How we handle specific patent application transferred to us?

Recent specific Japanese patent application transferred to us:

We usually post blogs on Japanese law revisions, practice tips in Japan, statistical data, etc.  However, today, we would like to introduce our routine work on a recent specific case for a change.

Our typical work is directed to patent and trademark prosecution before the Japan Patent Office, including PCT national phase entry filing, translation from English into Japanese, response to Office Action, Appeal, and registration

Meanwhile, we are sometimes asked by foreign associates to provide second opinions on cases, regarding which they are not satisfied with the current Japanese representatives’ legal advice.

We would like to show you how we usually deal with such a request derived from a recent specific case.

 

[Day 0]

  • We received an email from a company in EP (“the client”) asking about an outstanding Office Action issued against their Japanese patent application. The application was handled by one of the biggest IP firms in Japan (“the previous firm”). It appeared that the previous firm told them that there were difficulties in arguing against the Examiner’s rejection.

[Day 1]

  • Within one day, we briefly reviewed the materials and replied to their questions, including conflict check, estimates, and Power of Attorney form. We felt that there would be a possibility of successfully overcoming the rejection by amending some claims.

[Day 31]

  • One month later, we received an original copy of the Power of Attorney and discussed the matter with the client.

[Day 45]

  • We received instructions from the client to initiate the work. We also received necessary materials, including documents already filed before the JPO, correspondence between the client and the previous firm, etc.

[Day 50]

  • We reviewed the file history, received documents, and outstanding Office Action, and conducted detailed analysis. Then, we provided the client with an English translation of the Office Action and our detailed comments and proposals.

[Day 51]

  • We contacted the previous firm and completed the transfer of the case to us. We usually absorb the expenses related to the transfer proceedings.
  • Further, in accordance with the client’s instructions, we filed a request for a first two-month extension of the term.

[Day 135]

  • We received the client’s instructions in agreement with our proposals, and we prepared and filed a response including Amendment and Argument on the same date.
  • We usually send our report on the filing along with copies of the documents as filed, and an English translation of the amended set of claims if necessary.

[Day 145]

  • We received a Decision to Grant from the JPO, which was unexpectedly early.
  • We reported on the good news, and also, asked the client if they wish to file a divisional application, since it was the last chance to do so.

[Day 150]

  • We paid the first three annuities and the application was granted as a patent.

 

Summary:

I think that there are some cases for which second opinions are very helpful. Even if the current attorney has a negative opinion, the other attorney might be able to find a successful solution. In particular, although this is just my personal opinion, if the case is represented by a large firm, the actual handling attorney might be an inexperienced associate, and in such a case, I think it advisable to find and ask a competent attorney to conduct a second opinion.

At our firm, we have prided ourselves in high-quality services, but in addition to that, each of the members of our firm, not only the attorneys but also the administrative staff, is always conscious of being highly responsive. Hence, what we would like to emphasize regarding the above specific case is that we spent only 6 days at our end during the prosecution. We would like to give our clients more time to consider how they wish to proceed with their case.

We hope the above information will be of some help to you when you consider filing and prosecuting patent application in Japan.

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