Patent Search
Search and Analysis before grant of right
Search and Analysis after grant of right
Prior art search
By fulfilling the requirements set by each set of laws, patents and utility models are granted rights through an administrative sanction of the Japan Patent Office (JPO). In order to fulfill the necessary requirements, it is useful to conduct a prior art search before the application.
In the case of patent, there is a period of time from after filing the application to before the deadline for the Request for examination during which it is possible to reconsider the prosecution of applications for which the acquisition of rights has been judged undesirable, and to discover prior art documents that were not yet made public at the time of application. From this view, it is useful to again conduct a prior art search at the time of the Request for examination.
Content
Through close examination of patent and non-patent literature, we conduct patentability searches for similar applications and technology predating the application.
Search Merits
Smooth acquisition of patent rights
Although a swift application process is important, if the application is filed without conducting an adequate search, the existence of previous applications or inventions could result in the application failing to meet the necessary legal requirements, and thus have to be abandoned. Prior art searches fulfill an important role in enabling the accurate and efficient acquisition of patent rights.
Prevents unnecessary costs
Preliminary research, by revealing the unpatentability of an application, can make it possible to avoid unnecessary costs.
Forms the core data of the patent specification application
The core data needed to create the specification is formed by searching through the prior literature and contrasting the invention with those in the literature. The work conducted from search through to application stage enables efficient preparation for the filing of the application.
Legal compliance, faster examination process
Patent law requires the disclosure of prior art references known at the time of application. This requirement can be met by disclosing the search results prior to the application, which consequently lightens the reference search workload for the JPO and contributes to a faster examinations process.
Search outline
We conduct research on competitors’ application trends and patent/utility models.
We conduct research on competitors’ application trends and patent/utility models.
Practical examples
- Find out in what fields competitors’ place the most value, and in what countries/regions they are applying for patents
- Avoid research and development duplication and anticipate the future direction of research and development
- Create technical pictographs, patent maps
Information Sources
Examples include domestic and international patent publications, and non-patent literature such as the reports of the JPO on patent application search technology trend.
Collection of documents for submitting them through the procedure known as Offer of Information
We collect and analyse data regarding other parties’ applications as a preparation to using the offer of information system in order to notify the JPO of applicable reasons for refusal (or grounds for invalidation after registration).
Use prior to registration
The offer of information is a strategic method that prevents competitors from acquiring rights
After a competitor acquires a right, it is problematic for a company, for as long as the right is valid, to implement an invention within the same technical scope without ownership of legal rights. Using the offer of information system makes it possible to prevent competitors from acquiring rights.
Use after registration
Discourages enforcement by the patent holder
Through the offer of information, the patent holder becomes aware of the possibility that the patent could become invalid. This tends to discourage the patent holder from enforcing the rights.
Validity Search of Rights
For new entries and commercialization, we will verify the validity of your patent/utility model rights.
Necessity of Search
- When filing a claim against a competitor regarding a patent right infringement, the patent right in question must be valid. We will conduct a validity search in advance.
- For utility models, as a substantive examination is not conducted, there is a considerable obligation to be cautious with enforcement. Therefore, in addition to the JPO decision, it is beneficial to have a patent attorney firm conduct a right validity search.
Invalid data/Search of public intellectual property data
We will conduct data research to invalidate patent rights/utility model rights that pose an obstacle to commercialization.
Usage/Scope
- Obtain documentation (patent/non-patent literature) in advance of your product launch in order to invalidate problematic patent rights.
- Collect invalidity documentation/public intellectual property documentation as a countermeasure after receiving a warning letter from a competitor, or after having an infringement lawsuit brought against you.
Freedom to Operate Search(FTO search)
We will research whether the product you plan to put on the market infringes competitors’ patent/utility model rights.
This service is useful to:
- Assess the associated intellectual property risks of putting a product on the market and determining how much freedom you have to execute your business plans.
- Determine whether or not it is possible to freely implement an invention for which there is a possibility that the related patent/utility model right has expired or has been invalidated.
Search outline
Expert Opinion on Infringement
In order to determine whether direct or indirect infringement of a patent/utility model right has occurred or not, we will produce an expert opinion upon examining the applicability of the doctrine of equivalents.
Usage/Scope
Claiming non-infringement
- Expert opinions can be used to claim non-infringement after receiving a warning letter regarding patent/utility model right infringement
- Conflict resolution can be attempted by submitting an expert opinion to the other party
Claiming infringement of your patent/utility model rights
- It is useful to conduct an expert opinion prior to sending a warning letter to a competitor claiming that your patent rights have been infringed.
- If a substantive examination of a utility model right has not been conducted, an expert opinion can be used as evidence to demonstrate that due caution has been exercised regarding enforcement.
Examination of the course of research and development
We have several strategies to win the technical development race, e.g., to pioneer development of a new technology, to discover unmet needs and develop proprietary technology, to aggressively move into fields that other companies have not expressed interest in, and to enter into areas of a field that have been poorly covered by other companies. Patent mapping is highly effective for determining which one of these patent strategies you should select in deciding the course of research and development.
Understanding and predicting the technological trends of competitors
Patent mapping is highly effective for understanding and predicting the technological trends of your competitors, such as in what fields they are actively doing research and development, what fields they will enter, the extent of their technological expansion, the level of your company's technology in comparison to the competition, and whether there is room for a new entrant into the market.
Confirmation of your patent blanket
Patent mapping is highly effective for confirming your patent blanket, such as whether enough of a patent blanket has been established to protect your business from competitors entering the market and imitating your products, whether there are any weak technological areas in your company, what your strong points are in the case of enforcement, or whether a correction of the course of research and development is necessary.
Analysis of technological trends in a particular field
Patent mapping is highly effective for analyzing technological trends in a particular field, such as what the current situation of research and development in a particular field is, which patents proved to be significant turning points, if there are patents that require caution when enforced, who the best partner is for co-development, and for acquiring a systematic understanding of the technology.
OSAKA
