August [General] Newsletter

Regarding the Standard Strategy Compliance Review (Trial)

To appropriately monetize intellectual property resulting from research and development to create "earning power" and achieve both market acquisition and market expansion, it is effective to appropriately promote the integrated use of standardization and intellectual property by combining research and development with secrecy, rights acquisition (patents, etc.), and standardization. Promoting standardization not only creates markets but also leads to improvements in safety and convenience for society and consumers.

The Japan Patent Office has previously set the goal of expediting patent examination, but will now begin a trial of a standard strategy-responsive examination system for patent applications relating to technologies in which the applicant or the company to which the inventor belongs is engaged in standardization activities (activities aimed at establishing and disseminating standards). This system will allow for flexible patent examination in line with the progress of standard development, and will conduct examination at a time desired by the applicant (up to 24 months after the request for examination).

By having the applicant explain to the examiner the position of the standard-targeted technology within the standard strategy, the relationship between the standard and the application, and the technical description of each application, the examiner will be able to understand the content of the standard and the position of the patent application within the standard before conducting the examination.

Every July, applications will be accepted from applicants who wish to apply for standard strategy-compliant examination for the one-year period from October 1st of that year to September 30th of the following year. Details on how to apply will be published on the Japan Patent Office website around mid-June each year.

Furthermore, the standard strategy compliance review will be flexibly reviewed based on usage patterns and user feedback.

EPO's research report on FRAND licensing rates

The EPO Observatory has published a research study on determining fair, reasonable, and non-discriminatory (FRAND) licensing fees for standard essential patents (SEPs).

To clarify how courts around the world determine FRAND conditions, this study collected and analyzed 65 court decisions, including various types of court orders and guidelines, from seven jurisdictions (countries/regions).

According to the survey, the number of FRAND rate determinations per year has fluctuated between 0 and 6 over the past 13 years, and there is no clear trend (increase or decrease) in the number of determinations. However, the geographical composition (breakdown by country/region) has changed significantly. From 2013 to 2015, the United States and Japan led the rate setting, but over the past 10 years, China, the United Kingdom, and more recently India have become the main courts.

The decline in the number of court-ordered royalty rate decisions in the United States since 2017 partially reflects the increased prevalence of jury trials in the country. On the other hand, "evaluations" of FRAND royalty rates—that is, judgments on whether a particular royalty rate or offer meets FRAND conditions—are remarkably concentrated in the European Union (EU), particularly Germany. Germany has emerged as a major venue for evaluating the FRAND nature of proposed license offers in injunction cases for standard-essential patents (SEPs) under EU competition law, with the Unified Patent Court (UPC) joining them in recent years.

Changes in the procedures for remedies after the expiration of the procedural period (USPTO)

On June 24, 2026, the USPTO published a final rule changing the rules regarding the proof of unintentional non-compliance with procedural deadlines in remedy procedures for rights lost due to the expiration of the procedural deadline.

For patent-related procedures such as annuity payments and priority claims, which have set deadlines, even if the applicant fails to comply with the deadline, procedural relief and restoration of rights are possible if the applicant files an application along with the prescribed fee and the Commissioner determines that the delay was not intentional. On the other hand, the Commissioner is permitted to request additional information from the applicant if there is doubt as to whether the delay was intentional or not.

Previously, the Director-General would only request the aforementioned additional information if the application was submitted more than two years after the expiration of the procedural period. However, this final rule shortens that period, and the additional information will now be required if the application is submitted more than one year after the expiration of the procedural period.

Furthermore, according to these final rules, even if less than one year has passed since the expiration of the procedural period, if there is doubt as to whether the delay was intentional, additional information may be requested.

In addition, along with the aforementioned operational changes, the rules will be amended to apply the high application fee, which was previously required for applications made more than two years after the expiration of the procedural period, to applications made more than one year after the expiration of the procedural period.

This final rule will come into effect on August 13 of this year and will apply to applications for post-period relief made on or after that date.

USPTO extends deadline for filing a request for Director-General's review of PTAB decision to commence proceedings.

On June 29, 2026, the USPTO announced that it would extend the deadline for filing a Director-General's review of decisions to initiate inter partes review (IPR) or post-grant review (PGR) proceedings at the Patent Trial and Appeal Board (PTAB).

