Message to our Clients

Baseball, although an American invention, is one of the most popular sports in Japan. Baseball is an enjoyable game.

Interestingly, baseball has been called a “game of failure”. Even the best professional hitters fail two out of three times at bat. Good pitchers give up a few runs per game. Failures are part of the game. They excite fans as much as the successes. Baseball is constantly the “unpredictable”, almost never the “predictable”. That’s what makes it fun.

Patents are similar to baseball in the unpredictability indispensable but the opposite of baseball in the point of no failures being allowed. Patenting requirements must be met without a single exception. This is a universal rule in the game of patents. To be patentable, an invention must be essentially an “unpredictable” or an “unobvious” advance or improvement over existing technologies. And even if that requirement is met, the invention cannot be patented if insufficiently disclosed.

These basic universal rules are often hard to satisfy.

Our approach as professional patent attorneys is to communicate closely with the client (inventor) toward precisely identifying the distinguishing “unpredictable” technical features underlying the invention and to ensure that all patenting requirements are met without “any failure”.

We vigorously apply our skills and experiences as long-practicing professional agents to protect and advance our client’s interest during the examination phase and when infringement becomes an issue.

Shuichi AKABA
Representative Senior Partner
Patent Attorney

Filing Applications to Japan Patent Office (JPO)

1 Choosing a Japanese patent attorney

When acquiring intellectual property in Japan, you must go through an agent as a representative in Japan. Then, among other things, you will need to select an excellent agent as a representative.
We are happy to say that our services have been well-received by clients including Japanese excellent corporations. We invite you to try our services too and will be happy to serve you so that you can seek strong protection of intellectual property smoothly in Japan.

2 Higher Rate of Allowance of JPO

According to the “Patent Committee’s report of JPAA” ※1, Japan’s rate of notice of allowance(rate of allowance) in recent years was higher than in European Patent Office(EPO) and the U.S. PTO. For example the latest 2017 data is as follows:

Japan; 74.5%, USPTO; about 72%, EPO; 56.4%.

(※1 Published on ‘Patent’, 2020 May, JPAA as “Study by Patent Committee on 2019”)
The study also reported it was never believed that the examination by the JPO could not be judged to be unsatisfactory simply because of the higher rate of allowance.
We readily can realize the following three factors the study indicates: (a) high maintenance fees in EPO, (b) order of examination between the three Offices, and (c) active interview with examiners in Japan, among other factors.
However, on this rate of allowance of JPO, it should be noted about 25%, a quarter of applications was rejected after being laid open. It should be necessary to boost this Rate of Allowance of JPO reducing the ratio of the quarter of applications not-allowed. For your reference, let us add our office’s rate of allowance itself is far higher than 74.5% of rate of Japan.

3 Introduction of QualiO IP Attorneys

QualiO IP Attorneys has nine patent attorneys and five technical specialists, all with extensive experience in processing applications and registration of intellectual property both ways between Japan and foreign countries.

These experts focus their expertise on every case, and closely coordinate quality.

We pride ourselves on two primary strengths:
(a) “Global standard communication skills” with overseas clients and patent agents, and
(b) Well-honed skills in communicating important information and coping with complex situations particularly essential for explaining certain unique facets of Japanese law.

How can we help client ensure smooth registration?

Our role as communication node between Client and Examiner

A Japanese patent right expires 20 years after the filing date. The longer examination is, the shorter actual patent right is. The longer examination is, the more cost it needs.

Overcoming the reasons for rejection (office action) properly

  • Thorough reading and study of the reasons for rejection
    You have to argue against the reasons or respond unerringly without overlooking possible examiner’s logical mistake.
    The more carefully you read between the lines of the reasons for rejection, the more examiner’s mindset you can perceive.
  • Communication with the examiner on the following matters
    (a) Ask the examiner what he or she actually wants in leading the application to allowance.
    The preferred stance is to avoid getting into a barren discussion with the examiner but rather to solidly explain or demonstrate the technical significance of application, to possibly get his or her some suggestion to solve any problem.
    (b) Submission of an appropriate amendment and an argument.
    (c) Have an Interview with Examiner to take direct communication.

The applicant is recommended to have an interview with the examiner to face to face explain the technology concerned and gain the examiner’s understanding. Presentation with exhibits (e.g., real samples and visual images) could be effective for convincing the examiner of invention patentability.

For effective protection and utilization of intellectual property

The intellectual property registered should be satisfactory in quality enough to bear competitor’s attack. The more commercially successful the intellectual property is, the more susceptible to competitor’s attacks is.

  1. When the attack is an opposition, support the client to file an argument to rebut the opposition or to lodge a correction of claims.
    Besides, you can also attack a competitor by lodging an opposition.
  2. Lodge a trial for invalidation of an intellectual property right of the other party. Take measures against the invalidation trial filed by the other party.
  3. Submit published technical documents and other information related to the other party’s patent application or patent to the Patent Office.

Litigation

Defence and Offence

  1. Litigation rescinding the trial decision at Intellectual Property High Court:
    Suing the Commissioner of the Patent Office against trial decision of (trial decision for refusal or for invalidation).
  2. Infringement proceedings first at district courts:
    Parties concerned with offensive and defensive measures on infringement of intellectual property rights.
Revision of the Law; evidence collection
A new evidence collection system was introduced in 2020 that helps plaintiffs in infringement trials prove infringement by allowing experts to conduct onsite inspections of defendant factories and other facilities.

Professional Opinion of Patent Attorney

Situations requiring Opinion

When whether a patent, trademark or other industrial property right is being infringed is in question and when whether an intellectual property has cause for invalidation is in doubt.
We review the Patent Office examination process that led to patenting of the invention to determines, inter alia, whether there were any amendment violations or overlooked reasons for rejection, i.e., invalidation grounds.

Registration of designs and trademarks

Protection of intellectual property ideas is not limited to technical ideas such as invention. The beauty of an article and product marks are also registrable.

  1. It happens that a patent right may conflict with another party’s design right. For optimum protection, it is sometimes necessary to register a design in addition to obtaining a patent.
  2. We advise registration of a trademark that distinctively identifies the maker or provider and seller of the product or service and guarantees its quality.
Revision of the Law
In 2020, the duration of a design right in Japan was changed to 25 years from the filing date. In addition, protection has been expanded beyond just physical articles to cover graphic images and interior / exterior designs of the architecture.
Trademark protection can be obtained not only for characters and designs but also for three-dimensional shapes, color marks, sound marks and motion marks.