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Patents, Utility Models

Regarding inventions, we provide representation services about applications and procedures after filing the applications. The typical representation services about inventions are listed below.

Creating a Specification Described the contents of an invention

An application procedure which submitting a document (a specification) described the invention to JPO is required to acquire a patent or a utility model. We make interview to the inventor, understand the invention correctly, and make the application documents. If it is difficult to have interview meeting, we are able to create the application documents by obtaining the description, the drawings, and the like from you.

Responding to office actions (Responding to a Notice of Reasons for Refusal)

To take the examination for a patent application, it is required to file an application for the examination within three years from the filling date of the patent application. At that time, as a result of the examination of an examiner of JPO, if it is judged as that the requirements of the filling is not satisfied, reasons for the refusal are noticed (this notice may be sent plural times). If the notice of reasons for refusal are received, it is needed to react for argument to the judgment of the examiner (response to an office action) such as making amendments of the contents of the invention (ex. Claims). According to the client’s intention, we have meetings as needed, and give you a proposal for amendments and arguments to acquire the most appropriate patent right.
If you would like to make a patent right which includes products of other competitive companies, we support it. Please feel free to ask us.
In other hands, excluding the case of violating basic requirements, the establishment of the utility model rights are registered (non-examination registration system which not examines substantive examinations). However, for the exercise against to the infringers and the like, it is obligated to show the “Technological Evaluation Document for a Utility Model.” We make such Technological evaluation document for a utility model and submit it.

Appealing (Trial)

If an examiner judges that the reasons for refusal were not dissolved even though considering written opinions and the like submitted in the above described response to an office action, a refusal will be decided. Against to the decision of refusal, you can request a trial against examiner’s decision of refusal. We examine whether or not the examiner’s decision is right, and if we decide that we can acquire the right by reactions such as embodiments and the like, we make the documents for the trial to request the trial against examiner’s decision of refusal.
[Specialty Fields]
Electrics, Electronics, Communications, Information Processings, Control, Materials, etc.
[Handled Technologies]
  • Electrics, Electronics
    Multifunctional Apparatus (including printers, photocopiers), Video Apparatus (including displays), Electronic Devices (including semiconductor devices), Imaging Apparatus, Batteries (including lithium ion batteries), Electronic (analog / digital) circuits, Medical Apparatus (including nursing systems, nursing beds, electronic clinical thermometers, manometers, etc.), Refrigerant Circuits, Hydraulic Circuits, Portable Terminal Apparatus, Thermistor Sensors, Layered Capacitors, Coil Devices (Transformers, Choke Coils), Acceleration Sensors, LED Apparatus
  • Communications, Information Processings
    Video Processings, Communication Systems (including Satellite Transmitting Systems, RFID Technologies), Hardware and Software of Computer Systems, Computer Related Apparatus
  • Controls, Mechanics(Mechatronics)
    Semiconductors (including semiconductor substrates) Manufacturing Apparatus, construction Apparatus, Engines, Electronic Controls, Controlling Multifunctional Apparatus, Controlling Mechatronics, Controlling Robots, Controlling Inverters, Controlling Flow Rates, Electronic Equipments, Motors, Storage Tanks, Diesel Engines (Agricultural Apparatus, Ships), bearings, Pump Motors
  • Materials
    Semiconductor Materials, Metal Materials, Carbon Materials, Ceramic Materials, Materials for Batteries, Materials for Electronic Parts, Materials for Constructions
  • Optical Related
    Optical Elements, Optical Systems, Optical Apparatus, Optical Parts, Optical Workpieces, Luminous Apparatus, Polarizing Plates
  • Home Equipments
    Light Equipments, Electronic Beds, Home Electric Products, (Refrigerators, Furniture,
    Bedclothes, Boiler Apparatus, Cleaning Tool, Air Conditioners, Repellent Net
  • Chemistry, Biotechnology
    Nanotechnology, Fiber, Paper Products, Glue, Gas Processing Facility, Sterilizing System, Polymers
  • Others
    Business Patents, Commodities, Sports Goods
[Our Services]
  • Before Application
    • Creating patent maps
    • Making advices about your research and development
  • Application Phase
    • Finding inventions (investigating about your R&D, giving seminar in your company, etc.)
    • Investigations about prior art
    • Patent (Utility model) applications to Japan or Foreign countries
    • Creating (Consideration) about Joint application contract document
    • Examination about total protection of rights including protection as a trade secret, getting design right, etc.
  • After Application
    • Response to an office action
    • Trial against examiner’s decision of refusal
    • Litigation rescinding the trial decision
  • After Acquisition of Rights
    • Filling of objections
    • Trial for invalidation
    • Litigation rescinding the trial decision
    • Caution and reconciliation negotiation to infringers
    • infringement suit of a patent
    • Waterside measures at the customs

Designs

To protect original designs of industrial products etc., we provide representation services about applications and the procedures after filing the application for a design. The typical representation services about designs are listed below.

