The advantage of Japanese Patent Publication and Japanese abstract

A great number of Japanese Patent publications have been accumulated with fine and consistent classification with minimum miswriting or misclassification in JPO.  Therefore, when the objective Invalidity material is contained in the Japanese Patent publications, it may be found effectively without omission.

In 1996, the number of Japanese Patent publication was around 400,000/year, which is 65% of the total worldwide patent publication.  The number of Japanese Patent publication has been almost the same until 2007 while the percentage of the worldwide publication has gradually decreased depending on the increase of the number of other countries Patent publication.  Even the number of Japanese Patent publication decreases from 2008, it still has 22 % of the worldwide publication in 2010 (data prepared by JPO).

It is widely known that JPO finely classifies patent publication with specific classification codes.

From the above, Japanese Patent publication is accumulated for long time resulting in huge mega-data arranged according to fine classification.  Hence, Japanese patent publication is advantageous in searching for the prior art.

As for Chinese publications which have increased in recent years to account for 40 % of the worldwide publication in 2010, Japanese abstract data of Chinese utility model prepared by machine-translation can be available from March of 2012.  These machine-translated data are prepared from English abstract data.  However, human-checking might be conducted in the future and reliability may increase.  In addition, until March of 2013, Japanese abstract data of Chinese Patent will be prepared.

With respect to Japanese abstracts of US Patent and EPO application which have no corresponding Japanese Patent application, they have been manually translated and available as before. 

From the above, Japanese abstracts of Patent publication of US and EPO and Chinese utility model are classified and arranged in relatively high quality enabling higher quality search.

Why we can provide with high quality searching service

Today, we have many searching companies in Japan.  However, many clients feel frustration on unstable quality of the searching results.  Some of the reasons may relate to (i) each searcher has different levels of skills and abilities, (ii) a searcher is sometimes unable to understand the object and/or target of searching sufficiently.  These reasons can be solved by involvement of a patent attorney who has legal knowledge of IP and searching skills and is able to communicate with client.

However, Japanese patent attorneys have been used to deal with prosecution procedures before JPO and have little motivation to develop searching skills that is very difficult and time-consuming.  Hence, Japanese patent attorneys having reliable searching skills are very rare except for in-house searcher patent attorney of big pharmaceutical companies.

We have worked patent and trademark prosecution procedures for more than 15 years in Patent offices in chemical field, dealing cases of domestic and foreign big, medium-sized or small companies including English translation.  We have experienced some ex parte and inter parte court cases and also made written statements of an expert opinion on patents.  Based on the experiences, we are skilled in usage of various technical terms indicating the same, generic or specific concept as well as in various technical procedures, thus we are able to select keywords and to understand sorting codes easily.

In recent years, we have developed patent searching skills by attending high class seminar held by National Center for Industrial Property Information and Training (INPIT) which is an extra-departmental body of Japan Patent Office (JPO) and by attending Information Science and Technology Association Japan (INFOSTA) as a member.  As a result, we learned to prepare and assess searching formulae showing search quality and have the acquaintance of good searchers.

When you have a plan to search for Japanese prior art, please make contact with us.

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Steps of Invalidity Search

(a) To grasp the minimum invalidity range necessary for client.

(b) To understand what description is necessary for invalidity publication and to expect the description described in the objective publication.

(c) To prepare searching formulae by selection and combination of keywords and classification codes in order to obtain an appropriate hit number form mega-data without omission while avoiding unnecessary publications (noise) as far as possible.

(d) To conduct screening the hit publications in order to find objective Invalidity publication(s).

Quality of Invalidity Search

In order to maintain high quality Search, in the above steps (a) to (d), the followings should be noted.

(a) When the objective range to be invalidated is narrower than the claimed range, it is useless to find a material outside the objective range even it is within the claimed range.  In order to conduct effective search, close communication with a client is necessary for defining the objective range appropriately.

With respect to management of confidential information, our client is able to request us to conduct invalidity search safely.  District of Massachusetts court admitted the privilege covering a communication between Japanese patent attorney and a client referring to the Civil Proceedings Act of Japan (Article 220, Par. 4, Item C and Article 197, Par. 1, No.2) (VLT Corp. v. Unitrode Corp., 194 F.R.D. 8 (DC Mass. 2000).

It is available for our client to communicate with us in English or Japanese on the telephone.

(b) In addition to technical knowledge, legal knowledge regarding the invalidity of the target is necessary for expecting what description should be described in the target publication.

(c) In order to prepare searching formulae which is able to prevent the omission of target, to reduce the amount of noise and to obtain the hit number enabling visual screening, grasping the target search range, selection of appropriate data-base, knowledge about sorting codes specific to Japan Patent Office, and searching technique are necessary. 

(d) In screening, the expectation of the publication descriptions of the above (a) should be modified according to technical knowledge and legal knowledge.  After evaluation of the description of the hit publication, the most appropriate publication(s) is specified.

From the above, when a matured patent attorney with good searching skills conducts or manages searching with the above (a) to (d) steps, high quality search results can be obtained at reasonable cost.

For more information, please press INVALIDITY SEARCH (3).

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When a searcher knows what objective invalidity material is, invalidity material can be easily found when he luckily has the following conditions:

(i) The objective invalidity publication exists in the database.

(ii) The technical field of the search target is appropriate.

(iii) The used keyword is described in the publication.

(iv) The amount of publications published in the technical field is not huge, thus the hit numbers obtained by searching does not have a long list and visual inspection of all hit data can be done easily and the objective invalidity material will be obtained.

However、usually the above conditions (i) to (iv) are hardly fulfilled .

(i) Usually, it is not known if an objective invalidity publication exists or not, in addition, it is difficult for one who is not a skilled searcher to recognize what description is necessary for the invalidity publication.

(ii) Technical knowledge regarding the invention and knowledge regarding the sorting of techniques in the field is necessary for selecting a searching target field appropriately.

(iii) Whether the selected keyword is described in a publication or not is unknown, as well as selection of keyword is difficult because characteristic keywords in the technical field should be considered.

(iv) When the amount of publication published in the objective technical field is huge, the hit numbers of search become enormous making visual inspection impossible.  Therefore, more finely classified code in above (ii) should be selected and combined each other as the need arises.

With respect to a target publication in a form of image data whose text data does not exist in the database, keyword searching of (iii) is impossible, thus the above (ii) and (iv) become more important.

For more information, please press INVALIDITY SEARCH (2).

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