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Attorney/Recommendations

Patent Attorney

Name:  Junzo WATANABE

Registration No.:  11683 (registered in 2000)

Education:   

  Department of Mechanical Engineering, Faculty of Engineering, Kumamoto University

  Department of Law, Faculty of Law, Chuo University

Recommendations

■1) Nobuatsu Watanabe [Title: Professor Emeritus of Kyoto University, Doctor of Engineering; Award: The Chemical Society Japan Award (1980), Purple Ribbon Medal (Shijuhosho) (1987), etc.]

Mr. Inoue, the Senior Partner, is my former student. He has both excellent linguistic ability and excellent expertise. The staff of Inoue & Associates are well-trained by Mr. Inoue, and the high quality services provided by Mr. Inoue and his staff are self-explanatory from the documents made by them. From my experience, I firmly believe that they will help you to promptly and surely acquire intellectual property rights, based on adequate judgment made by fully utilizing their professional skills in combination with their rich experience in pursuit of patent rights in many countries for many years.

■2) Hidefumi Hirai [Title: Professor Emeritus of The University of Tokyo, Doctor of Engineering; Award: The Chemical Society Japan Award (1984), etc.]

Mr. Inoue, the Senior Partner, and his staff are familiar with foreign patent laws and patent practices. Further, the quality of their services based on accurate understanding of technical background and excellent linguistic ability is prominent in this business. In addition, Mr. Inoue already has his appropriate successor and I, therefore, trust Inoue & Associates for their excellent procedures of filing patent applications through reliable prosecutions for grant of patents.

Samples

The following is a list of some examples of US patents obtained through our firm.

We suppose that it might be rather difficult for most of the non-Japanese clients to evaluate the quality of our works done for Japanese IP rights.

For such non-Japanese clients, the US patents listed may be useful for evaluating our abilities. We always dedicate tremendous efforts to draft English claims and specifications properly. For example, in the case of PCT applications, we draft Japanese specifications for PCT based on Japanese patent applications which had often been prepared and filed through other Japanese IP firms or by Japanese applicants themselves.

We usually make considerable modifications to the original Japanese specifications and claims for filing PCT applications. Especially in the case where the basic Japanese application has not been filed through our firm, we thoroughly check the application and usually redraft the claims into a form which has more clear and logical construction and can cover a desired protective scope, and also redraft the specification by supplementing information necessary to enable the invention or information which might be useful in the later prosecution stage for overcoming possible rejections.

Therefore, it can be said that, in many cases, the US patents are our translations of the Japanese language PCT specifications drafted by our firm.

We sometimes ask US patent attorneys to check our drafts of English specifications, but they usually find that no substantial change is necessary.

In addition, during the prosecutions of the foreign patent applications, our draft responses (amendments and arguments) are usually submitted to the patent offices without any substantial changes or with only minor changes.

Consequently, we believe that the US patents listed here would be of great help for you to evaluate our skills in IP business.

The documents which we prepare have been highly esteemed by the foreign patent attorneys.

タグ:

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《判決文》

(和英)

原文:

そして前記アで説示したとおり、相互に非相溶の樹脂同士を溶融混練すれば、体積割合の多い 方の樹脂が構成する海(連続相)の中で、少ない方の樹脂相が島構造となる可能性が高いこと は、当業者であれば容易に予想することができること、もともと海相中に含まれる導電性物質 等の第3成分が島相に移行するためには、海相中を移動する島相が当該第3成分と接して、なお かつ海相-島相間の海面を拡散して島相中へ入り込む必要があり、拡散が通常は正逆方向に移 行可能な反応であること(移行の程度は異なっても、一旦島相に入り込んだ第3成分が再び海相 へ戻る可能性もある。)をも考え合わせると、当初は海相中にのみ含まれていた導電性物質等の 第3成分が、押出機等による比較的短い時間での溶融混練中に海相から島相へ一方的に大量に移 行し、過半を超えるような事態は当業者においておよそ想定しがたいものと認められるから、 「導電性物質の局在化が保たれる」との本件審決の認定に誤りはない。

 英訳文:

Further, as explained in item A above, those skilled in the art can readily anticipate that, when two types of resins which are incompatible with each other are melt-kneaded, a resin having a smaller volume ratio is very likely to form an island structure in the sea portion (continuous phase) formed by another resin having a larger volume ratio.   In addition, the migration of a third component (such as an electroconductive substance) which has originally been contained in a resin forming a sea phase into an island phase requires not only the contact between the island phase (moving through the sea phase) with the third component but also the diffusion of the third component at the sea phase-island phase interface into the island phase (further, it is possible that the third component which has once migrated into the island phase returns to the sea phase although the extent of the migration may vary).  In view of the above, it is recognized that those skilled in the art would hardly expect a migration of a large amount of a third component (such as an electroconductive substance) which has originally been contained only in a resin forming a sea phase into an island phase during the melt-kneading performed by an extruder or the like only for a relatively short time, which results in the presence of more than half amount of the third component in the island phase. Therefore, the Board of Appeal has not erred in recognizing that “localized dispersion of the electroconductive substance is maintained”.

Addition of New Inventor to a Pending Patent Application

Q1. What are the statutory requirements for being named as an inventor in a Japanese application?

A1.  The statutory requirements for being named as an inventor in a Japanese application are the same as the US requirements.  Although an “inventor” is not clearly defined under the Japanese Patent Law, it is understood that an inventor is a person who actually participated in the creation of an invention, and either a mere assistant, an advisor, a person who provided financial support or a person who only gave instructions is not an inventor.

Q2. What are the documents necessary for adding an inventor to a pending Japanese application?

A2.  For adding a new inventor to a patent application, we need to file a Statement executed by the applicant and all inventors (Neither notarization nor legalization of the Statement is required). 

Such a Statement can be prepared at our end and forwarded for execution by the applicant and the inventors. 

Notice of Rejection

Q1. How long is the response period for Notice of Rejection?  Is any extension available?

A1.  The response period for the Notice of Rejection is 60 days (for Applicants residing in Japan) or 3 months (for Applicants residing outside Japan).  Applicants residing in Japan can obtain 1-month extension, and Applicant residing outside Japan can obtain extension of up to 3 months upon filing of a Request for Extension and payment of official fee (which is 2,100 yen per month).

Q2. We received a final Notice of Rejection from the Japan Patent Office.  What are the differences between the Notice of Rejection and the Final Notice of Rejection?

A2.  In principle, Final Notice of Rejection is issued when a new ground of rejection is necessitated by the Applicant’s amendment of the claims filed in response to the previous Notice of Rejection.  When the Applicant fails to overcome the reason for rejection of the Final Notice of Rejection, next Office Action will be Decision for Rejection.

In addition, after the issuance of the Final Notice of Rejection, there is a restriction to the scope of permissible claim amendments.  Please see section “Restriction to Permissible Claim Amendments after Final Rejection” for more details.

Decision for Rejection

Q. We received a Decision for Rejection.  Are there any means to continue the prosecution of the present patent application?

A.  The Applicant can file a Notice of Appeal against the Decision for Rejection within three months (for Applicants residing in Japan) or four months (for foreign Applicants) from the dispatch date of the Decision.  Please see section “Appeal against the Decision for Rejection” for more details.

With respect to patent applications filed on or after April 1, 2007, a divisional application can be filed instead of  (or in addition to) filing a Notice of Appeal.  Please see section “Divisional Application” for more details.


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