Practice before JPO

SUGIMURA is widely recognized as one of the top law firms for handling procedures before the Japanese Patent Office (JPO). SUGIMURA has significant experience in all areas of practice before the JPO, with particular expertise in the prosecution of patents, trademarks, and designs.

Our attorneys possess significant experience in providing legal advice to international clients concerning IP rights in Japan and often consult on the important differences in Japanese IP law from clients’ domestic IP laws, application and enforcement procedures, and infringement suit representation. Through our multilingual teams at SUGIMURA, our attorneys are able to meet with foreign clients regularly to develop IP strategies that meet the client’s business goals, discuss intricate technical and legal issues, and give tutorials on Japanese IP practice.

Counseling and Opinion Work

SUGIMURA regularly assists our clients on complex rules and regulations of Japanese intellectual property laws and practices. Our professionals stay abreast new trends and regulations that govern the protection of innovations and ideas and regularly meet with clients to discuss the implications of these new trends or regulations for each of our clients. Our attorneys also prepare expert opinions on prior art, patent validity, and infringement for our clients.

Licensing and IP Transactions

Intellectual property is a key business asset. Leveraging those assets through licensing is one way to capitalize on those assets, generate revenue, and gain access to new markets.

Enforcement and Litigation

As the number of corporations expanding their business overseas has increased, the number of patent disputes with international implications has also been growing. Japanese companies are becoming more litigious, and damages awarded to successful defendants in infringement cases are rising. The IP High Court in Japan has been addressing infringement cases more expeditiously than is common elsewhere. The outcome of these cases can be leveraged in negotiations in order to mitigate costs and to reach a settlement agreement. .

SUGIMURA is committed to finding the most effective and efficient method of resolving our clients’ disputes. Our IP litigators have backgrounds in patent prosecution and understand the interplay between technical fields and legal requirements necessary to prove the client’s case. This background, along with years of litigation experience before the IP High Court and the Supreme Court, allow SUGIMURA attorneys to develop and implement the best strategies in IP litigation to resolve the matter in the most effective and efficient way possible.

IP Searches

Intellectual property document searches are indispensable for avoiding potential infringement, monitoring competitors’ activities, and blocking the grant of or invalidating patents. Searches are also useful for monitoring the progress of applications and proceedings of interest to our clients.

At SUGIMURA, we provide expert search services in all intellectual property-related matters, such as:

Broad searches to explore the state of the art in a particular field
Patentability searches to determine the likelihood of obtaining a patent on a particular invention
Infringement searches to determine whether the claims of any patent might be infringed by the manufacture, use or sale of a client’s product
Validity searches to uncover prior art patents that might be cited to support an argument that a particular patent is invalid
The results of these searches are analyzed and opinions are rendered based upon such analysis. Such searches are both domestic and international in scope, and usually include searches for pertinent literature in the field, as well as patents.

IP Due Diligence

Thorough IP due diligence is critical in corporate transaction as it uncovers a holistic view of the value of intangible assets. Investments, financing, mergers, acquisitions, the purchase and sale of assets, and license agreements all involve levels of risk that can be uncovered through IP due diligence. IP due diligence verifies the ownership and existence of intellectual property assets, detects restrictions on intellectual property use, ascertains the validity and strength of intellectual property rights, and evaluates potential intellectual property infringement allowing companies to identify weaknesses, potential liabilities, and potential opportunities within a transaction.

Effective IP due diligence is beneficial for both parties to a deal. Recognizing potential limitations to intellectual property rights can improve a buyer’s negotiating position or keep the buyer from making a costly deal. At the same time, uncovering shortcomings in a company’s own intellectual property rights can provide enough time to find alternative solutions. Moreover, IP due diligence allows companies to see the potential for interplay between their own intellectual property assets and that of other companies. This can help businesses target certain companies for collaboration avoid losing intellectual property assets to a competitor and gain clarity as to the value their intellectual property assets bring to others.

Technical Translation

All Japanese patent, trademark, design, and utility model applications must be translated into Japanese. Accurate translations are essential for effective prosecution and enforcement of intellectual property rights. The quality of translation depends on the legal appropriateness of a translator’s choice of words.

At SUGIMURA, all our translation services are done in-house by our team of highly skilled technical translators. Our technical translators are trained in the technical and legal subject matters in which they practice to fully comprehend the descriptions and word choice of the original documents in order to select the best words to express these ideas in the translated text. Our technical translators work alongside our attorneys to ensure the most technically and legally accurate translations are provided for our clients.

Quality translations help to eliminate the risk of unnecessary office actions from the JPO and help to ensure the claim language captures the embodiments of the invention that hold the greatest market value.