We are providing consulting services
based on strong partnerships with our clients
- Are you confident that your IP strategy is the best one?
- Are you fully prepared against your competitors’ rights?
- Are you successfully addressing IP-related daily challenges, such as determination of patentability/
Nagoya International Patent Firm is providing consulting services that enable our clients to confidently answer “Yes” to these questions, by using various means based on strong partnerships with our clients.
The most distinctive feature of our approach is “strong partnerships with our clients”. In order to make realistic proposals that would best fit each client, we grasp necessary information, such as each client’s business environment, positioning, and available resources, as well as each client’s needs and thoughts.
Based on abundant experience of dealing with requests from many clients in and out of Japan, we make proposals while asking ourselves “What would be the best solution if we were in the client’s place?” and “What would be the best choice from among alternatives?”. We work closely with each client so that the client can carry out the chosen proposal (alternative) steadily.
Examples of Consultation Requests by Clients
Consultations regarding IP strategy to promote business
- We want to break into the Japanese market to sell our in-house developed product in the future. What would be the necessary preparations that we should make now?
- We are developing a new app and want to increase users of this app in Japan. We are worried about being driven out of the market by major companies with superior capital strength that imitate the app. How can we avoid this?
- We are planning to sell the business that we are running in the Japanese market through M&A or IPO. What kind of IP portfolio should we build to get the maximum benefit?
Consultation regarding measures against competitors
- We are afraid that we would inadvertently infringe patent rights in Japan owned by competitors. What should we do to reduce such risk?
- Our in-house developed product protected by a patent in Japan may be imitated by a competitor. What measures should we take?
Consultation regarding creation/
discovery of inventions
- We have a development base in Japan, and hopes to receive more invention application forms from this base. What system should we establish and what policy measures should we implement?
- We want to do some brainstorming for discovery of inventions in our development base in Japan so that we may receive more invention
application forms for inventions that would contribute to our business, but we have no idea how to proceed.
- We want the members in our development base in Japan to grasp the secrets of success regarding patents. Where should we start from?
Consultation regarding enhancement of IP-related legal affairs
- We have a development base in Japan. We want to develop the provisions on IP-related matters, such as employee inventions, in this base in Japan.
- We want to operate IP-related provisions that match our development base in Japan, but we have no idea where a potential risk lies. So, your support would be appreciated.
Consultation regarding joint development/joint application
- We are planning to conclude, with a certain company, a joint development agreement that includes provisions stipulating the conditions under which IP applications, such as patent applications, will be filed in Japan. Since the company has presented to us a draft joint development agreement, we want to identify any provisions that may pose a risk to us.
- We are about to file a joint application in Japan, but we have some doubt about the documents prepared by the principal
company (i.e., co-applicant) and its strategy for future prosecution. We need your support because it is difficult for us to express such doubt to the principal company in a nice way.
Nagoya International Patent Firm is providing consulting services, in which the above-exemplified consultations can be handled. The services are classified into three categories: strategy planning, practical operations, and management, each of which will be explained below. All services can be provided under an advisory contract, under a contract per project, or on a one-off basis. If the client interested in any of these services resides outside Japan, such client may request us the service directly or via an IP law firm (local agent) that the client is routinely doing business with, whichever is convenient for the client. Both are welcome. In any case, we will do our utmost to ensure good communication and make the best proposals to the client so that we could bring beneficial results.
Consulting Services on Strategy Planning
Planning of IP strategy to promote business, and support thereof
In order to promote your business in Japan, we will plan your IP strategy, including how your intellectual properties should be protected and how they should be put to better use, and provide specific advice on such planning.
For example, we will plan your IP strategy and provide specific advice regarding, in Japan, what aspect of which of your in-house developed products should be protected as intellectual property, how much cost is to be spent to protect the intellectual property, and in what occasion the intellectual property is to be spotlighted and utilized. We can provide advice not only through an opportunity where we have discussions with a person in charge of planning IP strategy related to your business in Japan or with a person in the IP law firm (local agent) authorized by you, but also by attending your management meeting or development meeting on your business in Japan. This would enable you to promote the business in Japan with most suitable IP strategy.