The requirement to file a request for a Director-General review in case of dissatisfaction with a PTAB decision to commence proceedings, unless there is a valid reason to do so, is to be extended to within 30 days of the decision. 

According to the USPTO, the recent change in procedures stems from a Director's Review decision in June of this year that was designated as Precedential. In this case, after the PTAB decided to initiate proceedings for the IPR, the USPTO Director overturned that decision because all of the patent claims under review in a parallel patent infringement lawsuit were deemed invalid.

The USPTO has stated that it will exceptionally allow further extensions to the application deadline for this Director-General's Review if necessary, in relation to parallel litigation. Specifically, it explains that these exceptional cases include situations where all claims in pending parallel litigation are dismissed, all patent claims under review are deemed invalid, or the Sotera stipulation is revoked.

If a party believes they fall under one of the exceptional cases described above, they may apply for an extension of the application deadline by sending an email to the USPTO with a brief description of the circumstances that justify the extension, which may be no more than three sentences.

WIPO General Assembly of Member States, 2026

From July 7 to July 15, 2026, the General Assembly of the Member States of the World Intellectual Property Organization (WIPO) was held in Geneva, Switzerland, and a delegation from Japan, including Commissioner of the Japan Patent Office Kawanishi and Chief Patent Officer Yasuda, attended.

On the first day of the general assembly, Director-General Kawanishi delivered a general address on behalf of Japan.

In his speech, Director-General Kawanishi congratulated Director-General Tang on his reappointment for a second term, and touched upon the important role that the intellectual property system plays in solving global economic and social issues. He also expressed his gratitude to WIPO for its stable operation and improvement of the international application and registration system. In addition, he mentioned that Japan is supporting WIPO's initiatives through the Japan Fund, such as WIPO's support measures to promote the use of the intellectual property system by SMEs, startups, and entrepreneurs for global sustainable economic development, and WIPO GREEN, which aims to address the social issue of climate change, and reiterated his support for these efforts.

At the general meeting, various reports, budgets, and the activities of each committee were discussed.

Newsletter translated into English

Trial of Patent Examinations Responsive to Standardization Strategies

In order to appropriately monetize intellectual property obtained through research and development and turn it into “earning power”, and achieve both market acquisition and market expansion, appropriate promotion of the integrated use of standardization and intellectual property, by combining R&D with confidentiality, rights acquisition (patents, etc.), and standardization, etc. Promoting standardization not only creates markets but also leads to improvements in safety and convenience for society and consumers.

While the Japan Patent Office (JPO) has previously set targets for the speed of patent examinations, it will launch a trial of “Patent Examinations Responsive to Standardization Strategies”. This trial will enable flexible patent examinations tailored to the progress of the development of standards in the case of patent applications that concern technologies regarding which the applicants themselves or the companies to which the inventors belong to engaged in standardization activities (activities toward the establishment and dissemination of standards). Under this trial, examination will be conducted at a timing requested by the applicant (up to 24 months after the request for examination).

By having the applicant explain to the examiner the role of the standardized technology in their standardization strategy, the relationship between the standard and the application, and the technical details of each application, the examiner will conduct the examination after gaining an understanding of the content of the standard and the role of the patent application within that standard.

Every July, applications will be accepted from applicants wishing to request the a Patent Examination Responsive to Standardization Strategies during the one-year period from October 1 of that year to September 30 of the following year. Details on how to apply are scheduled to be published on the JPO website around mid-June each year.

The Patent Examinations Responsive to Standardization Strategies will be flexibly reviewed based on user feedback while monitoring its usage status.

EPO Study Report on FRAND Licensing Rates

The EPO Observatory has published a study on the determination of fair, reasonable, and non-discriminatory (FRAND) licensing rates for Standard Essential Patents (SEPs).

To clarify how courts around the world determine FRAND terms, this study collects and combined 65 court decisions, including various types of court orders and guidelines, across seven jurisdictions (countries/regions).

According to the study, the annual number of FRAND rate determinations has fluctuated between 0 and 6 over the past 13 years, with no clear trend (upward or downward trend) in the trajectory of the number of cases. However, the geographical composition (breakdown by country/region) has changed significantly. While the United States and Japan led rate-setting from 2013 to 2015, over the past 10 years, China, the United Kingdom, and more recently, India have become major litigation venues (courtrooms).

