Japan & the United States
Washida & Associates assists clients in obtaining patent rights in compliance with Japanese laws and Japan Patent Office rules. As our standard practice we propose various strategies for obtaining strong patent protection during prosecution.
We carefully review each application from our clients to determine whether the application complies with Japanese laws and Japan Patent Office rules. If requested, we can also provide claim review services to construct entirely new claims.
Claim Review Service
We offer a distinctive service which we call “claim review.” In the claim review, we study the content of our clients’ applications in detail and invite our clients to amend their claims as necessary. Some of the claim review cases are introduced below. We invite all our clients to take full advantage of this exceptional service.
EXAMPLE 1: Proposal to address ISR
“Document 1 is cited as a category X document in the ISR.As stated in the ISR, the recitations of the claims in the present invention include a configuration of the document 1.
Therefore, we believe that the JPO will probably issue a Notice of Reason for Rejection based on the document cited in the ISR when a request for examination is filed without any claim amendment.Accordingly, we propose to add an amended claim that clarifies the difference of the present invention from the configuration of the document 1 In addition, we also propose to add a new claim encompassing a matter that is not disclosed in any documents cited in the ISR.
Please review our proposed claim set attached below.”
EXAMPLE 2: Proposal to amend claim wording
“We propose to amend the wordings of the current claims to meet the examination practice in Japan and also to delete some of the restrictive recitations to broaden the scope of the claims. Please review our proposed claim set attached below. This claim set makes the subject of the examination more clarified and helps examiners in Japan to understand the invention more deeply. Accordingly, a more accurate examination becomes possible.”
EXAMPLE 3: Proposal to add new claim set
“In addition to the current system claim, we propose to add an apparatus claim directed to a main device of the system. We also propose to add a claim directed to display of a training screen that is not present in the current claims. Please review our proposed claim set attached below. Under Japanese patent practice, it is permissible to define one invention in a plurality of different claims (Patent Law Section 36(5)). Accordingly, applicants may recite a plurality of independent claims in the same category. Such a claim recitation enables an obtainment of a multifaceted patent that leaves nothing behind.”
We interpret an examiner’s intention in a Notice of Reasons of Rejection and propose effective strategies to overcome a rejection. Based on instructions from the client we prepare a response that fully meets the applicants’ intention.
Contract and Dispute
We provide a wide range of services including rendering opinions, particularly opinions regarding infringement related matters, conduct negotiations, contract drafting and review, and litigation.
We conduct novelty and invalidity searches. As a part of each search service we assign a Japanese patent attorney to guide the patent search specialist conducting the search and prepare a search report based on the search results provided by the patent search specialist.
Asian Countries and Beyond
Washida & Associates has a strong network with firms in Asian countries. All the network member firms provide high quality legal services. They also provide their services at a fixed rate from filing to grant as Washida & Associates does. The same degree of rights can be obtained in Asian countries as the ones obtained in Japan, the United States and Europe. The intellectual property firm network extends to Europe and Oceania as well. For further details, please contact us.
We also have a good relationship with intellectual property firms all over the world. Please consult Washida & Associates regarding intellectual property in any countries.