Patent search

Investigation and analysis before obtaining rights

Prior art literature search

Patents and utility models satisfy the requirements stipulated by each law, and rights are recognized through administrative disposition by the Patent Office. Therefore, it is useful to conduct a search of prior art documents before filing to ensure that the patent requirements are met.

In addition, since there is a time limit for patents after filing and until the deadline for filing a request for examination, from the perspective of reviewing applications for which you no longer wish to obtain rights due to the passage of time, or discovering prior art documents that were not published at the time of filing, It is also useful to conduct a search for prior art documents again when filing a request for examination.

Message

We conduct patentability searches by scrutinizing patent and non-patent documents to determine whether there are any technologies or prior applications with the same content that precede the application.

 

Survey benefits

Achieve smooth rights acquisition.

Prompt filing is important, but if you file without conducting a certain search, you may have to give up on obtaining rights because the application does not meet the legal requirements due to the existence of previous applications, inventions, devices, etc. It can occur. Prior art literature searches play an important role in obtaining rights accurately and efficiently.

Prevent wasted costs.

This can prevent wasted costs that could have been avoided if a preliminary investigation had been conducted, such as cases where a patent is found to be unpatentable after filing.

This will serve as the basic material for preparing the application specification.

We will search the documents preceding the application and compare the inventions/devices related to the application with the inventions/devices described in the documents, which will serve as the basic data for preparing the specification. A series of tasks from research to application allows for efficient application preparation.

This will lead to legal compliance and faster hearings.

The Patent Act requires the disclosure of prior art documents known at the time of filing, so disclosing the results of pre-filing searches can meet this request, thereby easing the patent office's effort to search for documents and making it easier for the trial. It can contribute to speeding up the process.

 

Survey outline

 

Research on application trends of other companies

We research other companies' application trends and the patents and utility models they own.

Usage examples

・You can use it when you want to know about other companies' application trends, such as what fields they focus on and which countries/regions they apply to.
- It can be used when you want to prevent duplicate research and development and explore the direction of future research and development.
- Can be used when creating technical statistical charts or patent maps.

source of information

Examples include patent documents such as domestic and foreign patent publications, and non-patent documents such as technical reports and patent application surveys and technology trend surveys by the Japan Patent Office.

 

Collection of materials for information provision

When using the information provision system to notify the Japan Patent Office that another person's application falls under the reasons for refusal, we investigate and collect the materials necessary to prove the facts that fall under the reasons for refusal, and prepare to provide the information. .

Use before registration

Providing information is a strategic way to prevent competitors from acquiring rights.

Once a competitor acquires a right, as long as the right remains in effect, it will be difficult for the company to implement an invention that falls within its technical scope without having the legal title. Therefore, by using the information provision system, you can prevent other companies from acquiring rights.

 

Investigation and analysis after obtaining rights

Rights validity investigation

When entering a new business or commercializing a product, we confirm the validity of our own patent rights and utility model rights.

Need for investigation

・In order to allege patent infringement against another company, it is necessary that the patent right remains valid. Therefore, we will investigate the validity of patent rights in advance.
・In the case of utility model rights, since they have not undergone substantive examination, considerable care is required when exercising the rights. Therefore, in addition to the determination by the Japan Patent Office, it is effective to have a patent office investigate the validity of the rights.

 

Invalid materials/publicly known materials investigation

We investigate materials to invalidate someone else's patent rights and utility model rights that are an obstacle to commercialization.

Usage/Application

・If you would like to obtain materials (patent documents/non-patent documents) to invalidate patent rights, etc. that are an obstacle to the release of your own product.
・If you want to collect invalid materials or publicly known materials as a countermeasure in the event that you receive a warning letter from another company or are sued for infringement.

 

Investigation to ensure free implementation (FTO investigation)

We investigate whether the products we bring to market will infringe on the patent rights and utility model rights of other companies.

Can be used in times like these

If you want to consider intellectual property risks when introducing a product to the market and confirm the freedom to conduct your business.
When investigating whether it is possible to freely exploit an invention for which the term of another company's patent rights may have expired or disappeared.

Survey outline

 

Infringement assessment

We examine direct infringement, indirect infringement, application of the doctrine of equivalents, etc., and prepare an expert opinion regarding the success or failure of infringement of patent rights and utility model rights.

Usage/Application

If your company claims to be non-infringing.