The decrease in the number of (court-determined rate) decisions in the United States since 2017 reflects partly the prevalence of jury trials in the US. On the other hand, judgments regarding the “assessment” of FRAND rates, that is, whether a specific proposed rate or offer complies with FRAND terms, are heavily concentrated in the European Union (EU), particularly in Germany. Germany has emerged as a major venue for assessing the FRAND nature of submitted license offers in injunction lawsuits for Standard Essential Patents (SEPs) under EU competition law, and in recent years, the Unified Patent Court (UPC) has also joined this trend.

Changes in Practice Regarding Restoration of Rights After Expiration of Procedural Period (USPTO)

On June 24, 2026, the USPTO published a final rule changing its practice regarding establishment of the fact that non-compliance with a procedural period was unintentional in procedures for restoring rights lost due to the expiration of a procedural period.

For patent-related procedures with set periods, such as maintenance fee payments and priority claims, even if the practitioner fails to comply with the period, they can apply for restoration of rights/remedy with the payment of a prescribed fee, and if the Director finds that the delay was unintentional, procedural remedies and restoration of rights are possible. On the other hand, the Director is permitted to require additional information from the applicant if there is a question as to whether the delay was indeed unintentional.

Previously, cases where the Director required the submission of such additional information were those where a petition was filed more than two years after the expiration of the procedural period. However, the final rule shortens this period, and additional information will now be required when a petition is filed more than one year after the expiration of the procedural period.

Furthermore, according to the final rule, even if one year has not passed since the expiration of the procedural period, additional information may still be required if there is a question as to whether the delay was unintentional.

In addition, in conjunction with the above practice change, the rule is amended to apply the high petition fee, which was previously required for petitions filed more than two years after the expiration of the procedural period, to petitions filed more than one year after the expiration of the procedural period.

This final rule will take effect on August 13 of this year and will apply to petitions for remedies after the expiration of a procedural period filed on or after that date.

USPTO Extends Deadline to Request Director Review of PTAB Institution Decisions

On June 29, 2026, the USPTO announced that it would extend the deadline for requesting Director review of decisions to institute inter partes review (IPR) and post-grant review (PGR) before the Patent Trial and Appeal Board (PTAB).

While requests for Director review in case of dissatisfaction with a PTAB institution decision previously had to be filed within 14 days of the decision unless there were justifiable reasons, the deadline will now be extended to within 30 days of the decision.

According to the USPTO, the background to this practice change is a Director review decision designated as precedential in June of this year. In this case, after the PTAB issued a decision to institute an IPR, the USPTO Director vacated the institution decision on the grounds that all patent claims under review had been determined to be invalid in a parallel patent infringement lawsuit.

The USPTO explained that, in connection with parallel litigation, it will exceptionally allow extensions of the deadline to request Director review if necessary. Specifically, such exceptional cases are described as including instances where all claims in a pending parallel lawsuit are dismissed, all patent claims under review are found to be invalid, or a Sotera stipulation is undone.

If a party believes that their case falls under the above exceptional circumstances, they can apply for an extension of the deadline by submitting an email to the USPTO with a brief explanation in three sentences or less of the circumstances justifying the extension.

2026 WIPO Assemblies of the Member States

From July 7 to July 15, 2026, the Assemblies of the Member States of the World Intellectual Property Organization (WIPO) were held in Geneva, Switzerland, and a delegation from Japan including JPO Commissioner Yasuyuki Kasai and Deputy Commissioner Futoshi Yasuda attended.

On the first day of the Assemblies, Commissioner Kasai delivered a general statement on behalf of Japan.

In the statement, Commissioner Kasai congratulated Director General Daren Tang on his reappointment for a second term, touched upon the important role that the intellectual property system plays in global economic growth and resolving societal challenges, and expressed gratitude to WIPO for the stable operation and improvement of the international application and registration systems. In addition, Commissioner Kasai mentioned Japan's support through the Japan Funds-in-Trust for WIPO's initiatives, such as WIPO's support measures to promote the utilization of the intellectual property system by small and medium-sized enterprises, startups, and entrepreneurs for global and sustainable economic development, and WIPO GREEN, which aims to address the societal challenge of climate change, and reaffirmed Japan's support for these initiatives.

During the Assemblies, discussions were held on various reports, the budget, and the activities of each committee.