The roles, and relationships between Attorneys-at-Law (Attorneys) and Patent Attorney differs from country to country. Therefore, when companies or individuals want to obtain appropriate intellectual property protection in Japan, or any “foreign” country, it is very important to first confirm the institutional and practical relationship between Attorneys and Patent Attorneys in that country.
Doing so in advance of engaging either or both such agents may significantly impact the success of your IP matter, the speed of the outcome and legal fees. For IP registration and infringement related matters, there are differences in the Japanese system to other countries, so understanding the Attorney / Patent Attorney relationship will also reduce potential missteps and headaches.
We have seen how the outcome of cases vary greatly depending on which type of qualified agent you request, and also which firm and specific person you chose from each of those qualified agents. Conversely, finding the “right” agent to ensure that your business interests are protected in any “foreign” country can be very difficult.
Patent Attorneys in Japan versus the U.S.
Even in the United States, Attorneys and Patent Attorneys are naturally different occupations, and they play different roles. Patent Attorneys generally work as representatives / agents for the acquisition of IP in Patent Offices.
The same is true in Japan, but the agency system and circumstances are unique here. In Japan, Attorneys can legally perform the duties of Patent Attorneys by registering as Patent Attorneys in the Japan Patent Attorneys Association (JPAA). This point is an institutional system that is different from other Western countries such as the United States. However, the overwhelming majority of Attorneys studied law in university before passing the Japanese Bar, and in many cases have no background in technology, or in business.
Agent Roles in Patent Registration and Patent Disputes
Since the intellectual property business, especially patent business, is technical and specialized, so are the duties of a Patent Attorney. In most cases, Attorneys do not perform registration work related to intellectual property – patents or other IP. Therefore in Japan, from the outset, Patent Attorneys should be requested to handle IP registration work including search work, patent registration, etc.
With respect to IP dispute matters including out-of-court solutions, pre-litigation negotiations and litigation proceedings, these are basically areas where Attorneys are most expert. However, typically in patent cases the issues and materials content are very specialized and technical. Therefore, Attorneys often work jointly with Patent Attorneys during legal proceedings and / or play a vital role in negotiations before such proceedings.
Patent Attorneys have been allowed to represent clients before the courts in proceedings for revocation of PTO decisions made even before revisions of the law, also. Historically, as members of one side’s representatives in a law suit – in effect as legal assistants. However, Patent Attorneys are now co-representing clients alongside Attorneys in infringement proceedings with the prerequisite of passing prescribed examinations.
However, many Patent Attorneys generally have overwhelmingly little practical experience in dispute cases and litigation cases. In addition, especially in Japan, many Patent Attorneys tend not to like dispute cases, and even when asked to handle one, will often refer it to an Attorney-at- Law.
A Final Thought
IP cases are highly technical, and specialized to each industrial market or business field. Having a deep and nuanced understanding of the technical details can make the difference between success and failure. This is obviously true in IP dispute cases where often both sides put forward compelling arguments. A Patent Attorney’s deep experience in registering complex IP will be very valuable.
At the same time, and often unappreciated by companies at the registration stage, Patent Attorneys with experience in IP disputes and litigation can build stronger applications and secure stronger patents. They understand how to defend against infringement, and will incorporate this sense of intellectual property protection in their daily IP registration work to minimize the risks of IP disputes.
Also, the detailed experience that Patent Attorneys cultivate from their IP rights acquisition work plays a big role in infringement matters including law suits – experience that Attorneys-at-Law do not have. This underscores a substantive difference between Patent Attorneys and Attorneys-at-Law.
If non-Japanese companies want to properly protect their intellectual property in Japan, it is important to find a Patent Attorney who is “strong in conflict cases”. The reality, however, is that the number of such Patent Attorneys in Japan is extremely small.