FILING & PROSECUTION
By grasping the up-to-the-minute examination practice trend at Japan Patent Office (JPO) and court precedents, we devote ourselves to provide maximum quality of service to every step in the process of obtaining intellectual property from filing applications, responding to official actions, to appealing against examiner’s decisions to JPO appeal board, and to appealing against appeal JPO appeal board decisions to Intellectual Property High Court, and so on), yet satisfying cost sensitive clients.
Specifically, we focus on obtaining quality patents, patents that withhold severe validity attack and that facilitates execution of right against infringers, by taking advantage of our knowledge, experience and know-how gained through involvements in various intellectual property disputes including, of course, patent litigations.
We adopts a highly reputable docketing system to monitor each official and non-official (internal) due dates. We also implement a stringent checking process to promote and maintain the integrity of our docketing system. Our staff has extensive experience with our docketing system. In addition, our patent attorneys are familiarized with our docketing system to further promote the integrity of our docketing system and the efficiency of attorney work.
LITIGATION and JPO TRIALS
We have deep and broad experience to handle various IP litigation such as Infringement litigation and Validity Litigation. We also regularly handle JPO Trials such as Invalidation Trials and Correction Trials.
Some of the recent outcome of the Invalidation Trial cases are given as follow.
Invalidation Trial Case (Trial Number: Invalidation 2013-800011) [“2nd Invalidation Trial”]
Invalidation Trial Case (Trial Number: Invalidation 2011-800221) [“1st Invalidation Trial”]
Our firm filed for our client Invalidation Trials asserting that all the claims of the JP Patent No. 4565715 owned by Company P are invalid. Mainly due to the fact that the claims contain two distinctive portions, we decided to strategically file two invalidation trials separately. As its result, in the 1st Invalidation Trial, the portion in the claim of which we asserted Lack of Novelty was completely deleted by the amendment (a.k.a. correction) the patentee was forced to file. In the 2nd Invalidation Trial, we asserted Lack of Inventive Step of the remaining portion over prior art our firm identified by our extensive search. On August 1st, 2014, we successfully obtained the trial decision to invalidate all the claims. The trial decision became final and binding on September 25th, 2014.
Invalidation Trial Case (Trial Number: Invalidation 2010-800110)
Our firm filed for our client an Invalidation Trial asserting that the claim 1 of the JP Patent No. 4109165 owned by Company A is invalid. As its result, on April 25th, 2011, we successfully obtained the trial decision to invalidate the claim (publication date of the trial decision: July 29th, 2011). The trial decision became final and binding on June 10th, 2011.
In the prosecution of a company’s intellectual property strategy, professional opinions on infringement or validity of intellectual property often take critical roles. For example, high-quality opinions are required to make sophisticated internal decision prior to real legal dispute with another company, to exercise intellectual property through licensing or litigation, and to evaluate intellectual property upon transferring businesses or merging companies. Thus, obtaining opinions with high level of accuracy and business sense at early stages is extremely important in making sophisticated decisions for company’s intellectual property strategies.
Our professionals have capabilities and experiences to opine on complex infringement and validity issues of intellectual property, and thus are able to provide opinions to help enhance predictability of business.
The discovery of hidden prior art sometimes overturn status quo in patent lawsuits. Superior legal logic sometimes gives in to a simple discovery of prior art.
We tirelessly conduct persisting searches, as cases require it. Of course, our search is not simply persisting. We conduct searches with full attention to possible legal logic for invalidity or infringement argument that must be assembled with search outcome and with the accused product in mind. Our search is clearly distinct from that of search companies that simply conduct searches looking just for similar technologies.
In Japan, unlike United States, there is no Orange Book Listing that provides Loss of Exclusivity (LOE) information on brand drugs.
Also, unlike United States and Europe, Japan doesn’t have data exclusivity protection per se yet having so called Post Marketing Surveillance (PMS) which provides “de-fact” exclusivity against generic entry.
Further, in Japan, we have Price Listing System that practically means, without Price Listing, generic companies cannot commercialize its generic drugs even after its approval, in most situations. However, currently, Price Listing is done only twice a year for generic drugs.
Due to those complicated circumstances, it is not easy for both brand drug companies especially those outside of Japan and generic companies to analyze earliest possible generic entry. Unlike many other firms in Japan, we are experienced in conducting Loss of Exclusivity (LOE) search involving Patent Exclusivity and de-facto exclusivity by PMS to prepare for generic entry.
STRATEGIC PORTFOLIO MANAGEMENT
To succeed in business, mere collection of patents is not sufficient. Indispensable is strategic development of intellectual property portfolio that reflects the environment of the business.
From another point of view, intellectual property per se is nothing more than “debts” since it necessitates filing fee, examination-requesting fee, and annuity payments, which, when all combined, yield substantial amount of cost. It can be possible to develop a vibrant intellectual property strategy by effectively utilizing limited resources with the proper balance instead of filing any patents without sophisticated screening. We are different from the conventional type of patent law firms that focuses too much on patent filing and prosecution.
We support the strategic development of intellectual property portfolio in consideration of the internal and external environments that your business faces.
Superior case-analyzing skills and negotiating ability are often required in the successful licensing of intellectual property. Our professionals have the capabilities and experiences to handle intellectual licensing matters, from structuring license strategies, drafting communications including warning letters and replies thereto, actual negotiation, conducting IP due diligence, to drafting final agreements.