Service

  • Patents, Utility models

    We handle a wide range of technical areas including biotechnology, pharmaceuticals, foods, chemistry, system control, computer (software), information processing, artificial intelligence (AI), machines (filling apparatus, disinfection apparatus), etc.
    Further, we also handle cases spanning over plural technical areas, such as medical equipment.
    Our patent attorneys, specialized in each technical area, will offer counseling on your invention, draft a specification, and handle the procedures from filing the application to patent registration. Our patent attorneys, who have experience as both examiners and appeal examiners at the JPO, will meet your expectations in various aspects, including appeal cases involving oral hearings, etc.

    Practice
    Areas

    • Counseling for patent, Pre-filing prior art search
    • Drafting patent specification, handling filing procedures, examination request, etc.
    • Correspondence with JPO, from filing application to patent registration
    • Deadline management including payment of registration fee, annuity management, filing application claiming priority, etc.
    • Counseling and procedures for appeals, including appeal against a Decision of Refusal, invalidation trial, trial for correction, etc.
    • Counseling and procedures for Patent Opposition
  • Designs

    It is possible to obtain right for designs of products. This right will be stronger if supplemented with other rights such as patent.
    Hirota & Associates cooperates with design experts and will meet your expectations at all stages from conseling, filing, to design registration.

    Practice
    Areas

    • Counseling on designs
    • Preparing documents for filing design applications, handling filing procedures
    • Correspondence with JPO, including response to Notifications
    • Deadline management including examination request, payment of registration fee, annuity management, etc.
  • Trademarks

    It is possible to obtain rights for logos or labels used for products and services.
    Hirota & Associates cooperates with trademark experts and will meet your expectations at all stages from consulting, filing, to trademark registration.

    Practice
    Areas

    • Counseling on trademarks
    • Preparing documents for filing trademark applications, handling filing procedures
    • Correspondence with JPO, including response to Notifications
    • Deadline management including payment of registration fee, annuity management, etc.
  • Expert opinions, Searches

    Whether a patent is valid or not, or whether it is conflicting with another person's patent or not, is an issue that is becoming more and more crucial in mapping out a business strategy, as people are now seeking to make effective use of their intellectual properties through tight linkage with their business.
    However, these determinations require specialized judgments, advanced knowledge and experience.
    We, Hirota & Associates, have patent attorneys having experience as both examiners and appeal examiners at the JPO, and provide services including searches and expert opinions by making the most of their experience and expertise.

    Practice
    Areas

    • Counseling for expert opinions and searches
    • Prior art document search (determination of patentability), search of prosecution history, request references and official gazettes
    • Drafting information statement (submission of publications)
    • Drafting expert opinions on effectiveness of rights or concerning conflicts
  • Litigations

    The number of intellectual property disputes has recently been on the increase, and the recent revision of the Patent Attorney Law has expanded the scope of patent attorneys’ services to include matters concerning intellectual property disputes, and thus their role is becoming more significant.
    Hirota & Associates provides services for litigations to protect intellectual properties, and for the execution of rights.
    Now that the intellectual Property High Court has been established and a judicial system has been secured, our patent attorneys who have a lot of litigation experience will be able to meet your expectations.
    In infringement litigations, we will serve you by cooperating with specialized intellectual property lawyers upon your request.

    Practice
    Areas

    • Counseling for litigations
    • Procedural Attorney in Litigation Rescinding Appeal Decision
    • Procedural Attorney, Assessor in Specified Infringement Litigation Cases

    Main court cases

    • Case No. Heisei 24 (ju) 1204 Patent Infringement Litigation; Patent Right
      June 5, 2015 Supreme Court
    • Case No. Heisei 22 (ne) 10043 Patent Infringement Litigation; Patent Right; Civil Litigation
      January 27, 2012 Intellectual Property High Court
    • Case No. Heisei 21 (ke) 10284 Suit against appeal decision; Patent Right; Administrative Litigation
      January 27, 2012 Intellectual Property High Court
    • Case No. Heisei 20 (ne) 10083 Suit for damages; Patent Right; Civil Litigation
      April 14, 2010 Intellectual Property High Court
    • Case No. Heisei 21(ke) 10065 Suit against appeal decision; Patent Right; Administrative Litigation
      April 14, 2010 Intellectual Property High Court
    • Case No. Heisei 19 (wa) 35324 Patent Infringement Litigation; Patent Right; Civil Litigation
      March 31, 2010 Tokyo District Court
    • Case No. Heisei 20 (ke) 10305 Suit against appeal decision; Patent Right; Administrative Litigation
      March 25, 2009 Intellectual Property High Court
    • Case No. Heisei 19 (ke) 10367 Suit against appeal decision; Patent Right; Administrative Litigation
      October 16, 2008 Intellectual Property High Court
    • Case No. Heisei 19 (wa) 2980 Suit for damages; Patent Right; Civil Litigation
      October 9, 2008 Osaka District Court
    • Case No. Heisei 14 (ke) 566 Suit against appeal decision; Patent Right; Administrative Litigation
      August 31, 2004 Tokyo High Court
    • Case No. Heisei 15 (ne) 3746 Patent Infringement Litigation; Patent Right; Civil Litigation
      February 10, 2004 Tokyo High Court
    • Case No. Heisei 11 (ne) 459  Patent Infringement Litigation; Patent Right; Civil Litigation
      January 25, 2001 Tokyo High Court
  • Others

