We may not have the opportunity to draft a patent for an overseas client. However, we will carefully convert foreign claims into Japanese claims, taking into account the differences in practice.

We would like to explain our policy, which is useful for responding to OA.

■ Extraction of inventions

The inventor’s idea is often just an example that does not extend.

It is the role of the patent attorney to extract inventions from the inventor’s idea that are not included in the prior art.

It is also important to find ‘inventions that the inventors are not aware of’.

■ Prior art search

An invention must have difference from the prior arts. We find relevant prior arts by:

(1) searches using multiple search formulae (modifying the search formula for the next search based on the previous one), and

(2) patent citations and cited documents.

The position of the invention is ascertained by combining these methods.

* ‘patent citations and cited documents’ is not very common, and this is a unique feature of our firm.

■ Enforceable claims

We draft claims with an awareness of enforcement in mind, based on our experience in litigation and license negotiations.

> Patents with few superfluous limitations

For enforcement, it is important that there are ‘no superfluous limitations’. The number of letters is a guide to this.

In the case of refusal (OA), we can add “words that are not substantially limiting” (increase the number of letters) by way of an amendment to persuade the examiner to approve the amendment.

> Claim categories

Today, system inventions in which a number of devices work together are common. In such cases, it is necessary to consider (1) all elements rule, and (2) the principle of territorial jurisdiction. Therefore, we recommend independent claims of different categories.

■ Proofreading text and figures using AI and other methods

IdeaDefence uses two tools for checking drafts: (1) Patent-specific tools and (2) General text checking (AI).

(3) Checking the correspondence between the figures and the patent specification. This is done manually due to the lack of appropriate tools.

Checks by several people are also important. Currently, we ask our partner firms to check.

■ Response to notice of reasons of refusal (OA) and appeals against decision of refusal (advisory action)

Not a few examiners issue notices of refusal (OA) based on the ‘same technical field theory’, which was common in the past but is no longer recognized in judicial precedents.

We recommend that such notices of reasons for refusal should be argued in a written opinion without making any substantive amendments. However, in such cases, you should be prepared for a decision of refusal (advisory action).

If a decision of refusal is issued, it is possible to appeal and have appeal examiners take another look at the application, which is often successful. As a risk hedge in such cases, we also recommend filing a divisional application (if you file a divisional application with us, a fee for drafting the specification is not required, only a fee for claim drafting is required).

We actively conduct interviews with examiners and appeal examiners. Even if we think that a notice of reasons for refusal is unreasonable, we will engage in a friendly exchange of opinions with the examiners, bearing in mind the difficulties they face in dealing with a large number of cases in a short period of time. In many cases, the examiners are able to understand our arguments.

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