Let’s SKIP the complicated patent prosecution of JPO in 2012!

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Happy New Year!

We will support your IP Strategy in Japan.  Let's SKIP the complicated patent prosecution of JPO in 2012!

SKIP was founded in October 2008. SKIP is an agency mainly engaged in legal affairs related to intellectual property rights (IPR) in Japan.

At present, SKIP mainly provides services as acting applicant for customers’ inventions, utility models, designs and trademarks.

Apart from that, SKIP also provides services related to intellectual property rights such as tort
identification and intellectual property (IP) litigation on customer request, thereby supporting the customer extensively from the aspect of intellectual property strategy.

 

Protect Your Patent Right in Japan at a 20-40% Lower Discount

For Example, our estimation of cost for such filing including translation from English is as follows.
*********************************************
The details of the application are the following :
Technical field : Data center building
Description : 14 pages of 32 lines each
Claims : 20 (4 pages)
Number of words : 7,000
Drawings: 2 pages with no text
*********************************************
Official Fee JPY 15,000-

Professional Fee
Basic Charge JPY 108,000-
Claiming Priority JPY 8,400-

Translation Fee JPY 175,000- (from English into Japanese)
Our Translation Fee (discounted) is as follows
English to Japanese, per 100 English words JPY 2,500 -
 

Total JPY 306,400-

Please be noted that our Professional Fees are flat rate (not rate by hour).

No Fax Charge!

No Fedex or DHL Charge!
No Copy Charge!
No Telephone Charge!

No hidden cost! No additional cost!

 

SKIP WORK-FLOW

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SKIP WORK-FLOW
We want to give an explanation to our streamlined work-flow named as "SKIP WORK-FLOW" which will "skip" sluggish process of patent prosecution procedure under the Japan Patent Practice.  

For example, our filing reports or OA reports are information-intensive and convenient for US Patent Attorneys (and clients).  Please review an Example of our OA reports as follows.

 

We guarantee ease of use and low cost of our filing reports or OA reports (with our comments), 
since all the information involved in the patent prosecution procedure is included in our report (in one PDF format).

In our format, there are hyperlinks which links Examiner's comments and the cited figures or descriptions of Citations.  Therefore, you do not need to search the the cited figures or descriptions of Citations when you review our OA reports.  Furthermore, there are other additional distinctive inventions on your usability in our OA reports.

We will review the US and EP cases before drafting our comments in order to develop an integrated international patent prosecution strategy.  That is, we will study the US and EP file history, and benefit from US and EP examiners' (and attorneys') viewpoints.  It would save the cost of our professional fees dramatically and convenient for your review.

In addition, please be noted that you can have a Video Conference with us via SKYPE after reviewing our OA reports.  Therefore, if you have any questions about our OA reports, you can ask us some questions interactively.

We believe that your will be surprised at our innovative  "SKIP WORK-FLOW", when we make a presentation via SKYPE.

Our "SKIP WORK-FLOW" can save your client's IP budget at a 20-40% Discount!

No Fax Charge!
No Fedex or DHL Charge!
No Copy Charge!
No Telephone Charge!

No hidden cost! No additional cost!
We only charge our Professional Fees (Average: 100,000JPY-150,000JPY at 1 OA response) , Translation Fees and Official Fees.

 

I will come to Washington DC on October 31st – November 4th, 2011.

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This is Akihiko Okuno, a Managing Partner of SK IP Law Firm.

Akihiko Okuno
http://www.skiplaw.jp/usa/staff/staff_okuno_a.html

We are handling patent applications of a famous US pharmaceutical company (located in Philadelphia, PA) in Japan.

I will make a speech in the following seminar on  November 4th, 2011  
http://smbiplaw.com/seminar.cfm

For this seminar and business meeting with our client (in Philadelphia, PA), I will come to Washington D.C. Metro Area or Maryland Baltimore Area or Greater Philadelphia Area during the week of October 31-November 4.

Therefore, if it is not troubling for your firm, I want to visit your firm and have a business meeting with patent attorneys of your firm.

