PATENT

Our Services

PATENT

Technology has come a long way and scientific and technical renovation is fast gaining momentum. With the arrival of biotechnology, nanotechnology, information technology and other emerging technological advances, corporations are falling over themselves to develop leading edge technologies. The ruthless competition in the high-tech industry has permeated many facets of society and hurled traditional companies into a fierce race for innovative products as well. Protecting an invention with a patent is a crucial process. Unprotected technologies are prone to abuse, theft or exploitation by competitors before their business value is extracted and profits generated. A patent is a property right guaranteed by law but it must be enforceable, valid and cover a sufficient claim scope. Kawaguti & Partners provides a full range of patent services including:

Drafting & FilingFor a patent attorney, it is critical to know full details of an invention to define the invention because the definition virtually seals the fate of the patent. The average inventor rarely has a background in intellectual property law that makes satisfying statutory requirements an almost insurmountable challenge. The first business of K & P is to redefine the invention along the lines of patent law and the regulations and rules governing intellectual property to raise the patenting potential. If necessary, the inventor is asked to provide additional technical information or experimental data. K & P, well versed in all aspects of the practice, is your perfect partner for planning and implementing every step of this process to fully realize the potential of the new invention.

ProsecutionK & P is continually improving the prosecution process, offering practical suggestions and strategies for responding to Office Actions. Sometimes the examiner does not understand the invention. It is an important part of our business to explain, discuss and stress the key technical aspects of clients’ inventions but we are careful to avoid giving more information than necessary. File wrapper estoppel is a doctrine rigorously applied in Japan, as in many other countries. The prosecution of a patent application requires extensive interaction with the Japanese Patent Office (JPO). K & P ’s attorneys frequently visit the JPO for personal interviews with the Examiners to discuss applications. If a client desires, we request an expeditious examination.

Board of AppealsThe Board of Appeals is responsible for two types of examinations.  The first is the examination of patent applications after final rejection by the primary examiner.  The other is the examination of the validity of granted patents at the request of third party’s nullification action.  When an application is rejected, K & P makes a thorough analysis to identify the problem and offer solutions.  Where necessary, some clients are advised to amend claims or divide an application.  In the nullification action, we take a judicious approach since it is interlinked closely with infringement litigation.  If necessary, we recommend narrowing the scope of claims.  If clients are not satisfied with the Board’s decision in either case, they may appeal it to the Tokyo High Court.

LitigationThere are two kinds of litigation.  The first is an appeal to the Tokyo High Court against the Board’s decision.  Here, tactics must involve an aggressive attack on the errors of the decision.  The second is patent infringement litigation.  This is an area where creating and implementing a strong litigation strategy is crucial.  The lawsuit is all but won if a good, carefully planned implementation strategy is put in place.  K & P intensely studies all the facts because we know the key to success in litigation lies in the impeccable preparation and highly skillful, experienced, knowledgeable art and practice of litigation.

SearchingOne of our important services is prior art search.  Prior art search not only helps to find prior publications before filing a new patent application but is useful for a client bringing an action to nullify a granted patent.  The service includes prior publication search in Japanese.  We also conduct clearance search to locate any patents on which a client’s product could infringe if sold in a particular country.

CounselingWe counsel clients on all aspects of issues and queries, both general and specific.  Our strategic patent counseling involves patent procurement, portfolio management, intellectual property licensing and transaction strategies, patent interferences, patent enforcement and patent defense.   K & P ’s well-informed advice is instrumental in formulating strategic decisions on dispute resolution by negotiation, other alternative forms of resolution and litigation.