WHAT WE DO
We, at Nagoya International IP Firm, proudly represent domestic and international clients and offer wide variety of patent-related services in and out of Japan to satisfy their requests of any kind related to patent (including utility model). Our service ranges from, needless to say, procedures in acquiring patent rights, patent searches, dispute handlings, IP consultations, and any other patent related operations. We also have a great number of experience and history in international IP services, which have been supported by powerful assistance of foreign IP law firms (local agents) who are in cooperating relationship with us.
For international clients, we offer face-to-face communications through web meetings in English in addition to correspondence through letters and emails depending on the nature and urgency of the case, so that we understand demands and requests of the clients and customize our services to fit their variety of different needs. Such meticulous case by case communication enables us to appropriately offer one-stop assistance for a sequence of services from acquisition to use of the patent rights upon request of the clients.
OUR SKILL AND STRENGTH
Technical Expertise
Nagoya International IP Firm is the largest firm in Aichi prefecture* (as of April 2024) with around 80 members, including 18 Japanese patent and trademark attorneys and 1 China patent bar qualification holder. We are a group of professionals with a collection of expertise in mechanical engineering (Mech Eng), electrical and electronic engineering (EE Eng), information technology (IT), chemistry (Chem), physics (Phys), biotechnology and pharmaceuticals (Bio/Pharm), and many other fields. Any request in any area of technology can be covered by our highly skilled attorneys.
* Aichi, a prefecture that includes Nagoya city, which is the prefectural capital of Aichi and is one of the three largest cities in Japan, has been the best “Monozukuri” (manufacturing) prefecture and second to none by far in the value of shipments of manufactured goods in Japan for over 40 years. Our firm is headquartered in the city of Nagoya, the heart of leading “Monozukuri” prefecture of Japan, and have rooted here and provided local companies with solid IP solutions for their global business activities. Our high reputation for such global support experiences have so far led us to many opportunities in handling requests from international clients (clients outside of Japan) in different fields.
We have been providing services to more than 900 clients ranging from large companies to small and medium-sized businesses each year, and are able to meet various needs.
Our firm is highly esteemed for its ability to deal with technologies requiring higher expertise, and has been entrusted by universities and research institutes with filing more than 200 patent applications in the last 5 years (as of October 2021).
* Aichi, a prefecture that includes Nagoya city, which is the prefectural capital of Aichi and is one of the three largest cities in Japan, has been the best “Monozukuri” (manufacturing) prefecture and second to none by far in the value of shipments of manufactured goods in Japan for over 40 years. Our firm is headquartered in the city of Nagoya, the heart of leading “Monozukuri” prefecture of Japan, and have rooted here and provided local companies with solid IP solutions for their global business activities. Our high reputation for such global support experiences have so far led us to many opportunities in handling requests from international clients (clients outside of Japan) in different fields.
We have been providing services to more than 900 clients ranging from large companies to small and medium-sized businesses each year, and are able to meet various needs.
Our firm is highly esteemed for its ability to deal with technologies requiring higher expertise, and has been entrusted by universities and research institutes with filing more than 200 patent applications in the last 5 years (as of October 2021).
Devotion to Quality Services
Patent Application
The quality of patent application documents largely affects not only the possibility of acquiring the rights to the invention disclosed in the patent application but also the value of the patent rights to be acquired. In every occasion we are entrusted by our international clients with preparation of Japanese translations of application documents (priority application texts and PCT application texts, etc.), we pay thorough and meticulous attention to the quality of Japanese translations. There are always alternatives or options of Japanese words and phrases that best match the expressions in the original application documents.
Based on our long experiences in IP practice in Japan, we have two points of view in preparing the patent application documents to be filed in Japan for our international clients, namely, “point of view to increase the possibility of patent rights acquisition” and “point of view to improve the value of patent rights”. With these
points of view in minds, we pay serious attention to select the optimum Japanese translation for each original expression to provide the best application documents in Japanese. In addition, within the framework of conditions that comes with the clients’ requests, we are willing to make various proposals and recommendations, such as practically optimum claim amendments, that may help improve the clients’ convenience at a later date in the process of acquiring patent rights and in exercise of patent rights, such as utilization of patent rights.
