We support your business
activities with both
Defensive
and Offensive approaches
- Do you consciously include both “defensive” perspective and “offensive” perspective in your patent search?
- Are you absolutely confident with what to do if you find a competitor’s patent that is hampering or may hamper your business?
- Do you know that offensive patent search is effective in your business development?
We, at Nagoya International IP Firm, proudly provide you with various patent searches such as prior art search, invalidity search, and clearance search (for infringement prevention) mainly against Japanese patents to offer you the most appropriate and optimum information for your business environment.
Every search we conduct is based on information provided by you through interviews. We comprehend your business strategy you aim to develop, from which we assume an IP strategy. We then propose a selection of searches and a scope of search that are most reasonable to confirm if the assumed IP strategy is appropriate. Our search is concluded with a search report that contains our suggestions and evocative comments useful for your decision makings in building improved business strategies.
Our patent search is conducted by our search specialists who are highly experienced in patent right acquisition service, let alone in patent search service. Every one of our search specialists has a “trained instinct” cultivated through their experiences in patent right acquisition service. This “trained instinct” is a high skill to select references in patent searches based always on a logical thinking in accordance with actual practices. This skill allows a realistic logic building that is necessary, for example, when determining a presence of inventive step by combining two or more references.
To provide you with a bespoke patent search service that meets your demand, it is crucial that we closely communicate with you to comprehend and confirm your requests and goals. For such close communications, we conduct face-to-face communications through web meetings in English depending on the nature and urgency of your case in addition to letters and emails, so that we correctly comprehend your true demands and provide answers to your questions in the course of proposing our search services. Web meetings will be attended by our members who have a deep knowledge of patent systems, fluent communication skills in English, and high level of intercultural communication skills to provide you with very satisfactory search service.
Defensive Patent Search
Invalidity Search
Clearance Search (Infringement prevention search)/ Freedom to Operate Search (FTO Search）
Other services (Preparation of probe report, Determination on infringement, Patent information service, etc.）
Offensive Patent Search
Prior Art Search (Pre-filing search/ Technical information search)
Trend Search, Analytic Search (Patent mapping)
IP Support Service (IP Landscaping)
DEFENSIVE
PATENT SEARCH
We conduct patent searches from a defensive point of view to protect your business from your competitors’ patents. Defensive patent searches include invalidity searches, clearance searches (infringement prevention searches), and freedom to operate (FTO) searches.
Invalidity Search
You do not have to give up your business when you find a hampering patent owned by your competitor. Let us find materials to nullify the hampering patent (invalidation materials). Useful invalidation materials can annul the patent rights of the competitor or narrow the scope of their rights out of the scope of your business.
In our invalidity search, we precisely trace the examination history of the target patent and inspect whether anything is missed in the search by the patent office during the course of granting the patent. We interpret the target patent in line with your goods and services of your concern, based on which we appropriately narrow down the focus of our search. After finding the invalidation materials, we logically evaluate and determine their validity against the target patent with respect to novelty and inventive step by our unique analysis, which supports easy formulation of invalidation strategies.
In addition to a documented report, our search result can be reported in a form of an evaluation chart (validity evaluation chart) upon your request. Our evaluation chart is a simple summary of the search results and visually friendly, which should serve as your convenient internal and external briefing material.
Clearance Search (Infringement prevention search)/ Freedom to Operate (FTO) Search
In our clearance search, we investigate whether patents of your competitors are hampering or may hamper your business. In our FTO search, we investigate to find relatively old materials to prove that a technique or technology used in your business is not infringing existing patents and free to use.
These searches help to reduce risks of your goods and services of your concern infringing existing patents. The most desirable outcome is to find no hampering patents or to prove that your technique or technology is free to use; however, even if a hampering patent is found, we make sure to propose various possible countermeasures. We strive to find the most realistic and optimum solution for you through our proposals, such as on how your goods and services can avoid conflicting with the scope of rights of the hampering patent and on a use of invalidity search to nullify the hampering patent.
Other Services
We offer many other services to support your business. Among them are preparation of a probe report you can use internally to glance through and understand the hampering patent; determination on infringement to advise you whether your goods and services are in conflict with the scope of the rights of the hampering patent; and patent information service that delivers published information in relation to published granted patent applications.
Preparation of Probe Report
We provide you with a document (probe report) on technical fields with high likelihood of patent-related problems and on patents of your competitors. Our probe report is relatively easy to understand in a brief time for those who have no IP expertise.
