Frequently Asked Questions

Q: When preparing a patent application, what data must an inventor/applicant include? A: A patent application should include the following data. (a) A brief description of the content, object and effect of the invention relative to the conventional art; along with background information on any closely relevant prior art(s). This information should be provided by citing documentation details, such as a title of a prior art reference, a date of publication of a prior art patent, and other appropriate disclosed information. A description of the technical problem to be solved by the invention should also be provided along with detailed working example(s) of the invention. (b) Drawings and/or experimental data (c) If the application claims priority under a treaty right, the following information is required to be submitted in place of the information itemized in (a) and (b) above: (1) The date and number of the application on the basis of which a Priority Right is claimed, and the name of the country in which the application was first filed. (2) A copy of the claims, original specification detailing the invention, and any figures and description of figures as originally filed. (3) The name and address of the inventor and the applicant as stated in the originally filed application. (4) An application claiming priority must be filed, Via the Paris Convention route: Within twelve (12) months from the filing date of the original application in the country abroad. Via the Patent Cooperation Treaty (PCT) route: Within thirty (30) months from the filing date of the original application in the country abroad. (5) An English version of the claims, specification, description of the invention and drawings as originally filed are acceptable for filing to maintain a priority right; but a Japanese translation of the application is required to be filed subsequent to the English language filing. Q: What information do you need to be provided with when carrying out a trademark investigation? A: If you request us to undertake filing of a trademark application or to research the feasibility of obtaining a particular trademark registration in Japan, we would ask you to provide us with information as follows: (a) Proposed trademark (details of lettering, a LOGO mark, and so on.) (b) A description of the goods and/or services that are to bear the trademark in Japan. In this respect, we would ask that you provide us with a detailed and concrete description of any such goods and / or services. For example, (1) Goods: A description of ﾒclothingﾓ would not be sufficient for us to effectively proceed. A more suitable description of such goods could be, "shirts", "suits" or "jackets". (2) Services: Similarly, a broad description of "Rental business" would not be sufficient. A more suitable description of a service(s) would again be more specific and concrete, such as, "rental of CDs", "rental of clothes" or "rental of books". Q: Can a patent application be carried out after sale or advertisement of products that are a subject of the invention? A: While the desire to obtain some form of intellectual property coverage for a product which is achieving good sales, or has shown the potential in trial to achieve good sales is common, once sale has commenced of a product (invention) which is to be a subject of a patent application the novelty of that invention will have been irretrievably lost. It is therefore critical that potential applicants make timely enquiries about application for patent before any act of disclosure takes place. Such disclosure could include, for example, sale of a product; offer of sale of a product; advertisement of a product; and presentation of a product for academic or other professional purposes. Q: Can a company's full name (trade name) be registered as a trademark? A: A company's full name (trade name) may be registered as a trademark. That is to say, even though desired trademark may consist of a company name (trade name), the name may be registrable as a trademark if it is able to clearly distinguish the goods or services of the party using that name. When an application is filed for such a name, however, it is necessary to state in detail, and concretely, all goods and/or services for which the name (trademark) is to be used, and designating each class within which the goods and/or services fall. Q: If a patent is registered in Japan, and a third party manufactures and/or sells products of the invention in the U.S., is it possible for the patentee to take action on the ground of infringement against that party? A: No, this is not possible. There is no recourse to litigation in, for example, the U.S. on the ground of infringement of a Japanese patent. Such action can only be taken against an infringer in Japan. Q: Is there any such thing as a so-called "International Patent" which provides intellectual property rights to a holder? A: Again, the answer is negative. No such patent exists. In other words, if an applicant wishes to acquire protection for an invention in, for example, each of Japan, the U.S. and the U.K., it will be necessary to obtain a separate patent in each country for the invention; this can generally be achieved most effectively via the Patent Cooperation Treaty (PCT) route. Any patent right granted in any of those respective countries (in this case Japan, the U.S., and the U.K.) exists as an independent patent, with all attendant rights and limitations that may be particular to that country, such as nullification, continuation and so on.