Yuichi Watanabe Osha Liang LLP January 26, 2016 Practice Tips: Prosecution of Japan-origin US applications 1 © AIPLA 2015

Drafting the original (Japanese) application  From US practice perspective  From translation perspective Filing options in the US  Convention application  PCT national phase application or “bypass” application Working with US agents/associates Outline - Practice tips regarding: 2 © AIPLA 2015

Drafting Japanese specification from US (or international) perspective  Keep the Background section short and concise o Avoid emphasizing disadvantages of the background art--instead, emphasize advantages of the invention in Detailed Description section o Avoid describing the “history” of how the inventors came up with the invention  Avoid describing what is NOT prior art o If you describe another person’s work as “prior art” anywhere in the specification, then your description can be used as admitted prior art even if it does not qualify under 35 U.S.C. 102 (MPEP 2129) Drafting original (Japanese) application 3 © AIPLA 2015

Drafting Japanese specification from US (or international) perspective – cont’d  Keep the Summary section short and concise o Best to mirror language of independent claims o Save details for Detailed Description section  Describe more than one embodiment o Generally, the more embodiments the better o Describe alternative embodiments even if they are less than ideal  Avoid descriptions with direct reference to “the preferred embodiment” or “the invention” Drafting original (Japanese) application 4 © AIPLA 2015

Drafting Japanese specification from US (or international) perspective – cont’d  Describe various structures for implementing the invention, even if the structural aspects of the invention are not novel o Identify not only the structural components, but also various physical attributes (e.g., inputs/outputs)  Avoid overly relying on knowledge of person skilled in the art o Particularly important when describing how to implement/practice the invention Drafting original (Japanese) application 5 © AIPLA 2015

Drafting Japanese claims from US (or international) perspective  Consider US claim format and claim construction rules o Use outline claim format, as opposed to narrative format o Avoid lengthy preambles or unnecessary repetition  Draft more than one independent claim, and draft claims directed to different categories or statutory classes o E.g., apparatus claims, method claims, composition claims, CRM (computer-readable medium) claims Drafting original (Japanese) application 6 © AIPLA 2015

Drafting Japanese claims from US (or international) perspective – cont’d  Avoid reciting terms/phrases that are not mentioned in the specification o Terms/phrases in claims should be consistent with terms/phrases in specification  Avoid terms/phrases that may invoke 35 U.S.C. 112(f) o Avoid “means” and “nonce” words (e.g., unit, module, section, part, etc.) modified by function (“configured to”) o For apparatus/device claims, recite structural features of the claim elements and structural relationship among those elements Drafting original (Japanese) application 7 © AIPLA 2015

Drafting the Japanese application from Translators ’ perspective  Use short, simple sentences  Be precise  Be consistent  Identify subject of each sentence  Clarify nouns as singular or plural  Avoid making up words or using uncommon words  Avoid useless verbiage Drafting original (Japanese) application 8 © AIPLA 2015

Direct (Paris Convention) route  File in any Paris Convention country within 12 months of original JP application filing date o May be more cost effective than PCT route when filing in three or fewer countries.  The US (English) application need not be a literal translation of JP application o US application can be revised (customized in view of US law and practice) as long as no new matter is introduced Filing options in the US 9 © AIPLA 2015

PCT route  File in any PCT country within 30 months (31 in some countries) of earliest filing date  Provides opportunity to evaluate prior art (cited in International Search Report/Written Opinion) and make amendments  Note: Paris Convention currently covers 176 countries, whereas Patent Cooperation Treaty covers 148 Filing options in the US 10 © AIPLA 2015

PCT route (two routes)  National phase route under 35 U.S.C. 371 o Treated as the same application as the PCT application (simply transferred from international phase to national phase) o If PCT application is not in English, then English translation (literal translation) must be submitted  “Bypass” continuation route under 35 U.S.C. 120, 363, and 365 o Treated as a separate application from the PCT application (i.e., treated like a regular US continuation application) o No need to submit literal translation of PCT application Filing options in the US 11 © AIPLA 2015

Advantages of bypass applications  Like Paris Convention applications, bypass applications can be freely revised “off the record” prior to filing (as long as no new matter is added) o National phase applications can be revised at time of filing, but only by way of preliminary amendment filed with USPTO  Substitute specification and marked-up specification also required when amending specification (volume of paperwork could be huge) Filing options in the US 12 © AIPLA 2015

Advantages of bypass applications – cont’d  In the past, bypass applications were processed more quickly than national phase applications (less true today)  Prior to America Invents Act (AIA), non-English PCT application publications were not given 35 U.S.C. 102(e) date o After AIA, 102(e) date no longer an issue Filing options in the US 13 © AIPLA 2015

Advantages of national phase applications  USPTO fees ($1480) slightly lower than bypass applications ($1600)  Restriction standard is PCT’s “unity of invention,” which may be more liberal than US restriction standard In general, bypass applications are preferable if any revisions need to be made Filing options in the US 14 © AIPLA 2015

Seek (and listen to) advice from your US associates  Do not assume US practice is same as JP practice Send instructions early, give US associates chance to seek clarification/ask questions Provide clear instructions, but allow US associates to exercise their professional judgment and discretion Working with US agents/associates 15 © AIPLA 2015

Yuichi Watanabe Partner Osha Liang LLP Two Houston Center Suite Fannin St. Houston, TX Questions? Please Thank you for your attention! 16 © AIPLA 2015