Location
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CONTACT

HARAKENZO
WORLD PATENT & TRADEMARK


OSAKA
HEAD OFFICE

DAIWA MINAMIMORIMACHI BLDG.,
2-6, 2-CHOME-KITA, TENJINBASHI,
KITA-KU,OSAKA 530-0041 JAPAN
TEL:+81-6-6351-4384
(Main Number)
FAX:+81-6-6351-5664
(Main Number)
E-Mail:

TOKYO
HEAD OFFICE

WORLD TRADE CENTER BLDG. 21 F,
2-4-1, HAMAMATSU- CHO, MINATO-KU,
TOKYO 105-6121,JAPAN
TEL:+81-3-3433-5810
(Main Number)
FAX:+81-3-3433-5281
(Main Number)
E-Mail:


HIROSHIMA
OFFICE

NOMURA REAL ESTATE HIROSHIMA BLDG. 4 F, 2-23 TATEMACHI, NAKA-KU, HIROSHIMA CITY, HIROSHIMA 730-0032, JAPAN
TEL:+81-82-545-3680
(Main Number)
FAX:+81-82-243-4130
(Main Number)
E-Mail:

To be opened
on March.1.2018

NAGOYA
OFFICE

GLOBAL GATE 9F, 4-60-12 HIRAIKE-CHO, NAKAMURA-KU, NAGOYA-SHI, AICHI 453-6109, JAPAN
TEL:+81-52-589-2581
(Main Number)
FAX:+81-52-589-2582
(Main Number)
E-Mail:


In the background of the HARAKENZO trademark is a global map wherein countries/regions are sized according to the number of patents registered there in 1991.

Privacy policy


Venture Support Station
OSAKA HEAD OFFICE :
TOKYO HEAD OFFICE :
TOKYO HEAD OFFICE :
HIROSHIMA OFFICE :
HIROSHIMA OFFICE :

Patent&Trademark Attorney Kodai YAMASHITA
Patent&Trademark Attorney Eiichiro FUCHIOKA
Patent&Trademark Attorney Shuichi GOINO
Patent&Trademark Attorney Naoyuki TAKENO
Patent&Trademark Attorney Shinji IMANO

 
[ TOKYO HEAD OFFICE ]
 
[ OSAKA HEAD OFFICE ]
Tel
Fax
E-mail
: + 81 - 3 - 3433 - 5810
: + 81 - 3 - 3433 - 5281
:
Tel
Fax
E-mail
: + 81 - 6 - 6351 - 4384
: + 81 - 6 - 6351 - 5664
:
 
[ HIROSHIMA OFFICE ]
 
 
Tel
Fax
E-mail
: + 81 - 82 - 545 - 3680
: + 81 - 82 - 243 - 4130
:
 
 
 
 
 
 

1. Support on application filing

(1) Cost reduction support
System of reduction of examination fee and registration fee; grace period system

The System of reduction of examination fee and registration fee and the Grace period system are for SMEs wishing to reduce the expenses related to the filing of patent applications.

(1) Reduced fee system for R&D-focused SMEs
  • Half reduction of request for examination fee
  • Half reduction of registration fee of patent/1-10 year annuities
(2) Reduced fee/grace period system under Articles 109 and 195 of the Patent Act
  • Half reduction of the request for examination fee
  • Exemption or half reduction of patent fee/1-3 year annuities
  • Half reduction of patent fee/4-10 year annuities
(3) Patent Fees Reduction/Exemption by the Industrial Competitiveness Enhancement Act

Valid from April 2014 to March 2018

  • Fees for request for examination: Reduced to 1/3
  • Annual fees during the period from the first year to the tenth year: Reduced to 1/3
  • Search fee and handling fee: Reduced to 1/3
    (applicable only to international patent applications that are filed in Japanese language)
  • Preliminary examination fee: Reduced to 1/3
    (applicable only to international patent applications that are filed in Japanese language)

Published on the JPO homepage are the requirements, necessary documents, procedures, and effects of using this system. An eligibility questionnaire is also available.