We Protect Your Patent Rights in Japan at a 20-40% Discount!
http://japanpatent.jp/3-go-to-skip-blog

Sincerely yours,
Akihiko OKUNO 2011/09/15
——————————————————————————
We can transform your Scientific Knowledge into Intellectual Property
 
Akihiko OKUNO (Managing Partner, Patent Attorney (Capable of Representing Patent Infringement Litigation))
 
SK IP Law Firm
Suite 213, Daikanyama BLESS, 5-21, Sarugaku-cho,
Shibuya-ku, Tokyo, Zip 150-0033, Japan
Map: http://www.skiplaw.jp/data/map-e.pdf
 
Tel +81-3-6416-1620 (Head Office #1)
Fax +81-3-6893-1412 (Head Office #1)
Business Hour 10:00-18:00 of Weekday (Japanese Time)
URL: www.skiplaw.jp
Blog: http://www.japanpatent.jp/
e-mail (Head Office): info@skiplaw.jp
e-mail (direct): aokuno@skiplaw.jp
Skype skiplaw1
——————————————————————————

 

 

Conference on Breathing Additional Life into the Life Sciences – Reaching the Next Milestone

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ate: Friday, November 4, 2011          Time: 7:30 AM to 3:00 PM
Purpose of Conference

 

The future for life science companies is extremely promising, full of enormous opportunities. However, life science companies face ever increasing challenges, from finding seed money, finding venture or angel investor funding, dealing with universities or the Federal Govern­ment, protecting their intellectual property and resolving IP related disputes, determining specific technologies needed for growth or seeking potential licensees, to mak­ing financial decisions regarding various courses of ac­tion.

 

This conference is designed for biotechnology/pharmaceutical company decision makers in enabling them to reach the next milestone, no matter what stage their company is in presently. The conference deals with addressing attracting funding, making technology based decisions, and protecting their intellectual property, to best capitalize on their efforts. University technology transfer attorneys, government attorneys and others stand to benefit from attending as well.

Our speakers come from a vast array of perspectives and experiences, spanning in-house counsel, a certified licensing professional, a publisher of biotechnology magazine, a technology transfer and commercialization professional, a Director of Technology Transfer Officer of a division of NIH, a financial consultant and intellectual property professionals.

 

Speakers & Panelists

Keynote Speaker: Larry R. Miller, Ph.D. – Director, Global & Project Communications for FHI 360 and President/Consultant ISBC Solutions, LLC; former Director Business Operations, Global Drug Discovery, GlaxoSmithKline) 
Stephen Auvil, Vice President – Technology Transfer & Commercialization, Maryland Technology Development Corporation 
Akihiko Okuno, Partner, SK IP Law Firm, Japan 
John Weatherspoon, Ph.D., Of Counsel, Stein McEwen LLP; General Counsel, Gene Facelift LLC 
Scott Williams, AVA, CLP, Director, Invotex Group 
Yali Friedman, Ph.D., Chief Editor and Publsher, Journal of Commercial Biotechnology 
Ginette Serrero, Ph.D., Co-Founder and CEO of A&G Pharmaceutical, Inc. 
Claire T. Driscoll, Director, Technology Transfer Office, National Human Genome Research Institute (NHGRI), NIH 
Dennis Clarke, Of Counsel, Stein McEwen, LLP 
Joseph Zito, Of Counsel, Stein McEwen, LLP

Seminar Agenda

  7:30 AM – on Registration
  8:00 AM – 9:00 AM Continental Breakfast
  9:00 AM – 9:30 AM Evergreening Strategies to Expand Patent Protection of a Product 
(John Weatherspoon, Ph.D., Of Counsel, Stein McEwen LLP, Washington, DC)

 

This presentation deals with techniques available to maximize patent protection for biotechnology inventions and the circumstances and situations when such strategies can be utilized
  9:30 AM – 10:00 AM Perils of Patent Exhaustion In Licensing Biotechnology After Quanta 
Problems Associated with First Sales of Biotechnology 
(Dennis Clarke, Of Counsel, Stein McEwen LLP)

 

This presentation discusses Patent Exhaustion in the context of Biotechnology Products in view of an integral US Supreme Court Case
  10:00 AM – 10:30 AM Relevance of Japanese Biotech Market to US Companies 
(Akihiko Okuno, Partner, SK IP Law Firm, Tokyo, Japan)

 

