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We, as professionals in the field of intellectual property (IP) support,
can meet your various needs.

At INFORT Patent Firm, our patent attorneys have a wealth of expertise and experience in a variety of fields, and we are able to flexibly provide service to our individual client’s needs in accordance with different environments and the various issues that need to be dealt with. We support our clients’ intellectual property (IP) needs in all manner of ways. Below we will introduce a few examples of the services we can provide.

Intellectual Property Creation

In recent years, companies have been promoting their businesses via the acquisition of intellectual property (IP) and also by effectively utilizing their IP.
When considering the effective utilization of IP, we believe it is important to not only advance IP prosecution from simply a technical point of view, but also from a business-oriented point of view.
At INFORT, we recognize IP as a business asset, aiming to achieve intellectual property rights (IPRs) while considering the business-oriented aspect, resulting in creation of IPRs that promote the client’s business.

Possessing a business-promoting IPR will give the company the advantage of using the IPR exclusively during the period which competitors would need to develop products to avoid infringement, or a competitor may decide to give up on entering the market due to our client’s acquisition of such an IPR.
Therefore, in order to obtain a business-promoting IPR, it is necessary to first attain an IPR with a sufficient scope that is broad enough to achieve the above-described business advantage.
Hence, merely obtaining an IPR having a scope that covers only the company’s product(s) does not necessarily achieve a business-promoting IPR.

At INFORT, in order to achieve a business-promoting IPR, we investigate the competition by conducting a market analysis and a competitor patent analysis before the patent application is filed.
Thereafter, at the patent prosecution stage, we prepare a prosecution guideline, by analyzing patent information and using our specially-designed tools for attaining a business-promoting IPR that sufficiently covers a scope by which the above-described business advantages can be obtained, and we proceed with prosecution in accordance with this prosecution guideline.
Accordingly, by using this prosecution guideline to achieve business-promoting IPRs, the client can establish a strong patent portfolio having a firm direction.

In addition to the technical side, administration and management support also become important factors in the creation of business-promoting IPRs.
Revisions to IP laws and rules frequently occur, and since IP laws and rules differ between countries, deadlines for procedures and the required documentation for carrying out the same procedure are not necessarily the same for each country.
We at INFORT also provide support for IP creation with respect to administration by possessing accurate knowledge on the administrative procedures for each country, by being able to accurately predict the necessary procedures/documents at the stage of receiving a request from the client, and by being able to appropriately and efficiently carry out the necessary administrative procedures.

Companies that manage their IPRs vary from being large companies having an organized IP department, to smaller businesses without an IP department.
Moreover, the IP strategy and management structure for IP administration can differ greatly between businesses.
Therefore, we at INFORT are always conscious of what would be the most appropriate IP administration management method for each business.
We at INFORT believe it is advantageous to the client for us to understand how they manage their IP administration, and if desired, we are able to provide support in which we would suggest changes to the management scope and method in a flexible manner, appropriate for each individual business.
For example, for a business that does not have an IP department or does not have an appointed IP manager, we at INFORT can take on the role of an IP department or IP manager for such a business.
With this important role, we would manage all of the client’s IP cases, or alternatively, we would manage deadlines in stages in which we would actively increase our communication with the client regarding due dates, etc., and we would contact the client regarding administration procedures while providing careful explanations, conveying information using easy-to-understand language and lists, etc., as appropriate.

Standard Essential Patents (SEPs)

A standard essential patent (SEP) is a patent whose invention is included in the specification of a technical standard and therefore cannot be avoided by the competition when manufacturing, selling or providing services which comply with the technical standard.
In other words, a SEP is a patent of an invention that must be implemented when technology specified in the standard is utilized to develop a business.
Following globalization of economics, SEPs have a large impact on businesses to which an international standard is established.
SEPs are used, for example, for a cross license with a company having other SEPs or are used in a patent pool.

Since technical standards are generally determined through discussions among many parties, unexpected changes to the technical standards may occur.
To obtain SEPs in this environment, it is necessary to file patent applications and reply to office actions quickly, effectively and appropriately.
For example, the client may come up with a new idea during a discussion with other parties.
However, the other parties may also come up with a same or very similar idea.
Therefore, in such circumstances, it is essential to effectively prepare and quickly file a patent application.
Furthermore, during the discussion for determining a technical standard, what was initially a second-best idea may be adopted into the technical standard instead of the client’s initial best idea.
Even in such circumstances, we can provide support for the client in order to obtain an SEP directed to the idea that was adopted into the technical standard by filing patent applications and replying to OAs in a corresponding manner.

SEPs can be used for cross licenses with other companies having SEPs, can be used to join a patent pool, or can be sold.
However, before using SEPs in such a manner, it is necessary to carry out patent evaluation.

