The Patent Attorney Profession in Japan. Their Role compared to Attorneys – at – law.

In Japan, the patent attorney profession is not as well known as those of attorneys – at – law and certified accountants. It is important to understand the differences between Attorneys-at-law and Patent Attorneys in Japan. For SMEs, the business can be at stake.

The Basic Situation and Difference

The basic occupation of patent attorneys is the registration-related work of industrial property rights (patents, utility models, designs, trademarks) in Japan and abroad. The Japanese patent attorney system is similar to the European system, especially the German system, but is quite different than the US system.

Attorneys – at – law in Japan can also become patent attorneys by registering in the Japan Patent Attorneys Association. However the practice of acquiring patent and trademark rights is very specialized. The patent attorney’s daily work of obtaining rights such as drafting claims and specifications for patents and utility models, responding to notices of refusal, etc. requires experience and expertise in order to be efficient and effective. 

The reality is that there are very few attorneys – at – law engaged in this kind of specialized work: see Article 2 of the Patent Attorneys Act, and it cannot be legally performed if one has not registered as a patent attorney. Even if an attorney – at – law is registered as a patent attorney, it is impossible to do it as a professional that can properly protect customers without first completing a long training period.

In my case and those of my respected peers, we can do the drafting of patent claims and specifications, preparation of opinions, and filing appeals with confidence from the viewpoint of customer protection. With confidence in predicting the result of our work, we inevitably obtain that specific result. 

The patent system, IP law system, and associated practices are not broad, but profound in their importance. Many patent attorneys consider that drafting claims and specifications is a lifelong practice. Our daily work is a rather modest yet effort-intensive work: in the event of a dispute, however, experience with this modest work will always be useful.

Because patent attorneys conduct such rights acquisition work on a daily basis, should our client ever become a plaintiff, we will be capable of more deeply considering the infringement, and associating the description of the specification and the scope of claim with the infringement of the alleged infringer. Similarly, should a client become a defendant, we can far more deeply understand the right holder’s patent specification and more ably assess the strengths and weaknesses of the right, which will lead to the protection of the defendant.

Therefore, the patent attorney profession is consistently involved – “from the cradle to grave”. From the birth of the intellectual property, to the maintenance of rights, to handling dispute cases, and IP utilization, we can oversee it all. There are attorneys – at – law specializing in IP disputes in Japan, but we respectfully submit that their skill set is typically different from that of patent attorneys.

Regarding IP dispute cases, however, in order to become proficient patent attorneys need to thoroughly study and gain related experience. Regarding law suits, it has been possible to act alone in suits to revoke trial decisions for several decades. Even in infringement law suits, due to the subsequent amendment of the law regarding patent attorneys, after passing the examination following the prescribed training, patent attorneys can represent clients in infringement proceedings as a joint agent with an attorney – at – law. This is similar to the European patent attorney system, including the United Kingdom.

However, even with such qualifications, in Japan there is the tendency for most patent attorneys to specialize in so-called rights acquisition work such as drafting specifications, and to basically avoid being involved in dispute cases. 

In my case, I have deep experience with infringement lawsuits so my patent claims and specifications are the basis for exercising patent rights, in anticipation of being exposed to the evaluation of another party. When doing so I contemplate how I can properly protect customers, and I’ve had many sleepless nights as a result.

From the time I started working as a patent attorney, I had no choice but to be involved in dispute cases, whether I liked it or not. If you try to fully protect your SME (small and medium-sized enterprise) clients, you cannot avoid eventually handling dispute cases. Over time, in fact, my confidence in doing so grew and it profoundly improved my abilities in assisting clients “from cradle to grave”.

Sharing More Of My Experience.

In Japan, it is rare for large companies to launch lawsuits against other ones. Most of them have a culture that disputes can be resolved through discussion and solutions such as cross-licensing. On the other hand, in the case of SMEs, their personal and corporate lives depend on protecting their market with the acquired rights and it is often the case that they do not hesitate to warn infringers or sue them.

As a result, I am always learning from experiencing various dispute cases while supporting SMEs –  and the learning is greatly reflected in the rights acquisition work that we do. I will share more of this learning below.

As a matter of course, it is not enough to obtain patent or trademark registrations: there is no point in acquiring them unless they can actually protect the business. Large companies  typically obtain a large number of rights in forming a so-called “patent portfolio”, and it takes a lot of time and money. 

On the other hand, SMEs are overwhelmingly unable to afford such money and time. So their IP and patent strategies must be very different than large companies. A very small number of rights, and in some cases just one right, must protect their business. As a matter of course, the weight and importance of one patent or trademark registration is very large, and the responsibility of the patent attorney acting on behalf of such SMEs is heavy.

This is the reason that patent attorneys acting on behalf of large companies are often troubled and hesitant when dealing with SMEs: the way to protect their large clients is totally different. 

If we truly want to effectively support SMEs with intellectual property, we must not avoid dispute cases. Therefore, in order to truly protect SMEs, which account for 97% of Japanese companies, I strongly hope that more patent attorneys will become involved in such dispute cases, including infringement law suits.

In conclusion, such an understanding of SMEs will advance the role of patent attorneys in supporting them, and society, which in turn leads to the strengthening of the IP protection system. For SMEs especially, also understanding the differences between Attorneys-at-law and Patent Attorneys in Japan is important.

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By Takaaki Kimura

Managing Partner and Patent Attorney with over thirty-five years of IP law experience.