    With the growing interest in the intellectual properties, the role of patent attorneys is becomimg more cruicial, ranging from filing procedures to general intellectual property matters. Patent attorneys’ services cover a wide variety of areas such as assistance for intellectual property activities, strategy for intellectual properties, licensing agreements, and litigations.
    We have many experienced specialists and staff who will answer these needs, and will provide you with a broad range of service which you can trust.

    Practice
    Areas

    • Counseling for intellectual property in general
    • Sending patent attorneys to lectures related to intellectual property
    • Counseling and negotiation for technology transfer and contract related to intellectual property
    • Consulting on intellectual property by advisory contract

Technical Area

  • Biotechnology, Pharmaceuticals, Foods

    • Biotechnology

      In this technical field, we handle patent applications related to gene recombination, gene analysis, gene editting, monoclonal antibodies, etc., and our areas range from pharmaceutical area including diagnostic and treatment to agricultural area including breed improvement and biological agrochemicals. Since many prior arts are present in this field, including those from overseas, prior art research is absolutely necessary before filing. Further, when seeking to obtain a broad patent, support requirement is often an issue, and it is also necessary to make consideration of this point.

    • Foods

      Inventions of this technical field do not often arise from innovative technology, and there are many combinations of conventional known technologies. Therefore, it is particularly cruicial to describe the effects. Further, since there are many old known references, it is necessary to draft a specification by predicting the presence of known technology.

  • Organic / Inorganic chemistry

    • Organic chemistry

      Areas of organic chemistry include agrochemicals, pesticides, medicines, catalysts, organic synthesis, etc. Since many prior arts are also present in this field, prior art research is absolutely necessary before filing. Further, when a single substituent is changed in an organic compound, it is possible that a completely different property is shown. Therefore, it is necessary to be careful in considering the scope of the claims to what extent to expand the scope of the substituents additionally to the practiced compounds.

    • Inorganic chemistry

      Areas of inorganic chemistry include glass, ceramics, lithium battery, apatites, etc. In many applications, inorganic particles would be specified with composition of components, mean particle size, specific surface area, etc. It is necessary to be careful in the relationship between the numerical vaules depicted in the claims and the numerical values depicted in the Examples. It is necessary to draft specifications by predicting the numerals in the known technology.

  • Electricity

    • We cover almost all technical areas related to electricity. Particularly, we are expertized in control, image processing, electric circuit, electric control, etc. In this field, since it is common to use block diagrams, circuit diagram, timing chart, etc. in the embodiments to supplement the configuration or function (performance) of the invention, it is necessary to appropriately select and prepare these diagrams. Futher, to substantially expand the scope of exclusive right obtained with core technology, there is a tendency to file plural applications related to technology associated with core technology (peripheral technology, improvement technology). Therefore, attention should be paid since the later application may be rejected by the applicant's own earlier application.

  • Information, Information Technology, Software

    • Information

      In this technical field, it is necessary to demonstrate in the patent specification that information processing, information control by a software is specifically realized by using hardware resources (to comprise specific means). Recently, while content overlapping with other technical fields is increasing (not remaining in a particular field, such as content in which information processing by a computer is performed in the field of biotechnology or chemistry (recently, an invention in which AI (artificial intelligence) is employed)), we can handle widely and flexibly such cases. Further, in this technical field, we also handle business model such as financial system.

  • Machines

    • When filing a patent application in the field of machines, related to food manufacturing apparatus, filling packaging apparatus, disinfection apparatus, injector, packaging container, etc., we seek to broadly depict alternative means for each unit, aiming a strong patent right. Further, we also consider whether there is a feature in the method for assembling the apparatus, or its usage.