Patent Prosecution Flow

Patent Prosecution Flow

Before filing an application

A newly conceived product or idea is formulated into a patent application document to be filed before Japan Patent Office.
The document includes an “application request”, “claims”, “description”, and “drawing (if necessary)”, and “abstract”.

The filed patent application is examined upon request of substantive examination within a 3 year-period from the filing date to determine whether it is patented or not.
In principle, the examination is commenced in the order of the date of examination request.
Early examination can be requested, if you so wish.

Failure of timely requesting the examination will result in the abandonment of the application.

Our Approach

We will offer you professional assistance to mature your idea into a patentable invention.
Through consultation, we can suggest an optimum way of successfully developing the invention in consideration of various aspects around the idea.

A valuable invention may be hidden behind technical achievements you might think obvious. We will assist you to dig out such an invention. Your inventive idea should be filed first to protect your inventive activity. If an identical or similar idea is filed by another prior to your filing, you are jeopardized to lose your own patent right and are even worse inhibited from making, selling, and using the related technology in the market.

For instance, we could formulate the description only with oral discussion with you. Although you may be required to supplement materials or data supporting the invention depending on complexity of a case, you are relatively free from bothering to draft the description, and you can focus your endeavor on your normal activities including research and development.

After filing an application

In consequence of the examination request, a first office action is issued within one or two years.
The first office action is a notice of allowance or a communication of rejecting the application.

1. Upon receiving the rejection

Upon receiving the rejection, a response could be filed within 60 days from the date of issuing the rejection to make an argument against the rejection with or without amendment of the application.
It is true that the first office action is more or less negative or rejecting the application. However, you do not necessarily accept the rejection at an early stage and may still have a good chance of bringing the application into condition of allowance with due consideration of reasons for the rejection.
Even if the rejection is maintained and finally refused, you may still appeal for reconsideration of the rejection by arguing that Examiner’s rejection is not justified.

In the appeal proceedings, a panel of examiners investigates the appealed case intensively and is expected to give reasonable decision.
Further, when the decision is negative, we may file a suit against the decision before the Intellectual Property High Court for cancellation of the decision.

Our Approach

Upon receiving an office action, we will analyze it and send a report to you with our analysis for your easy consideration.
Our analysis includes suggestion how to respond to the office action, in order to minimize your time and cost.

2. After grant of application

Registration of patent is completed by payment of registration fee within 30 days from a date of issuing the grant of application. Patent right will be maintained with payment of annual fees.

Our Approach

A divisional application can be filed even after the grant of the application.
Depending on cases, we could give you a proposal for a possibility of such divisional application, as you could obtain a patent protection, by the divisional application, of another subject matter not covered by the granted application.
A final chance of filing a divisional application is allowed within a time period from the grant of the application to the registration.
Especially, in a case that the application is granted without receiving an office action, you have to be reminded of that a divisional application can be filed first and only within this time period, and may consider filing the divisional application.

In addition, we assure you to give our relevant advice how to use a newly established opposition procedure.