Mr. Okuno, a Japanese patent attorneys, will present the Executive Summary of Japanese Patent Practice in the field of biotech/pharma so that decision makers can understand the benefits and strategies in IP protection and commercializaation in Japan. He will address biotech/pharma trends and directions in Japan, such as commercialization, how US companies might work with or license with Japanese companies, the potential market, and how business gets accomplished in Japan.
  10:30 AM – 10:45 AM Break
  10:45 AM – 12:00 PM How to Reach That Next Milestone for Companies From Different Sized Companies of Different Stages 
(Moderator – Michael Stein, Partner, Stein McEwen, LLP)

 

 

  1. Yali Friedman, Ph.D., thinkBiotech LLC, Washington, DC
  2. Ginette Serrero, Ph.D., A&G Pharmaceutical, Inc., Columbia MD
  3. Claire T. Driscoll, M.S. Biology, M.S. Biotechnology Studies Director, Technology Transfer Office, National Human Genome Research Institute (NHGRI), U.S. National Institutes of Health (NIH))

This lively panel discussion will discuss how companies of different sizes approach the next milestone. The panel members come from an array of positions within the biotechnology community and will respond to questions and inquiries from conference attendees
  12:00 PM – 12:15 PM Networking Time
  12:15 PM – 1:00 PM Lunch (Buffet)
  1:00 PM – 1:30 PM Keynote Speaker: Larry Miller on Presenting Your Products and Services to Large Commercialization Partners 
(Larry R. Miller, Ph.D. –Director, Global and Projects Communications – FHI 360, Alexandria, VA (current), President/Consultant, ISBC Solutions, LLC (current), former Director Business Operations, Global Drug Discovery, GlaxoSmithKline)

 

Most small entrepreneurial organizations, including biotechnology companies, can develop novel technologies or services only up to the point that their early-stage funding will allow. In order to propel these technologies further, companies often seek to license to or collaborate with larger commercial partners, such as pharmaceutical companies. The stage of the discovery, solidness and timeliness of intellectual property requested financial terms and how presentations are made to the potential partner all affect the outcome of the negotiations. Based on the experience gained at GSK, Dr. Miller will discuss parameters and options to consider when approaching large partners.
  1:30 PM – 2:00 PM What to do When Things go Bad – Dealing with Intellectual Property Disputes When They Arise 
(Joseph Zito, Of Counsel, Stein McEwen LLP)

 

Mr. Zito will address how to deal with intellectual property disputes relating to patents in particular from the viewpoints of both the patent holder and the potential infringer. The focus will be in the context of biotechnology/pharma technologies.
  2:00 PM – 2:20 PM Putting Your Best Foot Forward in Raising Funding and Finding Commercialization Partners 
(Scott Williams, Director, Invotex Group, Philadelphia, PA, Washington, DC and Baltimore, MD)

 

This presentation covers: 

  • The traits investors and acquiring companies look for
  • Developing business plans and forecasts
  • Understanding valuation basics
  2:20 PM – 2:40 PM “Early Stage Financing: Sources & Strategies for Biotech Companies in Maryland” 
(Steven Auvil, Vice President – Technology Transfer & Commercialization, Maryland Technology Development Corporation, Columbia, MD (TEDCO))

 

This talk will describe the various funding sources available for early stage biotechnology companies in Maryland including the different motivations of each source. It will also describe why financing strategy is important when planning for a long product development timeline and how companies can take advantage of corporate and university partnering.

Sponsorship Opportunities

The November 2011 – Reaching the Next Milestone Biotech Conference has sponsorships available! Use this opportunity to do more than simply attending the conference, to gain recognition for and awareness of your company.

Platinum Sponsor: $1,500

  • 2 Complimentary Registrations
  • Full page ad in event brochure
  • Prominent signage at the event

Gold Sponsor: $750

  • 1 Complimentary Registration
  • Half page ad in event brochure
  • Prominent signage at the event

Silver Sponsor: $500

  • 1 Complimentary Registration
  • Half page ad in event brochure

Breakfast Sponsor: $500

  • 1 Complimentary Registration
  • Prominent signage at the breakfast

Lunch Sponsor: $600

  • 1 Complimentary Registration
  • Prominent signage at the lunch

Other sponsorship opportunities may be available. To register for a sponsorship, please e-mail bioconf2011@smiplaw.com or call 202-216-9505 ex. 1109, Attn: Michelle Houlihan.