If your company receives a warning letter regarding patent or utility model infringement, you can use an expert opinion to argue that there is no infringement.
You can try to resolve the dispute by presenting the appraisal report to the other party.
The expert testimony can be submitted to the court as evidence.

If you claim that your company's patent rights or utility model rights are being infringed.

It is useful to conduct an expert opinion before sending a warning letter to another company to claim that it is infringing on your own patent rights.
The expert testimony can be submitted to the court as evidence.
In the case of utility model rights that do not undergo substantive examination, an expert opinion can be used as a method of evidence to prove that sufficient care was taken in exercising the rights.

 

Collection of materials for information provision

When using the information provision system to notify the Japan Patent Office that another person's application falls under the grounds for invalidation, we investigate and collect the materials necessary to prove the facts that fall under the grounds for invalidation, and prepare to provide the information. .

Use after registration

Psychologically restrains patent holders from exercising their rights.

After a patent is granted, the patentee is made to feel psychologically anxious that the provision of information may invalidate the patent, making them hesitant to exercise their rights.

 

patent map

Considering the direction of research and development

Strategies for winning the technological development competition include, for example, starting technology development ahead of other companies, identifying needs that other companies have not noticed and developing them independently, and proactively pursuing fields in which other companies have not shown interest. There are strategies to expand the market, and strategies to enter a field where other companies are already weak in the field, etc., but in order to decide which strategy to adopt and the direction of research and development, the patent map is extremely important. valid.

Understanding and predicting the development trends of competitors

What fields are competitors actively conducting R&D? What fields will competitors expand into in the future? How widespread is their technology? How does your company compare to its competitors technologically? Patent maps are very effective for understanding and predicting the future, such as whether the market is at the current level and whether there is room for new entry for your company.

Check your company's patent network

Have you built a sufficient patent network to prevent other companies from entering or imitating your business/products? Are there any weaknesses in your technology? What are your strengths? Consider how to correct the trajectory of your research and development. etc., patent maps are very effective.

Analysis of technology trends in specific fields

How is the research and development status of a specific technology? Which important patents have reached milestones? Are there any patents that require attention when implementing them? Are there any suitable joint development partners? I want to systematically know about the technology. Patent maps are also very effective for this purpose.

 

Patent application

Domestic application

Flow from application to registration

In order to obtain a patent, you need to file a patent application with the Japan Patent Office.

The flow from application to registration is as follows.

(1) Patent application

We submit the application, claims, specification, abstract, and drawings if necessary to the Japan Patent Office in accordance with the format prescribed by law.

Applications can also be submitted in English. In this case, a Japanese translation must be submitted within 1 year and 2 months from the application date.

(2) Formal examination

Applications will be reviewed to see if they meet the formal requirements.

(3) Publication of application

The content of the invention will be made public one year and six months after the filing date.

(4) Request for examination

Examination will begin by filing a request for substantive examination of the application within three years from the filing date.

(5) Substantive examination

The examiner will examine whether the application satisfies the patent requirements such as novelty and inventive step, and whether it falls under the reasons for refusal.

(6) Notice of reasons for refusal

If the examiner finds reasons for refusal, he/she will send a notice of reasons for refusal to notify the applicant.

(7) Submission of written opinion/amendment

The applicant will be given an opportunity to refute the notice of reasons for refusal. If the examiner determines that the decision is appropriate, you can submit a written amendment to resolve the reasons for refusal.

(8) Grant of patent

If the examiner does not find any reasons for refusal or if the reasons for refusal are resolved, the administrative disposition of granting a patent will be taken.

(9) Decision of refusal

If the reason for refusal is still not resolved even after the examiner considers the written opinion and written amendment, an administrative action called a decision of refusal will be taken.

(10) Request for appeal against decision of refusal

If you are dissatisfied with the decision of refusal, you can request an appeal against the decision of refusal. A panel of administrative examiners will examine whether or not the application should be patented.

(11) Preliminary examination

If you amend the description, etc. at the same time as filing a request for appeal, the examiner will conduct another examination prior to the appeal. If the reasons for refusal are not resolved, a hearing will be held by a panel of administrative examiners.

(12) Patent trial decision

If no reason for refusal is found as a result of a review by a panel of trial examiners, a trial decision will be made that the patent should be granted.

(13) Rejection decision

If, as a result of the examination by a panel of trial examiners, it is determined that the request is groundless, a trial decision will be made to dismiss the request and maintain the original decision (decision of refusal).

