Mori Hamada & Matsumoto
What aspect of your job do you enjoy most and why?
Although I started in traditional IP litigation and transactions (eg, patent, trademark and copyright), my practice now covers a broader range of legal fields in technology and digital economy including AI, fintech, digital health and mobility as a service, as well as global data protection laws.
What I find most interesting about my job is that cross-jurisdictional or cross-sectional analysis is always required to provide creative legal solutions. For example, in pharmaceutical patent disputes and transactions, the litigation strategy varies in each jurisdiction due to different infringement/invalidity standards. Practitioners also need to have a sufficient knowledge of regulatory issues and competition laws, given that Japanese pharma regulations have unique patent linkage and re-examination mechanisms. The same applies to digital health, where regulations on medical devices and telemedicine continue to evolve to cope with the progress of AI and new diseases.
What are the biggest challenges facing your clients when it comes to data protection?
A key legal challenge in the protection of Big Data (including industrial and personal data) is that, unlike traditional IP laws, there are no harmonised rules across the globe.
Japan amended its Unfair Competition Prevention Act to expand protection beyond trade secrets to Big Data exchanged between limited parties, while other jurisdictions have introduced sui generis database rights.
In the area of personal data, our clients have struggled to establish global compliance policies in response to recent significant developments across the globe such as the EU General Data Protection Regulation, the California Consumer Privacy Act in the United States, Japan’s Act on the Protection of Personal Information, China’s Cybersecurity Law, Thailand’s Personal Data Protection Act and Brazil’s General Data Protection Law.
How does the proposed bill to amend the Act on the Protection of Personal Information aim to strengthen the regulation of cross-border data transfers and how will this affect your clients?
The Japanese Diet approved the law to amend the Act on the Protection of Personal Information on 5 June 2020, which will take effect no later than June 2022. In addition to existing restrictions on cross-border transfers, the amendments will require business operators to inform data subjects of the details of any data transfer to any third party located in a foreign country, subject to some exemptions.
A business operator that relies on consent must inform data subjects of certain information, which includes data protection regulations in the countries where the data will be sent and safeguards to be taken by the recipient to protect personal information. These are unique regulations and further details will be set out in the subordinate rules and guidelines to be issued in 2021.
Data transfers to countries in the European Economic Areas as well as the United Kingdom will be exempt, due to the EU-Japan mutual adequacy decisions in 2019. However, we should keep a close eye on whether the Court of Justice of the European Union’s recent Schrems II judgment on the EU-US Privacy Shield will affect the periodic review of EU-Japan adequacy decisions.
How do you expect the IP transactions space to evolve as more and more industries are affected by the Internet of Things and technological convergence?
Legal analysis on IP transactions in the era of AI, the Internet of Things and Big Data must go beyond traditional intellectual property to cover data ownership, contractual warranty and liability, and privacy issues.
I co-led a working group to develop Contract Guidelines on the Utilisation of AI and Data, which the Japanese government published in 2018. These guidelines aim to promote reasonable negotiations and entry into transactions, reduce transaction costs and promote data contracts. Adopting flexible frameworks will become more important in data transactions, as evidenced by the fact that these Japanese government guidelines inspired the American Law Institute (ALI)-European Law Institute (ELI) Principles for a Data Economy, a joint project by the two institutes.
How do you envisage your IP practice evolving over the next five years?
While my IP practice remains focused on patent and trademark disputes and transactions, my expertise will continue to expand to broader areas where laws and technologies are closely linked to each other. Further, I would like to continue my contribution to government projects related to the digital economy and hopefully work at an international level to develop a harmonised response to evolving technologies.
Atsushi Okada is a partner in Mori Hamada & Matsumoto’s IP, data protection, healthcare, fintech and robotics practice groups. He graduated with an LLB from the University of Tokyo and with an LLM from Harvard Law School. Mr Okada has served as a member of the committee (and the chair of a working group) on AI and data contract guidelines for the Japanese government.