ACTi Solutions, Inc.

As ACTi Solutions, Inc., we provide the following services.

1. Intellectual Property Strategy Consultation

Intellectual property (IP) strategy consulting involves providing professional support to companies and research institutions to effectively utilize IP and optimize business strategies. Our intellectual property strategy consulting is overseen and conducted by Masahiro Nanjo, who has been selected every single year since 2021 as one of the top 300 global leading IP strategists who are excel at maximizing the strategic utilization of intellectual property, through a recommendation system by experts in the field of intellectual property. This consulting work includes the following key activities:

(1) Evaluation and Optimization of IP Portfolios

Analyze the IP portfolio owned by the company, including patents and trademarks, to evaluate their value and effectiveness. Propose strategies to optimize the portfolio, recommend the abandonment of unnecessary patents, and suggest new applications.

(2) Formulation of Patent Strategies

Develop patent strategies related to new technologies and products. Devise patent acquisition strategies to leverage the company’s strengths and secure a competitive advantage.

(3) Competitive Analysis and Market Research

Analyze competitors’ IP activities to understand the competitive environment. Investigate market trends to identify new business opportunities.

(4) Consulting on Drug Life Cycle Management

Generally, drug market entry by competitors is restricted by regulatory and patent systems. However, eventually, the exclusivity period ends, and generic products enter the market, known as LOE (Loss of Exclusivity). Acquiring multiple effective patents can extend the exclusivity period for a drug. IP strategy consulting is crucial to optimizing drug life cycle management.

Japan is the second-largest drug market in the world as a single country, but due to language barriers, optimal IP strategies concerning drugs in Japan are not well understood abroad. Consulting foreign companies entering Japan on optimal IP strategies is highly valuable.

(5)IP Seminars

IP seminars are educational events designed to deepen knowledge and skills related to IP, including patents. They are held for company employees, researchers, entrepreneurs, legal professionals, engineers, students, and others. The seminars emphasize the importance of patents and IP in the pharmaceutical field, which is characterized by complex regulations and technological innovations, aiming to enhance professional knowledge. We have also conducted seminars for experts and students from Europe and the United States interested in the Japanese market.

2. Patent Search

Patent search refers to the process of collecting and analyzing patent information related to specific technologies or products. This search is critical for companies and researchers to advance technological development and is conducted for various purposes. There are several types of patent searches:

(1) Prior Art Search

Before filing a patent application for a new invention or technology, existing patents and published technical literature are investigated. This is conducted to confirm whether the invention possesses novelty and inventive step. This process helps avoid unnecessary applications and enables a more accurate understanding of the invention in relation to prior art.

(2) Infringement Search

This search is conducted to verify whether a company’s products or technologies infringe on other companies’ patents. By assessing patent risks before entering the market, necessary actions such as design changes, obtaining licenses, or canceling market entry can be taken. Such investigations need to be conducted for each country where market entry is planned.

(3) Invalidity Search

This search is for prior art to invalidate other companies’ patents. It is a crucial investigation for gathering evidence to challenge the validity of the opponent’s patents in litigation or negotiations. In some cases, it plays a decisive role in patent litigation.

(4)Technology Landscape Analysis

This search is to grasp trends in patent applications and technological development in a specific technical field. It helps to analyze the competitive environment and to determine new research and development directions. Through technology landscape analysis, it is possible to:
(a) Understand the latest trends and development directions in a specific technological area,
(b) Analyze which patents competitors hold and which technologies they focus on to formulate competitive strategies,
(c) Identify untapped technological areas or niche markets to find new business opportunities,
(d) Decide which technologies to focus on to advance the company’s research and development activities effectively.

(5) Patent Monitoring

This is a continuous search to monitor patent activities in specific technological fields or by competitors. It involves detecting other companies’ patent applications that may relate to the company’s products and monitoring how they develop into patents.

3. Patent Translation

Patent translation, in a broad sense, refers to the accurate and professional translation of documents related to patents into different languages. Patent documents have technically and legally precise content and play a crucial role in obtaining and protecting patents. In some cases, mistranslations can critically undermine the value of a patent and lead to significant losses, making patent translation extremely important. Since subtle nuances and details are important in patent translation, attention to detail is required. Typical examples include the following.

(1) Translation of Patent Specifications

To obtain patents in multiple countries, documents translated into the languages of the respective patent offices are required. For example, when a Japanese client seeks to obtain a patent in foreign countries, it is necessary to translate the patent specifications from Japanese into other languages such as English, Chinese, Korean, Spanish, Portuguese, and Russian. Similarly, when a foreign client seeks to obtain a patent in Japan, it is necessary to translate the patent specifications from other languages such as English, Chinese, Korean, Spanish, Portuguese, and Russian into Japanese.

(2) Translation of Office Actions

When a patent application is filed, the patent offices in each country conduct an examination to determine whether the invention is eligible for a patent. The results of this examination, such as notices of reasons for rejection or rejection decisions, are reported to the applicant. Accurately understanding these office actions is crucial for the applicant to respond appropriately. Therefore, accurately translating office actions from the patent offices of each country is essential for obtaining a patent.

(3) Translation of Technical Literature in Patent Litigation and Patent Invalidation Trials

In patent litigation and patent invalidation trials, technical literature is often used as evidence. Such technical literature must be translated accurately and in a manner that suits the purpose of the patent litigation or invalidation trial. This involves understanding technical documents from both technical and legal perspectives and preparing translations accordingly.

4. Patent Management

Patent management is the process of effectively managing patent portfolios owned by companies and individuals to maximize the value of patents. Patent management includes a series of activities from filing, maintenance, and utilization to enforcement of patent rights. The following explains the specifics of patent management:

(1)Management of Patent Applications

This involves managing the administrative tasks related to the preparation, submission, response to examination, and international filing (PCT applications) of patent applications.

(2) Management of Patent-Related Deadlines

Using specialized software, we accurately manage deadlines related to patent applications worldwide for our clients (such as deadlines for applications to patent office of each country and deadlines for responding to office actions). In some cases, we collaborate with local experts in each country.

(3) Management of Patent Portfolios

We create a list of owned patents and understand the status of each patent (such as pending, under examination, or registered).

(4) Management of Patent Maintenance Fees

Even after successfully acquiring patent rights, it is necessary to pay annual patent maintenance fees in each country to maintain those rights. We manage these deadlines and, when appropriate, collaborate with local experts to pay maintenance fees and manage the upkeep of patents.