Understanding SME Divisional Patent Application Strategy and Value. “Daily Food”: Successful Appeal Against JPO Patent Refusals
Note Re. Kimura & Partners Japanese Patent Mini-Case Studies
Kimura & Partners publishes Patent and other IP Mini Cases. These cover the range of IP types across the numerous industries we work in. They are short summaries to inform IP professionals and businesses on salient issues relevant to IP law and business. If a certain case study hits the mark for you, you’ll be armed to deepen your knowledge before you take action, and increase your likelihood of success. We are always happy to discuss such cases or other matters with any readers who reach out to us.
We’ve worked with countless Japanese and foreign SMEs, and their leaders and inventors who are often one and the same. Kimura often refers to the “IP Battleground” given the challenges and risks such companies face. We salute SME’s globally as they are the engine for economic growth everywhere.
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Takaaki Kimura
Mini Case #1. Understanding SME Divisional Patent Application Strategy and Value
“Daily Food”: Successful Appeal Against JPO Patent Refusals
This mini case is a practical example of using Divisional Patent Applications as a means of building invention protection in Japan. For greater background detail, please see “Understanding Japan’s Divisional Application System” published August 21, 2021.
In the case of small and medium-sized enterprises (SMEs), most inventors are also the company presidents. At least initially and before business growth creates the need and opportunity for a deeper organizational structure. Inventor presidents of SMEs have their own individuality and strong character – characteristics usually necessary to have overcome the inevitable challenges on the road to successful invention and commercialization.
This invention relates to the idea of “food for one day”. The inventor is an authority on the practice of “daily food”, and a few years ago, another patent attorney filed a patent application for the basic invention and obtained the patent. Subsequently, we became the patent agent, however this inventor had very rational thinking and had considerable knowledge of patent law.
Even though it is called a “daily food”, it is a slightly special food. So when the examiner in charge, who is often among several examiners at each examination, did not agree with the opinion regarding the novelty and inventive step, the inventor chose to file an appeal without responding to the official action known as a “Refusal Notice” – the “Refusal Notice”being quite a unique type of correspondence.
We always have the divisional application strategy available – in fact we always file divisional applications at the same time as appeals. By the time we became the agent of his case, he had already filed a divisional application for the 4th generation, and we continued to utilize the divisional strategy for the 5th and 6th generations.
The purpose of the divisional application strategy is to form a “patent portfolio”. In other words, with regard to a certain technology, the strategy is to establish a large number of patents from multiple perspectives, build a “patent network”, and thoroughly eliminate infringement by other companies, which is very important for basic inventions. This strategy is typically adopted by large companies as a matter of course.
In the case of this president, he has a very high awareness of the patent system. Despite being an SME with limited budgets, it is wonderful that he has invested and filed divisional applications very diligently.
In the case of the present invention, the specification of the original application was very substantial. Specifically it was a “completed version” containing all embodiments and experimental examples, thus the data from various experimental examples could be extracted. As a result, many divisional applications could be established, and many patent rights were established.
If such a “patent portfolio” is established, it will be difficult for others to imitate and enter the market itself, so it is a traditional “closed strategy”. It is a very effective corporate defense measure.
If you file divisional applications multiple times, additional fees will obviously be incurred. This point is a often a challenge or problem for applicants. However, in this case, and in many cases, there is a special technology involved. Once we understood it, then we could protect multiple aspects of the same technology. Further, once the rights were initially granted, the time required for our Patent Attorney-related procedures has been gradually reduced and we have deftly dealt with the issue of initially higher costs.
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