Patent Support Station
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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:


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.

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UPDATE : April 9, 2015

Introduction

The previous patent opposition system (hereinafter, referred to as "previous system") was abolished by the revision of the Japanese patent law in 2003 as being unified into the patent invalidation trial system. In 2014, however, a new patent opposition system (hereinafter, referred to as "new system") was introduced by the revision of the Japanese patent law for ensuring a strong and stable patent early.

The new system will be applied to patents that are published on and after April 1, 2015.

The followings are main differences between the new system and the previous system:
  • (1) All trial examinations are based on documentary proceedings
    For opponents' convenience, all trial examinations in the new system will be carried out based on documentary proceedings (Article 118(1) of Patent Law).
    In the previous system, trial examinations were carried out based on documentary proceedings in principle but oral proceedings were also conducted upon request or ex officio. Therefore, parties were more concerned with the cases, as compared with the new system.
  • (2) Opportunity for opponent to submit written argument
    In order to enhance convenience of the new system, an opponent is to be given an opportunity to submit a written argument when a demand for correction is filed by a patentee (Article 120quinquies(5) of Patent Law).
    The previous system was not so convenient for an opponent because, in the previous system, no opportunity was guaranteed for the opponent to state opinions after submitting a written opposition.
  • (3) Shortened period in which gist of written opposition can be changed
    In order to increase efficiency of trial examination, the period in which the gist of a written opposition can be changed is shortened in the new system. Specifically, in a case where a notice of reasons for revocation is issued within the opposition period, the opponent cannot make amendments for changing the gist of the written opposition after that (Article 115(2) of Patent Law).

The new system is means for extinguishing other's patent, as with the patent invalidation trial system. The patent opposition system can be utilized easier than the patent invalidation trial system in terms of the following points:
  • (1) Unlike the patent invalidation trial system, an opposition can be filed by a third party (so-called dummy) who has been assigned by an opponent. (Article 113 main paragraph of Patent Law)
  • (2) The official fee is lower than the patent invalidation trial system. (Article 195(2) of Patent Law)
  • (3) Trial examination of an opposition is carried out only by documentary proceedings, and therefore burden of procedures to parties is reduced as compared with the patent invalidation trial system. (Article 118(1) of Patent Law)




Contents of Our Services

In the patent opposition system, it is necessary to conduct highly specialized analysis and handlings equivalent to those in the patent invalidation trial system in a short time. In view of this, we recommend consulting with experienced experts.

We offer various kinds of services in relation to the patent opposition system.Based on expertise of well experienced patent attorneys and staffs, we flexibly and promptly handle customer's request.

Please feel free to contact the patent attorney in charge for questions or consultation.

(Attention): For reasons of conflict, we may decline to accept an order.

File Opposition (Opponent)
Preparation for filing opposition
When filing opposition
When demand for correction is filed after notice of reasons for revocation
Others
Protect Patent (Patentee)



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Monitor, Study, and Analyze Other's Patents

An opposition can be filed within 6 months from the date on which a target patent is published (Article 113 main paragraph of Patent Law). From this, it is necessary to prepare for monitoring, studying, and analyzing other's patent publications so as not to miss an opportunity to file an opposition.

It is possible to outsource such monitoring, studying, and analyzing to us.We offer services of study, analysis, and consulting with regard to other's patent publications based on expertise of special patent attorneys and special staffs, as well as monitoring of other's patent publications.



Monitor Other's Patent Publications

Based on a search conditional expression arranged with a customer, we periodically (e.g., every 1 month) search newly issued other's patent publications and report the search result. The search conditional expression and the search timing can be changed at any time.

Extract Significant Patent

From searched other's patent publications, we extract a patent publication(s) which requires special care in consideration of customer's products and techniques, etc., and report the extraction result. This can be utilized as information for avoiding infringement and analyzing invalidity.

Offer of Professional Opinion

We analyze searched other's patent publications or extracted other's patent publications, and provide a professional opinion of patent attorney at our firm by taking into consideration customer's products and techniques, etc. This can be utilized as information for avoiding infringement and analyzing invalidity.

Analyze Trend of Other's Patents and Consulting

A customer may want to analyze trend of other's patents based on their patent publications so as to determine the customer’s patent strategy in the future based on the analysis result. In such a case, patent attorneys at our firm are available for analysis and consulting.




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Search Evidence for Invalidation / Analyze Invalidity

After an opposition filing period has elapsed or a notice of reasons for revocation of a patent is issued, whichever comes first, gist of reasons and evidence for opposition stated in a written opposition cannot be amended (Article 115(2) of Patent Law). Therefore, it is necessary to sufficiently research and study in advance for preparing reasons and evidence for opposition. Meanwhile, the opposition filing period is limited to a short time, i.e., within 6 months from the date on which a target patent is published (Article 113 main paragraph of Patent Law).

That is,in the patent opposition system, it is necessary to carry out sufficient preliminary research and preliminary study in the short time. It is possible to outsource such short-term research and study to us. We offer services of research and study based on expertise of special patent attorneys and special staffs. We have various special patent attorneys and special staffs, and we can therefore carry out even massive research and study with quick delivery.



Search Evidence for Invalidation

Based on a search conditional expression arranged with a customer in accordance with contents of a target patent to be invalidated, we search patent literatures of such patents that may be invalidated, and report the search result. The search conditional expression can be changed at any time in accordance with the search result. Moreover, we can offer a professional opinion of a patent attorney at our firm.

Analyze Invalidity

A patent attorney at our firm provides a professional opinion as to whether or not a target patent can be invalidated based on searched patent literatures. This can be utilized as information for determining whether to actually file an opposition.




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Monitor Opposition

In a case where a third party has filed an opposition to a significant other's patent, it is possible to refrain from filing own opposition, in consideration of a cost, etc.