Creating an Application and Drawings Described the Contents of a Design

Creating an Application and Drawings Described the Contents of a Design
An application procedure which submitting an application and drawings described the design to JPO is required to acquire a design right. We understand the design of an industrial product correctly by making interview to the customer, and create the application documents. We consider about response to an office action (countermeasure to reasons for refusal) and after acquisition of rights, and propose the appropriate application and drawings described the design to acquire most appropriate design rights.
If it is difficult to have interview meeting, we are able to create the application documents by obtaining the description, the drawing and the like from you, specified the design which you would like to acquire a design right.

Responding to an office action (Responding to a Notice of Reasons for refusal)

As a result of the examination of an examiner of JPO, if it is judged as that the requirement of filling is not satisfied, reasons for the refusal are noticed. If the notice of reasons for refusal are received, it is needed to react for argument to the judgment of the examiner (response to an office action) such as creating amendments of the application and the drawings. According to the client’s intention, we have meetings as needed, and give you a proposal for amendments and arguments to acquire the most appropriate design rights.

Appealing (Trial)

If an examiner judges that reasons for refusal were not dissolved even though considering written opinions and the like submitted in the above described response to an office action, a refusal will be decided. Against to the decision of refusal, you can request a trial against examiner’s decision of refusal.
[Our Services]
  • Before Application
    • Investigations about other company’s design applications
  • Application Phase
    • Investigations about prior art of designs
    • Proposing strategical application
    • Design Applications to Japan or Foreign Countries
  • After Application
    • Response to an office action
    • Trial against examiner’s decision of refusal
    • Negotiation for Licenses
  • After Acquisition of Rights
    • Trial for invalidation
    • Caution and reconciliation negotiation to infringers
    • Waterside measures at the Customs

Trademarks

We provide representation services about applications and the procedures after filing the application for a trademark. The typical representation services about trademarks are listed below.

Creating an application described the contents of a trademark

An application procedure which submitting a document described the trademark and designated products and services pertaining to the application to JPO is required to acquire a trademark right. We understand the designated products and services desired by the customer correctly by making interview to the customer as needed, and create the application documents while considering the designated products and services.

Responding to an office action (Responding to a Notice of Reasons for refusal)

Regarding a trademark, as a result of the examination of an examiner of JPO, if it is judged as that the requirement of filling is not satisfied, reasons for the refusal are noticed. If the notice of reasons for refusal are received, it is needed to react for argument to the judgment of the examiner (response to an office action) such as creating amendments to reduce the designated productions and services. According to the client’s intention, we give you a proposal for amendments etc. to acquire the most appropriate trademark right.

Appealing (Trial)

If an examiner judges that reasons for refusal were not dissolved even though considering amendments and the like submitted in the above described response to an office action, a refusal will be decided. Against to the decision of refusal, you can request a trial against examiner’s decision of refusal.
[Our Services]
  • Before Selection of Trademark
    • Method for developing of naming
    • Making advices about bland strategies
  • Application Phase
    • Investigations about prior art of trademarks
    • Trademark applications to Japan or Foreign Countries
  • After Application
    • Response to an office action
    • Trial against examiner’s decision of refusal
    • Negotiation for licenses
  • After Acquisition of Rights
    • Filling of objections
    • Trial for invalidation
    • Caution and reconciliation negotiation to infringers
    • Waterside measures at the customs
  • Management for Trademarks
    • Management for limit of renewal

Consulting Services

We cooperate with customers and serve consulting services below. It is also possible to make a contract for a consulting (*1) to continuous support the customer positively.
  • Finding inventions (*2), Consultation for acquisition of rights
  • Making patent maps (*3)
  • Construction of a patent net being a high entry barrier (*4)
  • Consulting about finding designs and acquisition of rights
  • Selection of a trademark and the designated products and services
  • Consulting about infringement cases (*5)
  • Making an expert opinion (*6)
  • Investigations about a prior art and for invalidation (*6)
  • Responding to suits
  • Consulting about IP strategies
  • Consulting about maintenance and exploiting of patent rights (*7)
  • Consulting about IP risks not listed above (*8)
  • Consulting about intangible property rights with M&A
(*1)
We give consultation by considering future images showed below

(*2)
We are able to hold periodic meetings to find inventions

[Effect]
(1) To make reliable relationship with your engineers
(2) To improve motivation to product development of engineers and educate young engineers about patents
(3) To collect new technical subjects about customer’s products (able to report the movement of other competitive companies before the development)
(*3)
We endeavor to make a patent map taken the technical trend and customer’s business strategies. In the process, you can grasp your business strategies and we are able to propose your applications for the future.
We also evaluate whether or not your IP portfolio accommodate to your technical development capability and future business trend, and optimize them.
(*4)
[Means]
Extracting and protection of original technology of a customer