(14) Litigation to cancel trial decision

If you are dissatisfied with the rejection decision, you can file a lawsuit with the Intellectual Property High Court. If the court determines that there are grounds for the request, it will issue a judgment to revoke the rejection decision and the Japan Patent Office will begin a trial hearing. If it is determined that there is no basis for the request, the request will be dismissed and the rejection decision will be upheld.

(15) Payment of patent fees

After the patent is granted or the patent trial decision is made, the patent fees for the first to third years are paid.

(16) Registration of establishment and issuance of patent certificate

After paying the patent fee, a patent number will be assigned, and a patent right will be issued by registration in the patent register. In principle, the duration of rights is 20 years from the filing date. A patent certificate will also be issued.

(17) Patent publication

A patent gazette containing the rights is published.
Any person can file an opposition within six months from the date of publication of the patent gazette (effective April 6, 2015).

 

Accelerated examination/trial

Even if you file a request for review, it will take time for the substantive review to begin. Additionally, it takes time for the hearing to begin after filing a request for an appeal against the decision of refusal.

Patent examination/trial period (average)

The period from the request for examination (in the case of a trial, the request for appeal) to the dispatch of the first examination result by the examiner (trial judge). (From the annual report of the Patent Office)

 

Accelerated examination/trial system

If you use the accelerated examination/trial system as shown in the table below, the examination/trial period will be shortened.

Examination/trial period when using accelerated examination/trial (average)

The period from the application to the first examination results sent by the examiner. In the case of a trial, the period from when a request is made and a trial becomes possible until the trial decision is sent. (From the annual report of the Patent Office)

 

Super early examination system

Trials began in October 2008.

The average examination period is approximately 20 days from the request for super accelerated examination.

From October 2009, international applications based on the PCT that have entered the national phase in Japan are also eligible for super accelerated examination (in this case, due to processing within the Japan Patent Office, the average examination up to the first examination The period will be approximately 10 months).

 

Interview examination

The applicant (representative) can explain the technical content etc. to the examiner, which will lead to a more accurate examination, which can be expected to improve the efficiency of the examination, and also allows you to directly check the opinion of the examiner who issued the notice of reasons for refusal. Therefore, you can respond appropriately.

 

Foreign application

The effect of a patent right extends only to the territory of the country where the patent is obtained, and does not extend to overseas countries. Therefore, if you want to obtain patent rights overseas, you need to apply to the patent office of each country.

There are three main ways to apply abroad:

direct application

This method is to apply directly to the patent office of the country in which you wish to obtain rights. For example, if you made an invention in Japan but want to obtain patent rights only in the United States, you may file an application directly to the United States.

However, since it is necessary to use each country's designated language and follow each country's procedures, the problem is that the burden of document preparation and translation costs is large.

Application based on priority under the Paris Convention

You can file an application overseas within 12 months from the filing date in the first country, claiming priority under the Paris Convention based on the first country application.

When you claim priority under the Paris Convention, novelty, inventive step, etc. are determined based on the filing date of the first country, and there is no disadvantage if you publish your invention after filing in the first country and before filing in the second country. I won't accept it.

PCT application

After filing an international application, you can move to the required country and undergo the examination procedures in each country.

This is useful if you want to obtain patents in many countries, as you can receive the benefits of filing in multiple countries with one application. It is also possible to claim priority under the Paris Convention.

patent prosecution highway

The Patent Prosecution Highway not only makes it easier for applicants to obtain rights overseas quickly, but also aims to reduce the examination burden and improve quality at each patent office by utilizing the prior art search and examination results of the first office. The purpose is

Since the examination results of the first office are used, it is possible to obtain rights quickly at the second office. It also reduces costs by reducing interaction between examiners and applicants.

 

Country Support Office

Our office has established the following support office and has established a system that can support the acquisition and utilization of rights in Japan and abroad.

• USA Support Office
• EPO/EUIPO Support Office
• UK Support Office
• german support room
• France Support Office
• China Support Office
• Korea Support Station
• Taiwan Support Station
• Thailand Support Office
• India Support Office
• Indonesia Support Office

 

 

---

<Contents within the page>

Patent Support Office Patent search/patent application Exceptions to loss of novelty in each country (grace period) Various procedures and troubleshooting after registration utility model Prices