When preparing a patent application, what data must
A patent application should include the following
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.
|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.
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.
What information do you need to be provided with
when carrying out a trademark investigation?
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
trademark (details of lettering, a
LOGO mark, and so on.)
|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.
(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".
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".
Can a patent application be carried out after sale
or advertisement of products that are a subject
of the invention?
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
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
Can a company's full name (trade name) be registered
as a trademark?
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.
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
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.
Is there any such thing as a so-called "International
Patent" which provides intellectual property
rights to a holder?
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)
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.
feel free to contact us with any questions that
you may have by using the e-mail of which mail address
Your Name, Company Name, Postal Adrress and E-mail address
requested as well as questions.