Toho International Patent&Law Office 弁理士法人 桐朋

Practice Areas

We offer various application filing and prosecution services as well as legal services in relation to domestic and foreign intellectual property rights, from the acquisition of patent, utility model, design, and trademark rights to the exercise and effective utilization of such rights.

[Patents & Utility Models]

Our attorneys and technical staff provide a wealth of experience in technical fields of mechanical and general structural engineering, electrical engineering, communications, software, image processing, AI-Related technology, medical devices, and material sciences, etc.

[Designs]

We offer services for partial designs, related designs, and single application multiple designs, advantageously using the systems that differ in particular for each country, with the aim of securing design rights that are widely effective at low cost.

[Trademarks]

We offer services to facilitate registration of a wide variety of trademarks, including new types of trademarks, such as trademarks consisting solely of sound, holograms, or colors, etc. Our services also cover protection from unauthorized use of existing trademarks to assertion of the unfair competition prevention act, remedial actions, and the like.

[Foreign Applications & Foreign Dispute Resolution]

Our skilled translation staff including native speakers perform translations, proofreading, and editing to realize the prosecution of applications and provide accurate communications on the basis of high quality translations. In matters involving foreign disputes, based on our long-standing business relationships, we provide our clients with smooth and accurate communications along with proposing the best possible method of dispute resolution.

Summary of Our Practice Areas

1.
From Application Filing to Registration
2.
Expert Opinions
3.
Opposition, Invalidity and Cancelation Proceedings
4.
Litigation
5.
Prior Art Research, In-House IP Training, Licensing and Other Services

Details of Our Practice Areas

1. From Application Filing to Registration

We successfully prosecute patent and utility model registration applications, design registration applications, trademark registration applications, and international applications in the JPO and in patent offices around the world, and carry out the various types of procedures associated with such applications.

  • Pre-filing consultation (invention extraction, planning of application strategy, prior art search and investigation, etc.)
  • Preparation of applications for filing in patent offices worldwide (including the creation and translation of specifications, etc.)
  • Response to reasons for rejection, trial against examiner's decision of refusal (including examiner and appellate judge interviews)
  • Trials to invalidate the affirmance of examiner's decision of refusal
  • Procedures relating to registration and maintenance of rights (registration establishment, annuity payments, etc.)

2. Expert Opinions

Creation of expert opinions to guide strategic business decisions for companies relating to validity and invalidity of domestic and international intellectual property rights, success or failure of infringement actions, etc.

  • Opinions concerning validity/invalidity of rights
  • Opinions concerning infringement of intellectual property rights

3. Opposition, Invalidity and Cancelation Proceedings

We implement a range of actions in relation to opposition proceedings, trials for invalidation, and trials seeking cancelation of rights for nonuse or misuse.

  • Opposition proceedings (patent and trademark registrations)
  • Trials for invalidation (patent and utility model registrations, design registrations, trademark registrations)
  • Trials seeking cancelation of rights for nonuse or misuse (trademark registrations)
  • Trials to invalidate the determinations and decisions of opposition proceedings
  • Searches and investigations to locate materials for invalidating intellectual property rights

4. Litigation

With our patent attorneys responsible for application and prosecution procedures combining their resources with an Attorney at Law before the court, we provide legal services instrumental in resolving conflicts in relation to intellectual property rights. We have extensive experience in litigations carried out in the United States, Europe, and China, among others.

  • General services responsive to infringement of intellectual property rights (warning letters, licensing negotiations, infringement litigations, import/export injunctions with respect to customs authorities, settlement negotiations, etc.)
  • Support in the implementation of litigation, including the selection of suitable local representation, and formulation of litigation strategy and tactics in international legal disputes.

5. Licensing and Other Services

We offer legal services associated with intellectual property rights, including the creation of various legal documents such as contractual agreements, advice concerning copyrights and trade secrets, and investigations in relation to domestic and international intellectual property systems, etc.

  • Contractual agreements (assignments, licensing, joint R&D agreements, non-disclosure agreements, etc.), assistance in the development of corporate in-house policies (regulations for employee inventions, management of trade secrets, etc.), drafting, and proofreading and translation of various legal documents relating to intellectual property rights
  • Advice concerning copyrights and the unfair competition prevention act
  • Research on domestic and international intellectual property rights systems
  • Training and presentation of seminars on intellectual property issues
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