 

How to protect medical device inventions in Japan #2

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Under  the  revised  guidelines,  a  method  for  controlling  the operation of a medical device is not considered to be classified as a “method for treatment of the human body by surgery or therapy or a diagnostic method practised on the human body” as long as it is the function of the medical device that is represented as a method.
 
The method for controlling the operation of the medical device  here  may  include  not  only  a  method  for  controlling the internal operation of the medical device but also a functional  and/or  systematic  operation  of  the  medical  device, such as the moving, opening and/or closing of incising means in accordance with an operating signal, the emitting and/or receiving of radiation, electromagnetic waves, sound waves or the like.
 
Methods  involving  acts  to  be  performed  by  a  medical doctor (for example, acts of a medical doctor to operate a device  in  order  to  provide  medical  treatment)  and/or  the device acting on the human body (for example, the incision and/or  excision  of  a  specific  part  of  a patient  by  the  device)  are  not  considered  to  be  methods  for  controlling  the operation of the medical device.
 
Therefore, for applicants who wish to include acts that may be performed by a medical doctor during the operation of a device  in  claims  directed  to  a  medical device,   we   recommend   drafting   the claims to refer to the acts to be performed in passive form, or by referring to a “predetermined portion” or “predetermined parameters”.
 
For example, the phrases “accepting instructions of a medical doctor using an input unit”, “setting an incision and/or excision unit to a predetermined portion of a patient on the basis  of  said  instructions  by  a  medical  doctor”  or  “setting specific functions of an incision and/or excision unit to predetermined parameters on the basis of said instructions by a medical doctor” do not include acts performed by a medical doctor  to  operate  a  device.
 
By  using  the  passive  form  and expressions such as “predetermined portion” and “predetermined parameters”, it will be possible to obtain broader protection of methods for controlling the operation of the medical  devices,  leading  to  more  efficient  protection  medical device inventions in Japan.
 
The passive form, “predetermined portion” form and “predetermined parameter” form are unfortunately not described in detail  in  the  revised  guidelines,  but  in  meetings  between  the Japanese   Patent   Office   and   Japanese   Patent   Attorneys Association  (JPAA),  these  forms  were  agreed  as  not  including acts to be performed by a medical doctor in operating a device, and therefore considered to be industrially applicable (Mr. Okuno was a member of the guideline revising team at the JPAA). 
 
Under the revised guidelines, the scope of protection available to medical devices has been dramatically broadened in Japan. 
 
This represents a new opportunity for globally minded medical  device  manufacturers  to  make  inroads  in  the  Japanese medical device market, a market worth ¥2.5 trillion per year, by acquiring patents on methods for controlling the operation of medical devices.

 

 

 

How to protect medical device inventions in Japan #1

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I n  Japan,  medical  method  inventions  are  not  patentable, since  such  inventions  are  considered  to  be  incapable  of industrial  application  (Japanese  Patent  Law,  Article  29).
 
The  Japanese  Patent  Office’s  examination  guidelines expressly state that methods for treatment of the human body by surgery or therapy and diagnostic methods practised on the human body are industrially inapplicable inventions.
 
On  the  other  hand,  medical  devices  and  pharmaceuticals are products, and are considered to be industrially applicable. Therefore,  medical  device  inventions  and  pharmaceutical inventions are patentable in Japan.
 
However, a much-debated issue has been whether methods for controlling the operation of medical devices are patentable in Japan. In response, the examination guidelines were revised in 2005, making it clear that methods for controlling  the  operation  of  a  medical device  are  considered  to  be  industrially applicable in certain circumstances.
 
For  example,  the  following  claim  A  is considered  to  be  industrially  applicable under the revised guidelines:
 
Claim A
 
A  method  for  controlling  the  respec-tive parts of an X-ray CT scanner by control  means,  comprising  the  steps of:
generating  X-rays  by  controlling  X-ray  generating  means,  detecting  X-rays passed through the human body by controlling X-ray detecting means, 
reconstructing  the  detected  data and converting the detected data into picture data for display.
 