To find out in what cases this system is applicable and other information on using this system such as requirements, necessary documents, and our Attorney’s fees, please do not hesitate to contact us. Upon request, we will determine how to fulfill the necessary requirements and then undertake the procedure.

System of refund of the paid examination fee

In some cases, registering an application as a patent becomes undesirable after the filing of the Request for examination due to a shift in corporate strategy or changing business conditions, for example. Under certain conditions, it is possible to obtain a refund of half of the paid examination fee (Official fee). This requires the withdrawal of the application and the filing of a Request for refund of the examination fee.

Free prior art searches conducted by search companies

SMEs can use this system to obtain free prior art searches from patent search companies. This system applies only under certain conditions to patent applications filed by an SME and for which no Request for examination has been filed. A representative of the SME must formally request the free search.

SMEs eligible for this system must meet the requirements in terms of number of employees and amount of capital listed in the below tables, must not be affiliated with a large company and must have an address in Japan to which the official notification can be sent.

Business type by number of employees
Business Number of employees
Retail 50 and below
Wholesale
(excluding software, information management service, hostelry)
100 and below
Hostelry 200 and below
Rubber manufacturing
(excluding car/aircraft tires and tubes, industrial belts)
900 and below
Manufacturing, construction, transport, and others 300 and below
Business type by amount of capital
Business Capital
Retail (excluding software, information management service, hostelry) 50,000,000 JPY and below
Wholesale 100,000,000 JPY and below
Manufacturing, construction, transport, and others 300,000,000 JPY and below
Advantages
  1. (1) Allows for the possibility to delete claims clearly lacking patentability via an amendment, thus enabling a reduction of the examination fee as the examination fee increases with the number of claims.
  2. (2) Increases the chances of registration by the filing of an amendment that clarifies the differences between the application and the prior art documents. According to the JPO, this system does indeed increase the chances of registration of an application.
  3. (3) Useful for preparing the explanation when requesting an Accelerated examination.
  4. (4) Valuable information for making the decision to file a patent application outside of Japan.

Details are available on the website of the JPO at the following address (in Japanese)

SME Support Service
  1. 1) For cases in which we also act as representative of the applicant, upon request we can undertake the application procedures for the prior art search.
  2. 2) The prior art search is conducted after the filing of the patent application. Please contact us if you require a pre-filing search.

  3. Information on the prior art document search is available at the following address : http://www.intellelution.com/en/patent/investigation.html#1
  4. 3) Upon request, we can provide further assistance to best utilize the search results.

 

(2) Procedure support
Search for patent application trends

Search for patent application trends analyzes fields/frontier fields in which Japanese industry is in an advantageous position based on patent-related information. The search results are valuable information for the establishment of future R&D and business strategies. Studying the application trends of competitors can help clarify in which fields filing efforts should be focused, and the need for licensing.

Based on your company’s business objectives and strategy, we can provide research on your competitors’ filing trends.

Accelerated examination for SMEs

The Accelerated examination system makes it possible to have the JPO examine the application earlier than usual. The examination results can be obtained on an average of 2 to 3 months after the filing of the request for the Accelerated examination.

The JPO has published a series of guidelines designed to facilitate use of the system by SMEs. SMEs eligible for this system must meet the requirements in terms of number of employees and amount of capital listed in the below tables, must not be affiliated with a large company and must have an address in Japan to which the official notification can be sent.

Business type by number of employees
Business Number of employees
Retail 50 or below
holesale
(excluding software, information management service, hostelry)
100 or below
Hostelry 200 or below
Rubber manufacturing
(excluding car/aircraft tires and tubes, industrial belts)
900 or below
Manufacturing, construction, transport, and others 300 or below
Business type by amount of capital
Business Capital
Retail (excluding software, information management service, hostelry) 50,000,000 JPY or below
Wholesale 100,000,000 JPY or below
Manufacturing, construction, transport, and others 300,000,000 JPY or below
SME support system for the Accelerated examination

1) Reduction of the burden related to the prior art search

When a patent application is filed by SMEs, conducting a prior art search is unnecessary, and indicating in the specification only the prior art documents the applicant is aware of is sufficient when filing of request for Accelerated examination.