Even if a patent was thought to be an SEP when filed and issued, evaluation in advance of usage may discover that part of a claim(s) of the patent does not in fact match with the technical standard, so that it is realized that the patent is actually not an SEP.
Alternatively, prior art that was not referred during the examination of the patent may be discovered afterwards, invalidating the patent.
Accordingly, SEPs cannot be used in practice without first evaluating their essentiality in addition to their patentability.
Furthermore, patents to which evaluation by a third party has been completed can be sold smoothly.

INFORT has highly knowledgeable and experienced patent attorneys who have been involved in obtaining SEPs for more than 20 years and are experienced in managing SEPs for patent pools.
Our experienced professionals combine as a team to provide assistance in order for our clients to obtain SEPs that are actually useable, and to evaluate SEPs in advance.

IPR Utilization

While the ownership of patents or patent applications may in itself have worth, utilizing patents more effectively may also be desired.
It is costly to obtain and maintain patents, and the costs incurred by patents that are not utilized may end up as just expenses.
However, if the patents are evaluated properly and utilized effectively, obtaining patents can be a lucrative investment.
Following recent intensification of global competition and the spread of the Open Innovation Movement, we have received numerous requests for consultation about value estimation of patent rights and how to utilize patent rights.

At INFORT, our patent attorneys, who have a wealth of experience spanning over more than 15 years dealing with an extensive amount of cases for large and small companies, both domestically and abroad, are ready and qualified to help our clients to utilize their intellectual property rights (IPRs).
Furthermore, our patent attorneys specializing in IPR acquisition and our patent attorneys specializing in IPR utilization combine as a team to support our clients to obtain and utilize their IPRs effectively.
Hence, we can provide support from the early stages of R & D activities through to the IPR acquisition stage, and onto the effective utilization of the IPR.
IPRs will become easier to utilize if preparations are made with utilization in mind at the early stages of R & D activities.

For example, INFORT has achieved a good reputation in supplying the following services listed below to mainly venture companies, which have limited resources for administrating their intellectual property.

  • Support for IPR acquisition and utilization planning in accordance with business strategy
  • Inventory of IPRs (patent rights)
  • Patent value assessment
  • 3rd party patent infringement search and appraisement
  • Support and representation for issuing warnings to infringers and for licensing negotiation
  • Support for patent infringement lawsuits
  • Support in purchasing or selling patents
  • Support in drafting license contracts

In addition, INFORT also supplies other support services for dealing with patent infringement risk, such as patent clearance, expert opinion preparation, drafting warning letters, and support in responding to Non Practicing Entities (NPEs).

Preparation of Application Document Treating Original Specification
as Written Proposal of Invention (PATOP)

When filing a patent application in a foreign country (e.g., a U.S. application), it is typical to file via the Paris route or file via the PCT route while claiming priority based on a Japanese application (hereinafter, “the original application”) that has already been filed domestically in Japan.

The most basic method for preparing a foreign application based on the original application is to place a request for translation of the Japanese specification (into a target language, e.g., English) with a translator or with a translation company (hereinafter, “translator”), and then a proofreader at a domestic patent firm whose role is to revise foreign applications (hereinafter, “proofreader”) completes the foreign application specification, upon receiving the translation from the translator, by correcting typographical errors/erroneous translations and altering the format thereof.

However, under the first-to-file principle, in order to attain the earliest possible filing date, it is not uncommon for the original application to be filed in an “ill-prepared state”, in which information was not sufficiently acquired, and in which the generic concept of the embodiment(s) is insufficiently disclosed.

Furthermore, since the original application is, as can be expected, prepared in accordance with Japanese patent practice, it is common for the original application to be prepared without giving consideration to, or reflecting, patent practices in the US, Europe, China, or other countries.

We at INFORT employ our own method of dealing with above-mentioned issues by treating the specification of the original application as a written proposal of the invention, in which the patent attorney/patent engineer directly prepares (rewrites) the English specification while giving consideration to patent practices of various foreign countries.

For example, a specification format in which the description of the background art is written based on European guidelines where the problem-solution relationship is required to be clearly disclosed, and the embodiments are written in accordance with U.S. guidelines where sufficient disclosure is required in order to establish reduction to practice, is treated as an original format for the specification of the foreign application. In addition, the specification is prepared in order suit each country of filing by (e.g., in the case of U.S. practice) removing unnecessary disclosure to avoid a narrow interpretation of the claims, and by further fortifying the disclosed content by giving consideration to the examination practice (allowable scope of claim amendments) of each country of filing, which has become more and more strict in recent years (esp. Europe and China). The further fortifying of the disclosed content involves gathering required information by referring to related-art documents, incorporating additional technical information provided by the client, and referring to previous prosecution history of related cases (amendments/arguments); the patent attorney/patent engineer applies the results of the gathered information directly into the English specification.

According to the above method, the inherent limitations involved in the “translation” process are eliminated, so that it is possible to prepare an efficient and fully-enhanced English specification.

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