In this claim, the term “generating X-rays  by  controlling  X-ray  generating means”  is  construed  to  mean  that  the “X-ray  generating  means”  belonging  to the X-ray CT scanner generates X-rays, but not to an extent that the human body is  affected  by  the  X-rays;  thus,  the claimed method is judged not to involve the device acting on the human body. 
 
Furthermore,  the  term  “detecting  X- rays passed through the human body bycontrolling  X-ray  detecting  means”  represents  the  function whereby the “X-ray detecting means” provided to the X-ray CT  scanner  receives  a  signal  (X-rays)  passed  through  the human body. As a result, the claimed method is judged not to include acts to be performed by a medical doctor or involving the device acting on the human body.
 
Therefore, the claimed method is considered to be a method for  controlling  the  operation  of  a  medical  device,  since  the function of the medical device is represented as a method, and the method does not include acts to be performed by a medical  doctor  and/or  the  device  acting  on  the  human  body. 
 
Accordingly, the method is not considered to be a “method for treatment of the human body by surgery or therapy or a diagnostic method practiced on the human body”.
 
On the other hand, the following claim B is not considered to be industrially applicable under the revised guidelines:
 
Claim B
 
A method for controlling the respective parts of an X-ray CT scanner by control means, comprising the steps of: 
exposing the human body to X-rays by controlling X-ray generating  means,  
detecting  x-rays  passed  through  the human  body  by  controlling  X-ray  detecting  means,  and
reconstructing the detected data and converting the detect- ed data into picture data for display.
 
The  difference  between  these  claims  is  that  the  term “generating X-rays” in claim A is changed to “exposing the human  body  to  X-rays”  in  claim  B.  In  addition,  the  term “exposing the human body to X-rays” involves the device acting on the human body; thus, it is not considered to be a  method  for  controlling  the  operation  of  the  medical device.
 
The method in this claim corresponds to a diagnostic method practised on the human body, since it detects the structures or functions of organs in the human body to detect diseases and disorders by exposing the human body to X-rays and detecting the  X-rays  passed  through  the  human  body.  
 
Accordingly,  the claimed method involves a method for treatment of the human body by therapy practised on the human body as part of the invention; thus, it is considered to be a “method for treatment of  the  human  body  by  surgery  or  therapy  or  a  diagnostic method practiced on the human body”.
 
To take another example, the following claim C is considered  to  be  industrially  applicable  under  the  revised guidelines:
 
Claim C
 
A  method  for  controlling  the  operation  of  a  bodily  fluid sampling  device comprising:
a  hollow  piercing  element installed  inside  a  housing,  
a  sample  extracting  tube  communicating  with  the  piercing  element,  
a  sampling  vessel connected with the end of the tube and having a pressure detecting  unit  inside,  and  
a  negative  pressure  generating unit providing a negative pressure on the sampling vessel, 
wherein a suppressing means controlling the operation of the  negative  pressure  generating  means  is  operated  when the pressure detecting means detects a pressure lower than the  predetermined  value  in  the  operation  of  the  negative pressure generating unit.
 
In this claim, the phrase “suppressing means controlling the  operation  of  the  negative  pressure  generating  means  is operated when the pressure detecting means detects a pressure lower than the predetermined value in the operation of the negative pressure generating unit” is construed to mean that  the  “suppressing  means”  provided  to  the  bodily  fluid sampling  device  is  operated  but  not  to  an  extent  that  the volume of the bodily fluid absorbed is changed as a result of the  operation  of  the  suppressing  means,  so  the  claimed method  is  judged  not  to  involve  the  device  acting  on  the human body.
 
Therefore, the claimed method is considered  to  be  a  method  for  controlling the  operation  of  a  medical  device  since the function of the medical device is represented  as  a  method,  and  the  method does not include acts to be performed by a medical doctor and/or the device acting on  the  human  body.  
 
As  a  result,  the method is not considered to be a “method for the treatment of the human body by surgery or
therapy or a diagnostic method practised on the human body.” 
 
On the other hand, the following claim D is not considered to be industrially applicable under the revised guidelines:
 
Claim D
A method for sampling bodily fluid by a bodily fluid sampling  device comprising:
a  hollow  piercing  element installed inside housing, a sample extracting tube communicating  with  the  piercing  element,  and  
an  absorbing means,
wherein the piercing element pierces the vein, and the bodily fluid is absorbed from the piercing element pro-
vided in the vein into the sample extracting tube.
 