<Point of View to Increase the Possibility of Patent Rights Acquisition>
As mentioned above, when requested by our clients to prepare Japanese translations of patent application documents, we select Japanese translation for each original expression that is optimum for acquiring patent rights in Japan based on our experience accumulated through our long history of practices in patent rights acquisition procedures and in exercise of patent rights. More specifically, we especially strive to select the most suitable Japanese translation for each and every original expression so that the features of the invention of our clients in comparison with the prior art disclosed in the application documents, more particularly, the descriptions of the invention in the claims and the technical significances described in the specification that relate to the invention, can be construed in favor of the clients in the examinations in the Japan Patent Office.
After thus preparing the optimum Japanese translations of the patent application documents, we present, within the framework of conditions
that comes with the clients’ requests, a claim amendment proposal as it appears necessary to reduce a risk of receiving a notice of reasons for rejections, for example with respect to lack of clarity, due to the description requirements unique to Japanese patent practice.
Even in a case where an already prepared Japanese translation of the patent application document is provided to us for cost saving, we will serve our clients with a necessary claim amendment proposal, within the framework of conditions that comes with the clients’ requests, to reduce a risk of receiving a notice of reasons for rejections due to violations of the description requirements in the claims.
<Point of View to Improve the Value of Patent Rights>
In the process of patent rights acquisition, we propose amendments appropriate in the Japanese patent practice to clarify the features of the claimed inventions with the broadest possible expressions that avoid unnecessary limitations. We also study and propose claim writings that help substantiate an act of patent right infringement and strategic expressions prepared for legal attacks such as invalidation trials. In addition to these services, we also serve to study business activities of our clients as well as of their competitors and propose solutions such as preemptive measures in assuming competitors’ strategies to avoid exercise of patent rights by the clients (including claim amendments, divisional applications, use of IP system in Japan other than the patent system, etc.) if relevant information is provided upon requests.
Responding to Office Actions
In responding to notices of reasons for rejection and decisions of refusal, we serve our clients from the same two points of view, “point of view to increase the possibility of patent rights acquisition” and “point of view to improve the value of patent rights”, to prepare the best possible response. Our attempts to overcome the grounds for rejections without unnecessary limitations to the scope of the invention come from the know-how we established through long years of studies in office decisions and court judgements, in addition to our persistence against the examiners’ determinations and meticulous consideration of the validity of the determinations. We also proactively propose application strategies from a comprehensive point of view, which covers possible options such as divisional applications.
What is best and what is optimum are different for every client depending on their policies in application strategies and their business standing. Some demand our tenacity to maximize the scope of rights, and others demand early acquisition of rights. We thus propose many types of strategies from different points of view and help our clients to select one that works best for them.
Using IT
A very minor mistake in the procedures such as of filing patent applications could develop into a major disadvantage. We use software of our own that supports drafting work, administrative work, and many more to create office environments that enable us to stably provide high-quality and reliable services.
Education and Training of Human Resources
Environments surrounding the IP industry are constantly changing. We pay close attention to revisions of examination guidelines and Patent Act, monitor trends in courts’ decisions, and observe movements in the latest technologies such as AI to regularly update our knowledge. To sustainably provide high standards of patent services from every one of us, it is our fundamental policy in human resource development to positively employ young engineers with no practical experiences and train them to first-class patent attorneys through our unique education curriculum.
Global Assistance through International Network
We have partnered and cooperated with over 1000 foreign IP law firms (local agents) and established a structure that allows us to undertake procedures in over 200 countries and regions in North America, South America, Europe, Asia, Oceania, and Africa. Among those, more than 100 countries and regions are frequent locations of our international operation. This accomplishment and experiences have made us specialized in IP systems and customs of IP practice of many foreign countries, which benefits our international clients entrusting us with cases of Japanese patents. We are capable of intelligibly explaining the differences in systems and practices between Japan and foreign countries in our proposals for practical approaches in the Japanese patent practice.
As it is usual for us to receive requests from international clients regarding Japanese patents by letters and emails, there are many cases where letters and emails are not enough to comprehend subtle nuances and true intentions behind words, backgrounds, and circumstances depending on the nature and urgency of the case. To overcome difficulties in these cases, we conduct face-to-face communications through web meetings in English in addition to letters and emails to correctly comprehend the true demand of the clients, provide answers to the clients’ questions, and propose the optimum service we can offer for their practice in Japan. We are also highly skilled in communicating with the clients who have cultural backgrounds different from Japan and able to provide a smooth and comfortable interactions. Web meetings will be attended by those of us who have a deep knowledge of patent systems, fluent verbal and written communication skills in English, and high level of intercultural communication skills to provide the clients with very satisfactory experiences of our patent support services in Japan.