We cover the whole field of intellectual property including copyright, unfair competition prevention act, domain names, and mainly focuses on prosecution and litigation in industrial property rights (patent, trademark, utility model, design). In prosecution, we represent our customers in a lawsuit against an appeal decision of JPO on a routine basis. In litigation, we have the resources to take a variety of actions against infringement (warning, licensing, infringement lawsuit) on behalf of our clients.
We leverage our members’ experience in development to assist our clients in preparing system configuration diagrams, flowcharts, etc., thereby reducing the burden on development staff and intellectual property staff of our clients.
We have the resources to propose names that suit the products and services of our clients, based on our staff’s experience in product planning and copywriting.
We propose related design applications that cover variation designs to build more powerful protection of rights.
As for copyright and unfair competition, we assist our clients in issuing a warning against copy products, licensing of rights, registration of program copyrights, etc.
We represent our clients in arbitration to resolve disputes over domain names.
We are staffed by lawyers and can provide one-stop services in infringement lawsuits.
We handle many international cases, including international applications, in each of the above areas.
Primeworks experience is strong in electronics, physics and chemistry patents especially in the following fields.
- Communication / network
- Computer software / hardware
- Digital / analogue circuitry
- Business model
- Image, audio and other signal processing
- Information security
- Automobile parts/ automotive supplies
- Game devices
- Medical devices
- Optical devices
- Home electronics
- Daily necessaries
- Materials including semiconductors
- High molecular compound
- Genetic engineering
Filing of Japanese applications
We represent foreign clients in trademark applications in Japan.
The following information is required to file a trademark application in Japan.
- The full name and address of the applicant
- Nationality of the applicant
- Goods and/services for which the trademark is/or will be used
- The country and filing date of the first application if the applicant claims the priority under the Paris Convention
You need not file a power of attorney.
Handling of notification of provisional refusal in an international application for trademark registration requesting territorial extension to Japan
When you file an international application under Madrid Protocol, requesting territorial extension to Japan, you may receive an Office Action from the Japan Patent Office. A foreign applicant cannot respond to the Office Action on their own. A response should be filed only via a Japanese agent.
In this case, Primeworks serves our foreign client by studying and proposing a proper response to the Japan Patent Office. We will also file a response with the Japan Patent Office as a representative of our foreign client.
Request for renewal
The duration of a Japanese trademark right is 10 years since the date of registration. The duration of a trademark right can be extended upon request. A request for renewal must be filed during the period from six months prior to the expiration of the duration of a trademark right to the date of expiration thereof.
Assignment of a trademark right
Primeworks can conduct a negotiation to assign a trademark right, draft an assignment contract, and file an application for recordal of transfer of a trademark right with the Japan Patent Office on behalf of our clients.
Primeworks can undertake all procedures related to a trademark right such as filing of opposition to registration, request of an invalidation trial, and procedures to change the name or address of an owner of a trademark right.
* For requests for trademark applications and other inquiries, please contact us.
We handle all product areas (please see our track record below).
- Electric devices/home electronics
- Automobile parts/ automotive supplies
- Medical devices
- Daily necessaries
- Construction supplies/household goods
- Entertainment goods
- Food containers
- Furniture/Buddhist altar articles
Design Act of Japan provides for a partial design system, which allows one to seek protection to shape, patterns or colors, or any combination thereof of a part of a product, and a related design system, which grants independent rights to designs similar to each other. After all, a right to a design pertains to shape, patterns, etc. and, as such, is often considered to be narrow in scope of protection. It is possible, however, to expand from a narrowly defined scope to a broadly defined scope and enhance the usefulness of the rights accordingly, by taking advantage of the aforementioned systems. Primeworks proposes strategic design applications tailored to our client’s products.
We have proven track record in appeals and litigation and can provide one-stop service in all areas because we are staffed by lawyers.
We not only support foreign applications in developed countries but also in emerging countries in Asia, Middle East, Africa, etc. Acts of imitation in overseas have grown more and more sophisticated. Copying of a product design without using a trademark cannot be addressed by the trademark right alone. A design right provides countermeasures against those products that mimics the appearance of our client’s products. Since a design can be identified immediately from drawings, a design right could prove more effective as border control measures against counterfeit goods than a patent right. Since a design right is identified from drawings, the translation cost associated with foreign applications is kept low so that you can obtain a right economically.
“How do we adapt our application to fit in?” This question reflects the frustrations that clients from all over the world feel when trying to import their applications to Japan. Due to language barriers, lack of knowledge of Japanese practice, and miscommunication, clients may have experienced difficulties in Japan. These difficulties may not necessarily come at the first stage of prosecution either, but may occur later in a patent’s life. Nevertheless, many feel a great sense of frustration when it comes to establishing IP protection in Japan.
At Primeworks, we seek to adapt your intellectual property so that it ‘fits in’. That is, we strive to localize your patent or trademark prosecution within the Japanese scheme.
This means our members will be frank and knowledgeable about how to best handle your needs from a Japanese IP perspective.
For patent prosecution, Primeworks offers translation in-house, with certified translators with technical expertise in math, science, and engineering.
Primeworks may also customize a patent application in order to best fit Japanese practice. That is, our members will advise the client about if any necessary parts are missing or about best argument strategies.
Further to this, we at Primeworks maintain good correspondence with the JPO and provide strategies to obtain the best outcome for the client.
We also advise you on issues with Japanese prosecution that would be pertinent. Most of our attorneys are proficient in a second language and may correspond directly with the client concerning questions or issues that may arise.
In addition, our office periodically sends out bulletins on Japanese practice so that the client may be equipped with the information it needs pre-filing.Our office annually sends a representative to the client in order to discuss issues or concerns face to face. In this, Primeworks strives to be personable and reachable, even from across an ocean.
A great frustration that many experience when filing in Japan is that the amount of prior art in Japan seems insurmountably vast. With the JPO most often performing its own search and with the stricter laws of examination scope, it becomes important for the client to be proactive and know what kind of potential prior art could exists out there.
At Primeworks, we provide a claim evaluation and search service for you. For pre-filing, post-filing, and even for patent invalidation work, our team can search for relevant Japanese prior art or references with speed, cost effectiveness, and quality.
In addition to legal issues covered by the four major intellectual property laws (Patent Law, Utility Model Law, Design Law, and Trademark Law), our lawyers will properly attend to other legal issues related to intellectual property and neighboring areas (e.g., those issues covered by Unfair Competition Prevention Act or Act against Unjustifiable Premiums and Misleading Representations).
Please feel free to contact us if you have any of the following problems.
“My competitor is selling products quite similar to ours”.
“Salespersons of our competitor are making defamatory remarks about us to our partners and clients”.
“My competitor is selling products with false claims of quality”.
“An ex-employee has stolen our customer’s list and is using the list for business”.
“My competitors have conspired to drive us out of the market”.
We will also deliver efficient legal services such as conclusion of various contracts (e.g., license agreements) and drafting of contract documents.
In intellectual property related lawsuits such as patent infringement lawsuits, joint efforts by our attorneys and lawyers provide you with one-stop services including pre-litigation negotiations, preparation, and pursuit of a lawsuit.