In this claim, the term “the piercing element is pierced” is not a step carried out by a means provided on this fluid sampling device but by the action of a medical doctor to obtain a sample of bodily fluid by using this device. (Note: In this case, the method may also be judged to include action on the human body by the piercing element.)
 
In addition, the term “the bodily fluid is absorbed from the piercing  element  arranged  in  the  vein  blood  vessel  into  the sample extracting tube” is construed as involving   the   device   acting   on   the human  body,  as  body  fluid  is  extracted from the human body.
 
The claimed method, therefore, does not correspond to a method for controlling the operation of the medical device.
 
Accordingly,    the    claimed    method includes  a  method  for  diagnosing  the human body as a part of the invention; thus,  the  method  is  considered  to  be  a “method  for  treatment  of  the  human body by surgery or therapy or a diagnostic method practiced on the human body.”

 

 

Please be noted that it is not necessary to submit a POA to JPO, when you file a new patent application with JPO.

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Please be noted that it is not necessary to submit a POA to JPO, when you file a new patent application with JPO.

In general, JPO requires a POA only when the applicant wants to file an appeal.
So, in most cases, a POA is not necessary at all.

The applicant has at least three months for filing a POA.
So, the best practice is not to file a POA now, and file it when filing an appeal.

Please read the following blog post in order to know how to apply for patent
in Japan.

1. Paris Route
http://japanpatent.jp/4-scheme-of-patent-application-with-jpo

2.  PCT Route
http://japanpatent.jp/5-pct-route

 

How to search Japanese Patents in English

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(1) Where can I find English information about Japanese patents?

Information on Japanese patents can be obtained from an English website of the IPDL (Industrial Property Digital Library), the JPO's (Japan Patent Office) free online database.

http://www.ipdl.inpit.go.jp/homepg_e.ipdl

(2) How can I obtain a machine translation of Japanese patent on the basis of some available number(s)?

All you need to do is :

 go to the English website of IPDL,

 click "Patent & Utility Model Gazette DB in the Patent & Utility Model",

 input "kind code" and "Number",

 select "Display Type" and then

 click "Search".

This will lead you to the English PAJ (Patent Abstracts of Japan) of the patent or patent application which you designated.

You can obtain more detailed information by clicking "DETAIL" at the upper left, or information on the legal status by clicking "LEGAL STATUS" at the upper right.
In the "DETAIL" you can obtain a machine translation of claims, detailed description and the like.

(3) How can I obtain an English PAJ (Patent Abstracts of Japan) on the basis of keyword(s)?

All you need to do is :

 go to the English website of IPDL,

 click on "PAJ in the Patent & Utility Model",

 input keyword(s), date of publication of application, IPC etc. and then

 click "Search".

This will lead you to related documents' numbers in the files concerned.

(4) How can I obtain an English PAJ (Patent Abstracts of Japan) on the basis of FI or F-Term?

(Note: FI/F-Term is Search Code designated by the JPO for smoother search.)

All you need to do is :

 go to the English website of IPDL,

 click "Patent Map Guidance in the Patent & Utility Model" and inquire FI or F-Term.

 After obtaining the FI or F-term, click "FI/F-term Search in the Patent & Utility Model" on the top page.

 Input Data Type, F-term, Publication Date etc. and then

 click "Search".

This will lead you to related documents' numbers in the files concerned.

 

Please review the following link of JPAA (above-mentioned information is quoted from JPAA website)

JPAA Web Site
http://www.jpaa.or.jp/english/

 

“Methods of therapy of humans” are not permissible in JP practice.

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In JP practice, "use claim" will be judged as to "method claim" by JPO Examiner.
In addition, "Methods of therapy of humans" are not permissible in JP practice.
This claim is as to "the treatment of epilepsy", so it is regarded as "Methods of therapy of humans", and then will be rejected in the examination stage.
 
However, "agent claim" is permissible in JP practice.
 
Thus, we strongly recommend you to amend the claims to change use claim into "agent claim" to avoid rejection.
 
You may file the amendment anytime before the first Office Action is issued, but it is recommended to file it either now or at the time of filing the request for examination.