In such a case, it is necessary to monitor whether or not an opposition to the significant other's patent is filed by a third party. It is possible to outsource such monitoring to us.




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Prepare Written Opposition

In the patent opposition system, trial examination by the panel of trial examiners is carried out based on documentary proceedings, and no oral proceedings are conducted (Article 118(1) of Patent Law). Moreover, the provisions regarding trial, etc. are applied mutatis mutandis to trial examination and decision in a patent opposition system (Article 120octies of Patent Law), and an order to amend or a dismissal of procedure will be issued if there is any non-compliance with formal requirements in a written opposition. Therefore, it is necessary to prepare a proper written opposition based on expertise in compliance with the formal requirements.

Please feel free to consult with us about preparation of a written opposition. We offer service of preparing a written opposition based on expertise of well experienced special patent attorneys at our firm.



Consider Strategy

We consider and propose a strategy based on a professional opinion for invalidating a target patent.

Prepare Written Opposition

Based on a strategy arranged with a customer, we prepare a draft written opposition that contains logically-constructed appropriate reasons for invalidation, etc., and file a written opposition, which has been reviewed by the customer, with the JPO.

Depending on a customer's budget, we can prepare a lower-cost version of written opposition in which items mentioned are simplified.

Regarding Opponent

Please contact us if you want a third person (so-called dummy) who receives your will of filing an opposition to file the opposition.




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Prepare Written Argument

In a case where a patentee requests correction of claims, etc. during trial examination of an opposition, an opponent can state opinion by submitting a written argument within the predetermined period (of 30 days (normally) or of 50 days (if residing overseas)) (Article 120quinquies(5) of Patent Law).Such a written argument influences impression on the panel of trial examiners, and it is therefore necessary to prepare the written argument with highly professional study.

Please feel free to consult with us about preparation of a written argument. We offer service of preparing a written argument based on expertise of a well experienced special patent attorney at our firm.



Consider Strategy

We offer service of considering and proposing a strategy based on expertise for insisting opinion to the panel of trial examiners.

Prepare Written Argument

Based on a strategy arranged with a customer, we prepare a draft written argument that contains logically-constructed appropriate opinions, and file a written argument, which has been reviewed by the customer, with the JPO.




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Offer of Information

The post-grant information offering system remains even after the patent opposition system is introduced. Under the circumstances, the system for offering information may be used, for example, (1) in a case where a customer wants to anonymously submit publicly known arts in order to support an opposition filed by others or (2) in a case where, a customer wants to anonymously submit, while trial examination of an opposition is pending, evidence which has been newly found in a period during which a gist of reasons and evidence of the opposition cannot be changed.

Please feel free to consult with us about using the information offering system.


(Attention): Whether or not documents submitted through the system for offering information will be accepted in trial examination of an opposition is left to trial examination ex officio of the panel of trial examiners (Article 120bis(1) of Patent Law).




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Analyze Validity immediately after Grant of Patent / Divisional Application

Within 30 days from the date a certified copy of decision to grant a patent has been mailed, a patent applicant can file a divisional application (Article 44(1)(ii) of Patent Law).

From this, a customer may want to file a divisional application of an important patent within 30 days from the date a certified copy of decision to grant a patent has been mailed, in case an opposition to the patent would be filed. By doing so, even if the patent is revoked by an opposition, the patent might be secured by the divisional application.

As information for determining whether or not to file a divisional application, we recommend analyzing validity immediately after grant of patent. We offer service of analyzing validity in a short time based on expertise of special patent attorneys and special staffs.



Research of Validity

Based on a search conditional expression arranged with a customer in accordance with contents of a target patent, we search patent literatures that might invalidate the target patent. The search conditional expression can be changed at any time in accordance with the search result.

Analysis of Validity

A patent attorney at our firm provides a professional opinion as to validity/invalidity of the target patent based on searched patent literatures.

Divisional Application

In a case where the target patent seems to be invalidated, we propose to file a divisional application within 30 days from the date a certified copy of decision to grant the patent has been mailed.




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Prepare Written Argument / Demand for Correction/ Interview

In a case where a notice of reasons for revocation is issued as a result of trial examination by the panel of trial examiners, a patentee and an intervenor can state their opinions by submitting a written argument within the predetermined period (of 60 days (normally) or of 90 days (if residing overseas)) (Article 120quinquies(1) of Patent Law). Moreover, within a period of submitting the written argument, the patentee can file a demand for correction of claims, etc. (Article 120quinquies(2) of Patent Law).

Such a written argument and a demand for correction need to be prepared based on highly professional study in order to surely maintain the patent by reversing impression of the panel of trial examiners.

Please feel free to consult with us about preparation of a written argument and a demand for correction. We offer service of preparing a written argument and a demand for correction based on expertise of a well experienced special patent attorney at our firm.



Consider Strategy

We consider and propose a strategy based on expertise for reversing impression of the panel of trial examiners.

Prepare Written Argument

Based on a strategy arranged with a customer, we prepare a draft written argument that contains logically-constructed appropriate opinions, and file a written argument, which has been reviewed by the customer, with the JPO.

Demand for Correction

Based on a response strategy arranged with a customer, we prepare a draft of written demand for correction that contains logically-constructed appropriate reasons that the patent should be maintained by the correction, and file a written demand for correction, which has been reviewed by the customer, with the JPO.

Interview with Panel of Trial Examiners

In order to smoothly communicate with the panel of trial examiners or the like, if needed, a patent attorney at our firm conducts an interview with the panel of trial examiners.




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Contact



HARAKENZO WORLD PATENT & TRADEMARK
Patent Division Head, Patent Attorney:
Takashi MURAKAMI (in Osaka Head Office)
TEL : +81-6-6351-4384 (Main Number)
E-Mail :
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