etc. No. 338 of November 29, 2023),” it was decided to exclude start-up companies, universities, research institutions, etc. from the limitation on the number of cases to which the reduction or exemption can be applied. This Cabinet Order also set the maximum number of cases to be calculated by taking the average number of examination requests by large companies into consideration. The “Ministerial Ordinance Partially Amending the Ordinance for Enforcement of the Patent Law and the Ordinance for Enforcement of the Law Concerning Special Provisions for Procedures , etc. concerning Industrial Property Rights (Ordinance of the Ministry of Economy, Trade and Industry No. 2 of January 31, 2024)” set the maximum number of cases at 180 cases.

USPTO to Charge for Patent Applications in Non-DOCX File Format

At the end of 2023 the USPTO finalized its policy of charging an additional $400 fee for non-provisional patent applications if the electronic files of the specification, claims, and abstract are not in DOCX file format and started to apply this policy to applications filed in non-DOCX format on or after January 17, 2024.
Previously, electronic filings with the USPTO could be filed in either PDF or DOCX format, but the USPTO decided to promote the shift to DOCX format and impose an additional fee for filing in PDF format in order to improve operational efficiency within the agency and to improve the pre-filing error checking function. The additional fee was originally scheduled to be applied from January 1, 2022, but was postponed several times due to many concerns raised by IP professionals that DOCX files may cause problems in the electronic filing system such as erroneous conversion.
To address the concerns of IP professionals, the USPTO has allowed the free simultaneous submission of a backup PDF file when filing in DOCX format, and has explained that it will continue this practice even after the additional fee is applied until further notice. The American Intellectual Property Owners Association (IPO) had resolved in December 2023 that it would support the transition to the DOCX format if the filing of backup PDF files was permanently permitted.

European Parliament Adopts Position on Draft SEP Regulation in Committee on Legal Affairs

On January 24, 2024, the European Parliament announced in a press release that the Committee on Legal Affairs (JURI) adopted, by a majority vote (13 votes in favor, 0 votes against, and 10 abstentions), its position on the Commission's April 2023 proposal for a draft Regulation on standard essential patents (SEP) (see “Proposal for a regulation of the European Parliament and of the Council on standard essential patents and amending Regulation (EU)” (April 27, 2023)).
The proposal calls for the establishment of a SEP Licensing Assistance Hub at the European Union Intellectual Property Office (EUIPO) as a one-stop shop providing free training and assistance to small and medium-sized enterprises (SMEs) and start-ups (Article 3.2 (h) of the draft Regulation).
It should also assist SMEs in identifying how to most effectively enforce their rights, such as which SEPs they need to use and pay for when developing a product, and how to obtain compensation if they own such patents (Article 61.1(a) and (b ) of the draft regulation).
In addition, a registry of SEP holders should be created to verify which patents are truly essential to a particular standard and what the just compensation is for the use of such patents, and to provide assistance in related negotiations between companies (Article 13 of the draft regulation).
Furthermore, an electronic database should be set up for registered users, including academic institutions, with detailed information on the terms and conditions of SEPs (Article 5 of the draft regulation).
A competence center should train SEP evaluators and mediators between the parties and develop a roster of candidates for these positions. A provision will be added to ensure that these candidates have the necessary qualifications and are impartial (Article 27 of the draft regulation).
The Competence Center would further cooperate with national and international patent offices and third country authorities dealing with SEPs to obtain information on SEP-related rules outside the EU (Article 12 of the draft regulation).

Global IP Strategy Forum 2024 Held

The Japan Patent Office (JPO) held the “Global IP Strategy Forum 2024” on January 25, 2024, jointly with the National Institute of Industrial Property Information and Training (INPIT). The purpose of this forum is to introduce the latest topics related to management and IP strategies, and to help build IP strategies that are linked to management strategies. This year's event was held as a hybrid of an on-site venue and live-streaming, with a combined total of over 1,500 participants.
In the morning program, after opening remarks by Commissioner Hamano of the JPO, two keynote speeches and a panel discussion were held on the themes of solving social issues, increasing corporate value, and IP efforts related to IP landscapes, etc. First, Mr. Keiichi Kobayashi, Chairman of the Board of Furukawa Electric Co., Ltd. gave a lecture on management methods focusing on IP and intangible assets, and business, IP, and R&D strategies utilizing IP landscapes. Then, Professor Emeritus Kunio Ito of Hitotsubashi University gave a lecture on the key points necessary to realize management that creates corporate value enhancement with IP and intangible assets as the motor, based on the history of deepening and expanding corporate management and governance reforms over the past decade. This was followed by a panel discussion on the current status and future direction of business opportunities for GX-related technologies, as well as the key points that investors place importance on when disclosing GX-related technologies and other non-financial information, in order to promote and disseminate GXTI.
In the afternoon, two panel discussions were held by large companies and start-ups that lead in the practice of IP landscapes, as well as consultants who support IP landscapes. The panelists discussed the ideal human resources and corporate internal systems for implementing IP landscapes, including specific examples of how to prepare IP department members for the practice and the need for a change of mindset, etc. After that, a panel discussion was held by three globally active start-up companies on their IP strategies at each stage of growth and points to keep in mind when expanding their business globally.