Prosecution｜Service｜SOCO IP LAW FIRM

High Success rate of Patent Issuance

In Japan, the average rate of patent issuance after filing a request for examination was 66.8% in 2012 according to the Japan Patent Office. On the other hand, our rate of patent issuance was 96.2% between 2012-2013. All of the ten cases for which we filed an accelerated examination were patented.

There are mainly three reasons for that.
1) Our attorneys have years of experience as engineers, and so we can understand inventions well.
2) We draft logical and convincing arguments when a rejection is issued.
3) Our office is close to the Japan Patent Office, and we often interview the examiner who issued a rejection.

If you would like to obtain a patent in Japan, please contact us.

Issues to Consider when Obtaining Patent Rights in Japan

Due to the different requirements in between the JPO and the patent offices of other countries, the issues below can arise when obtaining patent rights in Japan:

Issue 1
A non-final rejection may be issued without an examination of novelty and inventive step, when the claimed invention does not satisfy the description requirements in Japan.

• Novelty and inventive step are examined only after amending the description, and a Final Rejection may be issued based on lack of novelty or inventive step.
• Only the amendments which limit claim elements are permitted after a Final Rejection is issued. Therefore, the rejection cannot be overcome or the scope of the claimed invention may become overly narrow as a result of the amendment drafted for the purpose of overcoming the rejection.
• Filing an appeal or a divisional application, each of which may cost more than $4,000, may be required.

Issue 2
Claim 1 has been determined to be lacking novelty in Japan.

• The examiner examines claims with the lowest number that depend directly from the claim that has already been examined until the examiner finds a special technical feature (“STF”) that provides some contribution over the prior art.
• When the rejection based on Lack of Unity is issued, the only other independent claims that are examined are claims that recite all of the claim elements of the examined claim.
• The only dependent claims that are examined are the claims depending directly from the claim(s) reciting the STF.
• The claims, after making an amendment must include all of the claim elements recited by the claim having the STF.
• In this case, there is a danger that the scope of the claimed invention may become narrow. In particular, if Claim2 includes unimportant claim elements, the amended claim will be too narrow.

SOCO’s Solutions
We will provide solutions for avoiding the above issues before filing an application. In order to maximize the benefits of filing applications, we provide the following services:

1. Prior art search before filing applications
   More than one hundred publications are investigated. If the claimed invention has been determined to lack novelty, we will propose claims for a preliminary amendment. If the patent application is not a PCT application, (i.e. Paris Route), we will also propose additions to the specification.
2. Review of the specification and claims
   The specification and claims are carefully reviewed to determine whether they satisfy the description requirements in Japan. Changing the sequence of claims may be proposed considering Japanese examination practice.

Feel free to contact us for details related to the above information.

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Issues to consider when Responding to Office Actions
Can you be satisfied with Japanese patent counsel who only follows your instructions?

Since we are the experts, we believe that Japanese patent counsel should provide expert advice rather than following the client's instructions exclusively.

SOCO’s Solutions
At SOCO, when we receive an Office action, we carefully review the cited references in detail and provide our own proposals that we believe will be most beneficial to our client to overcome the rejection. When receiving instructions from our clients, we make sure to tailor our advice to match their goals.

As a result, the probability of overcoming a rejection is increased and a patent can be obtained with minimum cost.

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Several Types of Design Systems in Japan
Several types of design systems can be registered in Japan as shown below. Selecting the best type of design system is not a simple task when not experienced with Japanese Design Examination Guidelines.

SOCO's Method
SOCO does not only file a design as instructed by our client, but we also provide suggestions for selecting the best type of design systems for obtaining a design right considering the characteristics of the client’s design.

(Type 1) Normal Design System
This is the most general type of design system. The design of an article can be registered.

(Type 2) Partial Design System
A partial design of an article can be registered. For example, the partial design of a lens in a digital camera can be registered.

(Source: Japanese Design Examination Guideline)

(Type 3) Related Design
Designs that are similar to each other can be registered under specified conditions. For example, if you sell several products with different prices that have different related designs, all of the related designs can be protected.

(Type 4) System Design
The design of articles that are used in combination can be registered. For example, a knife/fork/spoon set design, a set of tables, or a coffee cup and plate set can be protected under Japanese law.

(Source: Japanese Design Examination Guidelines)

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Your goods and services should be protected
If you are thinking of selling goods or providing services in Japan, filing a trademark application is strongly recommended.

Trademark searches
Searching registered trademarks is strongly recommended prior to filing a trademark application in order to avoid receiving a rejection in Japan. The trademark search will be also effective in avoiding infringing registered trademarks.

SOCO Counsel
SOCO will not just file trademark applications pursuant to your instructions, but also provide suggestions based on the search results. When filing a trademark application in Japan, the Similarity Code, unique to Japan, must be considered rather than the International Classifications. Additionally, the JPO encourages describing goods and services pursuant to the Japanese Trademark Examination Guidelines. SOCO can provide suggestions in order to describe goods and services in an appropriate manner when filing an application with the JPO.

Early Application Filings are Preferred
In Japan, if an identical or similar trademark is filed, the earlier filed trademark is registered. Since the use of a trademark is not required before filing a trademark application in Japan, filing an application as early as possible is recommended when you have the intent to use the trademark in the future.

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