The APA now offers two new services to increase the quality of applications entering Japanese national phase: a "Prior patent search service" and a "Voluntary amendment service". The "Prior patent search service" aims for a strategic registration by searching Japanese patent literature and the "Voluntary amendment service" reduces office actions issued because of violation of the formal requirements for claims and description and thereby increases the chance for registration. If you would like to request one of the services our fees will be USD 300. For both services we charge USD 500.
Prior patent search
When filing a foreign application in Japan we recommend conducting a search of Japanese patent and utility model publications. In cooperation with a research firm we prepare a search report and additional comments from a Japanese attorney for our clients. After having filed several foreign applications we realized that a positive evaluation by the ISA and IPEA or already granted patents in other countries cannot necessarily be applied in Japan. We think the reason is that foreign patent offices do not necessarily perform a sufficient search of Japanese patent literature. Furthermore due to the strict examination policy regarding the unity of the invention it becomes important to delete claims that do not possess special technical features (STF) before requesting examination and to line up the claims according to their STF. By usage of our prior art search service cost and time for responding to office actions can be decreased and the application can be adjusted to the strict examination standard, offering a lot of merits to our clients. Of course it is also possible to request this service before filing, so that you can first confirm the patentability.
We offer to file amendments after submission of the Japanese translation in order to adjust claims and specifications to the JPO requirements. When entering into Japanese national phase with a PCT application a literal translation into Japanese is required, nevertheless the clarity of the invention is judged very strictly. (Article 36 of Japanese patent law.) Even if a patent has been granted in another country, just because a component of the invention is slightly named differently or because of usage of abstract words like "about", "such as", "high" or "certain" an office action pointing these out could be issued. From the client's point of view this might look like as if the Japanese translation was bad or that they made a mistake in choosing their Japanese agent, leading to complications. The APA knows how to translate applications in order to avoid office actions. However, as this problem cannot be solved completely by adjusting the translation, we offer to file voluntary amendments to delete or change terms in the claims that might be designated as unclear.