Planning of strategy against competitors, and support thereof
We will search your competitor’s possession status of IP rights in Japan to thereby determine risks of your business in Japan, and will plan a strategy on how to deal with the competitor’s IP rights in Japan. Alternatively, we will also be able to just provide advice on such planning. For example, in a case where the competitor’s Japanese patent that you might infringe is found, we will consider design modification that would enable avoidance of such infringement in an effective manner, and/or study how to collect evidences for asserting invalidity of the competitor’s patent and how to make arguments. This would enable you to deal with the competitor’s IP rights in Japan with most suitable strategy.
Conversely, in a case where you suspect that your competitor may be infringing your IP rights in Japan, we will be able to plan a strategy on what preparations should be made and what measures should be taken against such competitor. Alternatively, we will also be able to just provide advice on such planning. For example, we will consider how to obtain the competitor’s product alleged to infringe your IP rights in Japan, and also will consider what counterarguments are expected from the competitor when your IP rights in Japan are exercised, and how such counterarguments should be addressed. This would enable you to seek effective utilization of your IP rights in Japan with most suitable strategy.
Support for risk avoidance in joint development, etc.
There may be cases in which you consider concluding an agreement, such as a joint development agreement or a joint application agreement, based on the domestic laws in Japan, prior to filing a joint application in Japan with a co-applicant such as a Japanese company. In such cases, to allow the agreement to have the contents more suitable and advantageous to you, what is required is knowledge on the domestic laws in Japan, such as the intellectual property laws in addition to the Civil Code and the Code of Civil Procedure, knowledge on the technology that is the subject of the agreement, and a strategic perspective deducing how your business should be promoted in Japan to bring the maximum benefit to you. Taking them into account comprehensively, we will provide advice on what points potential risk lies in, and how the contents of the agreement should be improved.
This would enable avoidance/
reduction of occurrence of a situation in which, after starting the joint development, you get into IP-related troubles or you cannot help but keep on conducting the business with low profitability. As a result, you would be able to proceed with a suitable joint development and/
or joint application.
Consulting Services on Practical Operations
Support in activity for invention discovery
We will handle brainstorming for discovering inventions in your development base in Japan. Further, we will conduct a prior art search for the invention discovered as a result of the brainstorming and/or will support preparation of an invention disclosure form, if requested.
This would enable you to discover “valuable inventions” that have existed as in-house tacit knowledge, and further to seek to have such valuable inventions patented.
Support for determining patentability
As for the invention suggested from your development base in Japan, we will determine whether the patentability thereof is low or high from the perspective of a patent practitioner in Japan. If the patentability appears relatively low, we will advise an inventor and/or a person in charge of the IP-related matters, through discussions with them, on from what perspective the invention should be further delved into, to thereby improve the patentability.
This would not only enable reduction of fruitless patent applications based on the appropriate determination of the patentability, but also enable the inventor and/or person in charge of IP-related matters with less IP experience to learn the secrets of success in increasing the patentability, through such support of ours.
Provision of a second opinion when the co-applicant serves as the principal company in a joint application
Regarding a joint application to be filed with the Japan Patent Office, there may be cases in which you are asked, by the principal company, for your opinion on the filing strategy, the appropriateness of the application documents, or the future response strategy against rejections. If you have any doubts about the opinion of the principal company or of its patent and trademark attorney, or if you are not sure whether their opinion is appropriate, we will be able to provide our opinion.
This would enable you to confidently convey your consent or alternatives to the principal company.
Consulting Services on Management
Support for education on intellectual properties in Japan
We will conduct an interview to know your business environment in Japan, etc., and provide advice on the departments that should be suitably educated on intellectual properties in Japan and the contents of the education for each department. We will also be able to set up and implement education programs with the contents corresponding to the respective departments, if requested.
This would, for example, allow the members in your development base in Japan to learn “the secrets of success regarding an inventive step”, thereby leading to increase in the number of good invention proposals. Furthermore, if the members in this base in Japan have learnt “the procedures for determining infringement”, it would become possible to monitor your competitor’s Japanese patent in this base in Japan.
Support for IP-related legal affairs
For the members in your development base in Japan, we will provide advice on development and operation of in-house provisions on IP-related management, including employee inventions. Especially for the provisions on employee inventions, appropriate contents and operation thereof differ depending on the circumstances of each company in most cases. Thus, we will conduct an interview to know your circumstances, based on which we will support you to realize appropriate contents and operation of the provisions.
This would enable you to enhance the provisions on IP-related management necessary for you, including development of the provisions on employee inventions, thereby appropriately carrying out the IP-related legal affairs.