Intellectual Property Prosecution SERVICES

The Intellectual Property Department of our firm primarily handles matters related to the filing, prosecution, and registration of intellectual property rights.

Main Services

Patent Prosecution (Utility Model Prosecution)

Our patent attorneys, who possess deep expertise in their respective technical fields, draft application documents and provide precise responses to Office Actions. Our goal is to secure the broadest and strongest patent rights possible for our clients.
We are dedicated to understanding our clients’ specific needs, ensuring that every application is drafted with a clear grasp of its strategic value and objectives. Upon request, we also host on-site invention consultation sessions at our clients’ offices, providing expert advice on the patentability of new inventions and strategic guidance on the filing process.
Since our founding, we have maintained a strong focus on the Life Sciences sector (including pharmaceuticals, medical devices, and biotechnology). Our expertise also spans a wide range of other fields, including Chemistry, Electronics, Mechanics, Software, and various other technical industries.

Design Prosecution

In preparing design applications, we meticulously review every detail of the application—including the Article of the Design, Description of the Article, and Description of the Design—as these are critical for the interpretation of the scope of design rights. We ensure that all drawings accurately represent the subject design and are perfectly consistent with one another.
We offer strategic pre-filing consultations as needed to provide multi-faceted protection for our clients’ products. This includes strategic advice on the use of the Partial Design system and the Related Design system.
During prosecution, we employ precise strategies to overcome rejections, such as utilizing the Related Design system or filing written arguments to effectively contest the similarity between the subject design and cited prior art.

Trademark Prosecution and Pre-Filing Searches

We believe that a pre-filing trademark search is an important step for two primary reasons. First, it allows us to evaluate the likelihood of registration before you invest in filing fees. If a search reveals a low probability of success, we can advise on modifying the mark to increase the chances of registration, thereby optimizing your budget. Second, a thorough search helps identify existing third-party registrations early, effectively mitigating the risk of trademark infringement. By these searches, we ensure both cost-efficiency and proactive risk management.
When our clients seek guidance on selecting or refining a trademark, we work closely with them to optimize the representaton of the mark—including fonts, graphics, and color specifications—while balancing strategic objectives with cost considerations. When preparing application documents, we aim to gain a clear understanding of the intended goods and services to ensure the application provides adequate scope for our clients’ needs.
During prosecution, we deliver precise legal arguments regarding the distinctiveness of the mark and its similarity to prior trademarks. We also specialize in drafting strategic amendments to the list of designated goods and services, ensuring rejections are overcome without excessively narrowing the scope of your rights.

Appeals, Invalidity Trials, and Oppositions before the JPO

Our Intellectual Property Department represents clients in various proceedings before the Japan Patent Office (JPO). This includes Appeals against Decisions of Rejection (for patents, designs, and trademarks), Trials for Correction (patents), Trials for Invalidation (patents, designs, and trademarks), Trials for Cancellation (trademarks), and Opposition proceedings for patents and trademarks.
These trials and oppositions are handled by patent attorneys with extensive experience in IP litigation. When necessary, our IP team collaborates closely with the litigators in our Legal Department, ensuring that we provide the strongest possible defense to protect our clients’ interests.

Applications for Patent Term Extension

Our Intellectual Property Department includes patent attorneys who are also registered pharmacists, providing us with a unique and profound understanding of pharmaceutical inventions. We have handled a vast number of patent applications in the pharmaceutical field and possess extensive experience in patent term extension (PTE) applications.

Related Books & Articles