  • Using the strategic patent map including your business strategy, technical trends, and other company’s patent information as a tentative plan, we extract your original technology, apply for plural patents and acquire rights about the technology, and construct a patent net (in other words, we progress an activity for finding inventions about “original technology” excluding infringement of other company’s patents.).
  • The strategical patent map is a patent map which is reflected business strategies and technical trends collected by having an interview with a technology department (including design department, product planning department) and a sales department
(*5)
Making patent rights including the feature part of competitive products of other competitive companies (making counter patent)
Concretely, based on the information about competitive products, we make patent rights including feature part of competitive products from your patent applications.
(*6)
We make an expert opinion (patent effectiveness or conflictiveness) to patent rights or patent applications other competitive companies have. Concretely, in the development phase of customer’s product, we make an expert opinion about possibilities of conflict to patent rights or patent applications of other companies. Especially, if patents are currently being applied, we investigate prior patent documents, and examine the possibility of the conflict about the claims having possibility of acquisition of rights. Furthermore, if we judge that it has possibility of conflict, we will consider a non-conflict design plan.
(*7)
We support below cooperations from outside, and realize below considering items.

(*8)
  • Leaks from protections by intangible property rights of new products and technologies
  • Insufficiency of secure of rights attended with a joint development and a entrust of development
  • Invalidation of applications due to expiring limitation about procedures from application to acquisition of a right
  • Lapse of rights due to unpaid annuity
  • Risks of suits about reward for inventions of employees (including retired)
  • Deterioration of company images due to imitation products and similar products

Opening Seminars (Lectures, Workshops)

We open seminars according to your requests such as that you would like to understand laws for IP or that you would like us to open patent seminars for engineers. Please utilize the seminars in this opportunity.

Foreign Applications (International Applications)

Direct Applications to each country (Paris convention root, European patent convention root, etc.)

As a way of an application to each foreign country, there is a way to apply to countries of each treaty based on Paris convention or European patent convention (EPC).
After applying to JPO (for example, the first patent application), you can apply it to each country of Paris convention within the prescribed period from the date of the first patent application (twelve months about patents) by claiming the priority based on Paris convention or European patent convention. By this procedure, the applications to each country are also treated as same as it in the case of applying on the application date in Japan.
In case of Paris convention root, it is required to apply by using the form due to the laws and regulations in the country.
In other hand, in the EPC root in Europe, by applying to the European patent office, the examination will be proceeded in a lump by the European patent office, and the application will be treated based on the laws and regulations of each European country after the registration.

International Application based on Patent Cooperation Treaty (PCT application)

PCT application is an application which can be obtained with the same effect of applications to each contracting country by practicing the international unified procedures to the patent office of own country based on PCT (Patent Cooperation Treaty).
Conventionally, to make effect of patent rights to foreign countries, based on above described Paris Convention, it was required to practice application procedures to the patent offices in each country within the short period of twelve months from the first patent application date to JPO. This was inefficiency because the procedures are very cumbersome form global companies providing own products and services worldwide.
The Patent Cooperation Treaty (PCT) is provided to dissolve this problem.
PCT is a treaty about procedures able to demand of protecting inventions in other plural contracting countries of the treaty by means of international application of patent to Receiving Office (for example JPO) by the residents and the nations of the member countries.
Japan became a contracting country of PCT in October, 1978, and it is regarded as apply of the invention to all of the PCT contracting countries by international application to JPO claimed the priority within twelve months from the first patent application date to JPO.
If the application does not have priority, you file an international application at the beginning.
Then, within thirty months from the international application date (or the priority date), you can proceed the international application to patent office of each country desired to acquire a patent.
The application procedure to foreign countries becomes extremely easy by utilizing this system.
Whether or not the invention of the international application is accepted as a patent at each country desired to acquire the patent is leaved to the substantive examination of each country’s patent office finally.

International Applications by The Protocol Relating to the Madrid Agreement (Madrid Protocol)(International Application for Trademarks)

The number of the member countries (contracting countries) in December, 2015 was reached 97 countries. This system is very convenient to acquire “the same effect as applying to plural countries” by filling single international application designated countries desired to acquire a trademark right among the contracting countries.
For example, you can get advantages listed below compared to the case of applying each country directly if you utilize Madrid protocol.
  • The cost is lowered because of the unity of the application procedures.
  • The management is comparatively easier because package management of the renewal and the like is available.
  • The registration is maintained if reasons for refusal is not noticed within a year (or eighteen months) from the date of report of the designation from the international bureau to the designated countries.
  • The acquisition of rights become available in plural contracting countries by single international application.
  • You can add designated countries after filling the application.

About Subvention

Regarding costs for patent applications, foreign applications, foreign investigation, countermeasures for imitation products, or the like, you are able to receive grants and subventions of some organizations if you satisfy the certain requirement. We make advices positively about the application of grants and subventions according to the request of applications. For example, there are grants and subventions listed below (Please make a confirmation to each organization when you utilize them since the contents may be modified or the time to apply may be limited).