Intellectual Property Division
Abe, Ikubo & Katayama set up Intellectual Property Division in the year 2000 to strengthen our intellectual property practice in this area. Intellectual Property Division has rapidly developed.
5 Strengths
The Intellectual Property Division
Strength 1
We have pursued “Best Practice” in the intellectual property field.
Intellectual Property Strategy has increased its importance in the overall corporate business strategy. Yet, intellectual property is field that requires the high level of legal and technical expertise. We have pursued “Best Practice” in the sense that we make appropriate and speedy responses to all requests from our clients in relation to their legal problem in the area of intellectual property.
Strength 2
Our patent attorneys have a high level of technical knowledge in the field of advanced technology.
Practice in intellectual property area requires not only the knowledge of law but also the diverse and highly technical knowledge of advanced technology. Our patent attorneys have strong background of knowledge in various fields of technology. We believe that we are well equipped to provide best service in the field of advanced technology with such patent attorneys who probably have a much deeper knowledge than those in most other firms.
Abe, Ikubo & Katayama particularly focuses on advanced technologies such as life science (medicine, biotechnology etc.) and nanotechnology, and most of our patent attorneys are strong in these fields. In fact, majority of our patent attorneys are specialized in life sciences.
Strength 3
Former Patent Office Examiner, Appeal Examiner and Judicial Research Official will serve you.
To provide clients with the best advice on their intellectual property strategy, it is important to understand decision-making trends of judges and thinking patterns of examiners. We have been welcoming personnel who used to be an examiner or appeal examiner at the Japan Patent Office or a judicial research official in the field of intellectual property at the Tokyo District Court and the Intellectual Property High Court. With their knowledge and expertise, we can foresee the possible outcomes of examinations, appeals against examinations and appeals to the court, and take timely and appropriate actions to deal with them.
Strength 4
Our patent attorneys are familiar with foreign patent law systems.
Where business and technology are borderless, so is the area of intellectual property rights. Many of our patent attorneys have studied or been trained at graduate schools, companies, and research institutions in Europe or North America. We provide the best suitable services in cross border matters by applying our actual and practical knowledge, especially practice experiences in the U.S. law firms or corporations.
Abe, Ikubo & Katayama also closely liaises with numerous firms that are specialized in IP in Europe, North America, China, South Korea and other countries. When clients need advice on their strategy for overseas litigation or patent and trademark applications, we can provide the best strategy for them by closely working with the most suitable overseas firms for the case.
Strength 5
One-stop service for intellectual property from acquisition to enforcement of intellectual property rights.
With their own highly technical knowledge, our patent attorneys can easily communicate with inventors in corporations. By having discussions and working with those inventors, we can help the corporations to prepare plans for inventions in the corporate research facilities and the best patent strategy for them.
Also, since all of our patent attorneys have experience in patent litigation and are familiar with potential issues in litigations, we are confident in drafting specifications and prosecuting patent applications by using the experience and knowledge of past litigations. Once it becomes actual dispute, our patent attorneys work closely with colleague attorneys at law and the team makes utmost effort to bring the best results for our clients.
In addition to licensing strategy and enforcement of trademark right, Abe, Ikubo & Katayama provides all aspect of legal services on trademark, such as filing trademark applications with the Japan Patent Office and prosecuting the applications, nullification or invalidation proceeding against trademark registration.
Process Of
Application And Prosecution
Flow 1
From Drafting Specifications to Applications to the Patent Office.
The process of granting patent rights starts with the application to the Patent Office. In making an application, both the "specification" that discloses the details of the invention and the "scope of patent claim" that determines the scope of patent rights in accordance with the rules set forth in the patent law and its enforcement regulations, are essential documents. The strength of the scope of the patent rights would entirely depend on the quality of the documentation. Drafting such documentation may seem plain task in comparison with dealing with litigious matters. However, drafting of application can be significant task.
Our staff at the Intellectual Property Division first understand what our clients want and draft specification in consideration of the value and purpose of the application. Particularly in drafting the "scope of patent claims" that will define the future scope of rights, we would look at the invention from multi-angles so as to obtain the widest possible scope of rights. Also, since disclosure of invention is followed by the granting of patent rights, and since it is not permitted to add new matters of the same invention after the grant of patent rights, we take careful consideration to the disclosure of the details of the invention in the "specification".
Flow 2
Prosecution of application and Response to the Patent Office
The Patent Office examines the content of an application and notifies the result to the applicant. In some cases, a patent may be granted without any changes to the original specification. In many cases, however, a "Notice of Reasons for Rejection" is issued and the applicant must submit their opinion against or accept amendment to the application in that regard.
To be successful in this stage, making right decision of either drafting a convincing and logical opinion so as to have the examiner withdraw the reason for refusal, or making either decision to reduce the scope of rights or to make a separate application, is significantly important. If the applicant does not respond to the examiner timely and effectively, the applicant may run the risk of the reduction of the scope which would otherwise not have been necessary or even the risk of the rejection of grant of patent rights itself which could otherwise have been avoided.
Our patent attorneys in the Intellectual Property Division would make utmost effort to obtain patent rights with the widest possible scope by providing appropriate responses to the examiner, based on their ample experience in the relevant fields.
Also, the laws and the standard of examination that govern the granting of patent rights are changing constantly in order to respond to the demand of times. The applicant is forced to figure out whether or not the latest amendment is applicable to their particular application in particular year. We always up-date ourselves to be able to cope with such a problem by sharing information at our regular study meetings held in the Intellectual Property Division.