PATENT LAW FIRM (JP) - JAPANESE PATENT & TRADEMARK ATTORNEYS - BENRISHI

TIPS ON JAPANESE PATENT FOR FOREIGNERS

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We respond to those who feel uncertain to the Japanese attorneys.

(1) Measures against incorrect translation

Measures against incorrect translation

If application documents include an incorrect translation, not only may the claimed invention be misinterpreted in the examination, but the sufficient amendment may become impossible because of the incorrect translation of sentences which should serve as the ground of an amendment.
If patent application in the first country in the Paris route was prepared in English, in order to prevent above situations, we recommend using the English document application system in which application documents in English are submitted first, then Japanese translations of application documents are submitted. You can correct the incorrect translation within the scope of matters described in the original description in English by filing application documents in English at the time of filing of the application in Japan even if the incorrect translation is found.

(2) Delay of sending Office Action

Delay of sending Office Action

Have you ever failed to secure the enough time to review the Office Action because the Office Action from local attorneys reaches you too late? The responding procedure to the Office Action in the foreign country is consummated by the relay between many people in charge such as persons in charge of the intellectual property at companies, inventors at companies, attorneys in the first country and local attorneys in the second country. So, if the local attorneys are late in sending the Office Action, customer's operation may be affected or customer's intention may not be fully reflected on the written response to the Office Action.
Therefore, we have a policy to send the translation of the Office Action within 1 week of the receipt of the Office Action. Furthermore, if there are English documents corresponding to cited documents presented in the Office Action, we will send to you the list of English documents and the report showing which paragraphs in English documents corresponds to paragraphs mentioned by the Examiner in cited documents. The translation of the Office Action and the report may help you examine the response to the Office Action at early stage after the receipt of the Office Action.
Furthermore, we will send our comment to you quickly after sending of the translation of the Office Action. In our comment, we will review the technical differences concretely and minutely between the claimed invention and the invention written in the reference document, and will propose the persuasive response to overcome the Examiner's rejection and to obtain the most powerful right in accordance with the actual facts of your business.

(3) Review of Examiner's objection

Review of Examiner's indication

Do local attorneys often recommend restriction amendments to the Office Action without fully reviewing the Examiner's objection about whether or not claimed inventions can be patented only by submitting counter-argument? We will review the technical matters in the claims and the description and will propose the persuasive argument presenting adequate evidence so that you can get the patent without restricting claims unnecessarily.

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