If an application is jointly filed with a large enterprise and meets the specified requirements conducting a prior art search is not always necessary, and it is sufficient to indicate in the specification only the prior art documents the applicant is aware when filing the request for Accelerated examination.

2) Documents required to request the Accelerated examination

The JPO Guidelines indicate the required information (prior art search results, title of the prior art documents, comparative explanation) needed to submit a Request for Accelerated examination.

More information is available on “Patent Support Station – Accelerated examination” at the following address:

The Accelerated examination system can also be used for design applications and trademark applications. The JPO Guidelines for the Accelerated examination are available at the following addresses (in Japanese):

Should you have any questions regarding the requirements for Accelerated examination, necessary documents, or our Attorney’s fees, please do not hesitate to contact us.

Oral examination

The objective of the oral examination system is to increase the efficiency of examination procedures by facilitating communication between the Examiner and applicants that reside outside of a major metropolitan area (in Japan). The examiner will travel out to meet with the applicant and conduct an oral examination. If there is an appointed representative, the Examiner will in principle conduct the oral examination with the representative.

SME Support Service

Based on your needs, we can provide strategic, concrete advice on the timing and content of the oral examination.

Fast translation service of foreign-language cited references upon the issue of an Office Action (Notification of reasons for refusal)

In the case that the JPO has issued a Notification of reason for refusal (i.e. Office Action) in connection with a patent application, applicants residing outside of Japan can obtain a maximum extension of three months in order to respond to the Notification of reason for refusal. The extension can be requested to undertake comparative experiments between the invention applied for and the inventions described in the Cited references, or to translate the related documents. Applicants residing in Japan, however, can only obtain a single one-month extension, which can only be requested only in order to undertake comparative experiments. As a result, it is imperative to obtain as early as possible a firm understanding of the contents of the Cited references in a foreign language.

SME Support Service

"HARAKENZO more" offer translation service in Japanese, English, Chinese, Korean, Taiwanese, German and French, and can provide fast translation service of foreign-language cited references to meet your needs.

Annuities management

Following the registration of patent applications, utility model applications, design applications, trademark applications or plant variety applications, annuities must be paid for the maintenance of the right. An error in annuities management can lead to the loss of the right and result in a waste of the financial resources that were used to obtain the right in the first place. Accurate and reliable management of annuities is therefore crucial.

SME Support Service

Using our in-house management system, we can keep you updated on upcoming annuity deadlines.

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2. Intellectual Property Strategy

General remarks

Since intellectual property is intangible, a high level of organizational management is needed.

Let us use the task of documentation checking as an example. If the documents were on hand it would be easy to recognize what work needed to be done, and usually it would be unlikely that the checker would forget anything. However, if they were not readily available and the checker had to look for them, it would be prudent to take down a memo to prevent anything from being overlooked. In this manner, a difference in the degree of necessity of management between the tangible and intangible can arise; thus the intangible must be managed appropriately. Intellectual property is intangible information and requires such organizational management. Therefore, making information tangible would be a wise policy to adopt.

Examples of making information tangible include the creation of reports on intellectual assets, patent maps and technology maps. A report on intellectual assets discloses information to employees, clients, and other interested parties regarding steps the company is taking to generate future revenue and boost corporate value.

Although there are many various intellectual property strategies, here we will outline research documents, intellectual property risk countermeasures, and brand strategy.

Exploitation of research documents

Research documents are used for recording the research process. Research documents are extremely important, regardless of whether a company has global expansion plans or not.

As proof of the time of completion of the invention, research documents are particularly useful when applying for patent in the United States, which adopts a system that grants patent rights to the first to invent (rather than the first to file an application).

They can be used to determine whether or not the invention is an employee invention and to specify the inventor.

They express in writing the process up until the completion of the invention, thus making the intangible tangible.

From a legal perspective, we provide advice on how to strategically exploit research documents, record the development process of inventions, and optimize their management.