You can circulate our probe report in your office to encourage early discoveries of hampering patents. Upon your request, our search specialist will thoroughly explains the scope of rights of each hampering patent.
Our probe report service has received favorable comments; among them are feedbacks from our clients who experienced our probe report service on a group of patents owned by their particular competitors saying that our probe reports have been “very useful for exhaustively understanding the scope of rights of the competitors’ patents”.
Determination on Infringement
We evaluate and determine whether your goods or services are in conflict with (encroaching) the scope of the rights of the hampering patent (whether your goods and services may infringe the hampering patent). If we find no infringement in your goods and services, it should give you assurances that this hampering patent no longer an obstacle in your business.
Even if we find that your goods and services may be determined as infringing the hampering patent, we strive to find the most realistic and optimum solution for you through our proposals, such as on how your goods and services can avoid conflicting with the scope of rights of the hampering patent and on a use of invalidity search to nullify the hampering patent. We can contribute to your business development through our commitment to guiding you to the best solution.
Patent Information Service
We periodically deliver issued publications in relation to patents of particular technical fields and particular companies of your interest. Upon your request, we prepare a report including a list of various publications, outlines of each publications in abstract form, and summary of information tailor-made for your purpose of use. The patent information we provide should be useful, for example, as your technical intelligence, and as a material to comprehend the trend of technology to which your competitors are attempting to give weight and to confirm the presence or absence of hampering patents.
If we find a newly issued publication (published unexamined patent application) that should be closely watched for the benefit of your goods and services, we conduct regular monitoring of its prosecution (examination and trials, etc.) and immediately report to you if there is any progress. This gives you an opportunity to take a fast initial response such as to submit information before the patent office.
OFFENSIVE
PATENT SEARCH
We conduct patent searches from an offensive point of view to support acquisitions and utilizations of your IP rights. Offensive patent searches include prior art searches, trend searches, and analytic searches.
Prior Art Search（Pre-filing search / Technical information search）
In our pre-filing search, we find out publicly known documents that contain disclosures identical, similar, or related to the inventions or ideas of your patent application, and investigate whether your inventions and ideas satisfy patentability requirements, such as novelty. If we find no novelty, we offer advice on how to brush up your inventions and ideas. If we find novelty, we examine the distinctions from the disclosed arts in the publicly known documents and offer advice aiming at acquisition of robust rights by further clarifying the features of your inventions and ideas.
In our technical information search, we find publicly known documents that disclose technical details to specifically implement your inventions, ideas, or development concepts. Other than these searches, we offer various proposals such as on how to expand your inventions and ideas and on how to determine the direction of development at your request. Such proposals should lead you to an opportunity to have a head start in filing a patent application that highly corresponds to your developing products prior to the completion of the development.
Trend Search / Analytic Search (Patent Mapping)
We consider the publications published by the JPO as big data and conduct a macro and micro analyses on a set of publications of a search-target population extracted from the big data. Based on these analyses, we search trends in technology and industry of your business, such as trends of research and development of your competitors, changes in the numbers of filed applications in specific technical fields, frequently filed technologies in the industry of your business.
As an output of our research, we provide you with a visually distinctive report by using various mapping methods. In addition to these searches, we offer proposals on areas of invention that are relatively less competitive and less difficult in terms of right acquisition, and assistance in discovery of inventions through interview sessions at your request. We support your inspiration leading to inventions and ideas.
If you are a company residing outside of Japan and wish to request our services of “proposals on areas of invention” and “assistance in discovery of inventions”, you are always welcome to contact us directly or through a trusting IP law firm (your local agent) you usually use all at your convenience. No matter how you reach us, we promise to strive for thorough communication and provide you with the optimum service for your needs.
IP Support Service (IP Landscaping)
We support preparation of your presentation materials for strategic proposals to your new business development department, corporate planning department, and the managements. We blend your technology strategy with the IP intelligence we acquired through various searches and create a refined proposal document.
Our proposal presentation material is prepared by blending our IP intelligence in the best proportion to impress your audiences. Our IP intelligence includes identification of your competitors who have patent applications in the technical field that has similarities to the nature of IP rights owned by your company, and summarization of competitors who might be your target of license negotiations, your target of selling your IP rights, your partner of collaborative development, and your eligible counterpart in producing synergy effect such as by M&A. In addition to these, we prepare your proposal presentation material flexibly in accordance with your requests and make sure you are able to make a proposal that goes far beyond your initial plan of only including market information.