The Patent Groups work to secure patent rights for our clients through effective patent prosecution and enforcement. The Patent Groups also prepare invalidity opinions, non-infringement opinions, and patentability opinions, and lodge reexamination requests with the JPO. And, we have participated in numerous invalidity proceedings in IP high court and patent infringement proceedings in district courts around Japan. The Patent Groups’ attorneys are accessible and eager to work closely with inventors and/or clients to satisfy their intellectual property needs. The Patent Groups also provide foreign clients with appropriate advice and services for Japanese patent practices.
1st Patent Group (Chemical)
2nd Patent Group (Machinery, Electric and Electronics)
Features of Patent Groups
Experienced patent attorneys and engineers:
Patent Groups’ staff includes experienced (skilled) patent attorneys who draw from a broad range of technical experiences in academics and industry to assist their clients with various IP matters. These attorneys are divided into well-defined practice groups according to technology and legal specialty, and provide suitable IP services to clients.
Lightening the burden imposed on inventors for new applications:
The Patent Groups conduct our initial meetings with inventors in an efficient manner that is as little a burden as possible on the inventors, while still enabling our attorneys and engineers to develop a full understanding of the invention. As a result, more efficient and effective prosecution of patent applications is possible. At Sun Group, professionalism is an important principle in all our services. Therefore, patent attorneys, rather than technical specialists, are responsible for all drafting patent specifications, opposition procedures, nullification procedures, and other legal matters handled by our firm.
Experience in patent disputes and patent litigation:
The Patent Groups have represented clients in more than one hundred IP-related litigation proceedings. This is a remarkable number compared with those of the other firms in Japan. We have also represented clients in several hundred non-litigious IP disputes.
Our Design Group has one of Japan’s premier track records in handling design protection as a mandatory.
Characteristics of design protection
The fact that the shapes of objects can be protected as design rights still does not seem to be as well understood as the protection of inventions as patents or protection of brands as trademarks. However, almost all tangible articles on the market, and even certain intangible images, can be protected as design rights, and moreover, not only the entirety of the shape of a design can be protected, but part of it can be protected as well.
In fact, the designs of commercial products are so widely registered that it is simply surprising what trivial shapes are entitled to receive protection. At the same time, many corporations have protection strategies in place to acquire design rights. Particularly, recent years have seen an increase in design applications in the areas of communication equipment, machinery, and imagery.
Moreover, the duration of a design right has been extended to 20 years starting with the date a design is registered for applications filed on or after April 1, 2007. In addition, although it is difficult to acquire utility patents for many products, their shapes are nonetheless entitled to protection of a design right. As such, a relatively easily enforceable design right, with regard to commercial products, is now growing in importance.
Features of the Design Group
The purpose of the Design Group is to create variation maps through direct discussions with designers from corporations and other related parties and to develop application strategies before the actual application processes begins, with the aim of accurately identifying the essence of individual designs to protect them and so prevent anyone from copying them. Our Design Group is the only department in Japan that specializes in pre-application strategies, and has specialized patent attorneys who directly provide our clients with their services.
This group has Japan’s premier track records in terms of the numbers of applications and litigation cases, and is able to help you with the planning of strategy for all kinds of products and the acquisition of design rights.
One of the most important elements of design protection is the accuracy of judgments of similarity, and our many years of experience and proven results have won us an excellent reputation amongst corporations in this area. In fact, we receive many requests for analyses and the handling of litigation from corporations. We also file design applications in foreign countries, and are knowledgeable regarding the conditions in different countries. We have an excellent track record of handling applications in the United States, Europe, and emerging countries such as China.
As regards cases that are of particular importance to clients, we have a system for highly effective appeals that allows our patent attorneys in the Design Group to have face-to-face meetings with examiners and appeal examiners of the JPO.
The Trademark Group, which consists of patent attorneys specializing in trademarks, offers high quality services that take advantage of their wealth of knowledge and skills. We provide optimal branding strategies to meet each client’s needs, as well as comprehensive branding support, from pre-application searches, through the acquisition of rights, to implementation of the rights.
Our patent attorneys are well-known for making sophisticated and accurate opinions about similarities, the most important element of trademark protection, while taking into account the realities of the relevant transactions, and have an excellent reputation with clients.
Given that infringements of the rights of others must be avoided, it is essential to conduct searches before adopting a trademark to find whether a pending trademark application and registration, which is similar or identical to our client’s trademark, exists. Our patent attorneys specializing in trademarks accurately judge the registration feasibility and safety with regard to trademarks which are planned to be used, as well as providing advanced guidance as to potential risks associated with use of the trademark in questions and the appropriateness of whether or not to file an application.
Application for trademark
Our patent attorneys directly conduct careful and detailed interviews with clients about the background leading to the adoption of a trademarks, as well as figuring out in what areas of business the trademarks are planned to be used, and do their utmost to help clients acquire effective trademarks that are sure to contribute to the success of their business by selecting appropriate forms of the trademarks and appropriate goods or services that suit respective clients, and filing applications for trademark accordingly.
We also provide swift and reliable services in other aspects of trademark application, such as responding to official actions and handling the processes involved in court cases seeking to overturn examiners’ decisions to refuse a trademark application.
Our patent attorneys also have rich experience with drafting formal or informal infringement opinions, responding flexibly and carefully to issues regarding, requests to customs for the import of imitation products to be suspended, and the Unfair Competition Prevention Act.
The International Group supports both domestic and foreign clients who wish to secure utility patent, design, or trademark rights in foreign countries. This group is responsible for drafting patent applications, design and trademark applications in various languages, and in a manner that is tailored towards the legal writing practices of each different country. This group interacts with our associate firms in different countries in order to stay informed of IP developments abroad.
This group has special sections which are responsible for filing PCT international patent applications and international trademark applications under the Madrid Protocol, and taking the necessary steps before the International Bureau of the WIPO. In order to prosecute an application in compliance with each law, our special staff members constantly follow the revisions of the laws, regulations, rules, etc. to make our systems adapt to such revisions.
The International Group is also characterized by its well-established docketing system, enabling the firm to realize prosecutions of applications worldwide in an efficient and secure manner.
Support in China and other Asian countries
Also, in response to growing demand from clients, the International Group provides legal support to clients which encounter various IP-related issues in China and other Asian countries, in cooperation with local firms in those countries.
English-to-Japanese and Japanese-to-English Translation
Well trained in-house translators work in the International Group to provide high-quality translations. The translations are triple-checked for accuracy in close cooperation with our patent attorneys and engineers of the Patent Groups.
Patent Legal Group
The Patent Legal group is responsible for enforcing the intellectual property rights of our clients. Specifically, this Group drafts expert testimonies, represents our clients in IP-related disputes, negotiations and litigation cases, and other IP-related legal matters. The Patent Legal Group at Fujimoto & Partner is well known for having effectively litigated more than one hundred cases in cooperation with the general lawyers (bengoshi) affiliated with our firm.