Reduction of intellectual property risk

All management decisions come with risk. In many cases when making these decisions intellectual property becomes an issue, and managing its risk is important because it can impact a company’s profits and reputation. Particularly for board members, who have a fiduciary obligation and responsibility to the company to practice good corporate governance, there is a need to approach the management of intellectual property risk from a variety of different perspectives. Intellectual property management is an important measure companies need to consider in order to avoid/manage intellectual property risk.

Examples of intellectual property risk:

  • Risk from unpredictability caused by complexities and a lack of precedents due to frequent amendments to Japanese patent laws
  • Risk caused by a lack of awareness of competitors infringing your rights
  • Risk of licensing becoming irrelevant due to global and domestic socio-economic changes
  • Risk of information leakage due to lax internal regulations and poor management

As Intellectual property specialists, we will consider all situations in which intellectual property risk can arise, and can provide advice on the various means of avoiding and managing such risk.

Branding: strategic measures
Importance of creating a brand image

Consumers and investors make a comprehensive decision to buy products and engage in business based on factors such as price, quality, durability, name recognition, functionalities, design, and reliability of the manufacturer/distributor. In this situation the trademark becomes the symbol of this decision. Trademarks perform a valuable function by transforming the corporate name of a company into a brand name. In Japan, trademarks are protected by the Trademark Act, while corporate names are protected by commercial and corporate law.

By establishing its brand through the use of trademarks or corporate names, a company can increase trust in its products/services and corporate name, thereby generating better traction with clients and improving future prospects of increasing its sales over the long-term. In this manner trademarks can add value unrelated to price, and can help a company withstand even non-price competition. In order for SMEs to increase their market competitiveness, it is important to establish a specific brand image.

Brand strategy

Establishing a business strategy is a prerequisite to creating a brand image.

First the name and mark of the product/service is selected, then a pre-filing search is conducted, and lastly the acquisition of the trademark right is carried out at an early stage. Neglecting to acquire trademark rights risks damaging trust in the mark by third-party use, since no measures of exclusion can be taken without trademark rights.

It is also necessary to remain aware of the scope of existing trademark rights and license rights. Because the trademark right encompasses only the extent to which the trademark right owner can use the trademark and exclude third parties, the scope of a license right is also limited. There is also the risk that the registered trademark is revoked due to the licensee misusing it.

As the establishment of corporate law in Japan resulted in the rescinding of the system regarding similar corporate names, it is possible for a third party to register a trademark similar to a company’s corporate name. In order to prevent this, it is wise to actively seek protection under trademark law (while “passive” protection can be recognized under the Unfair Competition Prevention Law, the conditions are very strict).

Brand management

Establishing a brand image requires time and sustained effort. Some of these efforts include: monitoring to ensure similar marks are not being used by third parties, taking measures to prevent the name of the mark becoming a common name, and overseeing the activities of licensees. Document, data and records related to sales or advertising results must also be managed/stored, as they may prove useful in future litigations.


Please do not hesitate to contact us should you have any questions regarding brand strategy, trademark application filing or trademark right acquisition.

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3. Information sites for SME support

Technology transfer/dissemination of patent information

With the development of increasingly complex technology, using competitor’s technology is becoming more common. Take the provision/introduction of technology through licensing as an example of utilizing intellectual property; licensees can use competitor’s technology to develop and sell their own products, and the licenser can generate revenue through licensing fees. Companies can buy/sell intellectual property rights and establish security interests using the business succession-based transfer of patent/trademark rights as a means of raising capital.

"HARAKENZO more" have the resources and expertise to research the desired technology based on patent information, and can handle negotiations with the company holding the patent right for the technology. Utilizing both global and domestic perspectives and taking into account antitrust laws, our services also include preparing licensing contracts, providing legal advice, and undertaking license transfer procedures with the JPO.

Patent Business Market

Patent Business Market creates opportunities for business tie-ups between companies wanting to promote their technology and interested market participants.

Anti-counterfeit strategies

If your product is infringed, your company faces not only financial losses but also a loss of trust. Many counterfeit products are produced outside of Japan, and it is not easy to identify the infringer. In such cases, it is wise to have the appropriate strategy in place.

Utilizing our global network of representatives, we offer consultation, advice, and procedural services on customs regulations and for implementing anti-counterfeit strategies.

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