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PRINCIPLE IN OPERATION

Translation

In-house employees perform translations under the supervision of Japanese patent attorney and US patent attorney. The international section of AKATSUKI has following translators.

  • One German-English-Japanese translator/Patent Engineer
  • Two In-house English-Japanese/Japanese-English translators

Review

Review of translation is performed by Japanese patent attorneys who have the legal expertise of applicable intellectual property laws and the appropriate technical background. The applicable intellectual property laws include the national law of the country in which the first application described in Paris convention article 4C(2) was filed.

Proposal of Amendment

Despite the harmonization efforts of WIPO and National Patent offices, Patent laws have differences in such as "Patentable Subject Matter", "Description requirement", and "Secret Prior Art". Japanese patent attorneys of Akatsuki are aware of the above difference and are able to propose an amendment for tailoring the application to Japanese Patent Law before the filing.

This amendment can be filed before the first office action or "Notification of Reasons for Refusal". Therefore, we will confirm the client's decision on the amendment when confirming the decision on "Request for Examination".

Communications (Attorney-Client Privilege)

All communications are under the supervision of the director of international section (Japanese Patent Attorney), for protecting all communications by Japanese civil procedure codes of 197 and 220 in Japan. In US discovery system (FRCP26), these communications are protected as the matter of comity citing the above Japanese civil procedure codes (See Eisai Ltd. v. Dr. Reddy's Laboratories, Inc., S.D.N.Y. Dec. 21, 2005, VLT Corporation v. Unitrode Corporation, 194 F.R.D.8, D. Mass. 2000).

If the communication includes US matter, the director of international section is further under the supervision of US legal counsel for protecting the communications by FRE501 and applicable common laws.

 

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