UBILAND Intellectual Property Office has track records of filing applications in more than 30 countries around the world, and is familiar with overseas rights-related information. At our office, every patent attorney has knowledge and experiences in foreign application.
So, patent attorneys in charge of domestic applications will be in charge of foreign applications. Therefore, it is possible to take measures based on the important technical features that have been heard in interviews when preparing for domestic applications, which makes it possible to acquire effective rights even in foreign countries.

Characteristics of Ubiland Intellectual Property Integration Office in Foreign Applications

At our office, patent attorneys in charge of domestic applications will be responsible for their foreign applications. Therefore, it is possible to take measures based on the important technical features that have been heard in interviews when preparing for domestic applications, which makes it possible to acquire effective rights even in foreign countries.
At the time of filing, prior to translation, we review the contents of the specifications of domestic applications based on the legal system and practice of each country.
At the time of the office action, under thee cooperative relationship with the foreign agent, each patent attorney will provide a response strategy based on the client's situation, rather than leaving it to the foreign agent. As a result, it is possible to obtain effective rights and reduce the cost of foreign agents.

About foreign applications

Necessity of foreign application

Even if you apply for patents or trademarks to the Japan Patent Office and can obtain patent rights or trademark rights, you can be protected by those rights only in Japan.
If you want to receive patent protection in a foreign country, you need to apply to each country and obtain patent rights there.

How to apply for a foreign patent

There are two routes to acquire patents in foreign countries.

• Route to apply directly to the foreign patent office of each country
• Route to file a PCT international application and later perform domestic transfer procedures to the patent office of the country where you want to acquire the patent right.

No matter which route you take, if you file a foreign application (or a PCT international application) within one year from the filing date of the basic application first filed in Japan, the priority effect will be obtained. The effect of priority is that a foreign patent office judges patentability such as novelty and inventive step based on the filing date of the basic application.

Therefore, usually, a patent application (domestic application) is first filed with the Japan Patent Office, and then you decide within one year whether or not to file a foreign application. If you decide to file a foreign application, you will have to choose either (1) the route to apply directly to the foreign patent office or (2) the route to file a PCT international application.

Advice from UBILAND Intellectual Property Office

We provide appropriate advice from the time of preparation for domestic application, considering the acquisition of rights in foreign countries.

For example, if you plan to file foreign applications with fully completed inventions, we will recommend that you file a PCT international application from the beginning. This makes it possible to reduce the "cost of domestic filing" compared to filing a PCT international filing after filing a domestic filing.

On the other hand, even if a foreign application is scheduled to be filed, if there is a possibility that the contents of the invention will be added, we may recommend that a normal domestic application be filed first in order to secure the filing date. After the domestic application, we will consider the contents to be added within one year and include them in the foreign application (or PCT international application). As a result, the effect of the priority date can be ensured for the contents described in the domestic application from the beginning. In addition, it will be possible to file a full-featured foreign application effectively.

How to apply for a foreign trademark

There are two routes to acquire trademark rights in foreign countries.

1. Route to apply directly to the foreign patent office of each country
2. Route to file international trademark registration applications based on the Madrid Agreement Protocol (commonly known as Madrid application or Madrid route)

Madrid application has the advantage that if you want to acquire in multiple countries the right of the same trademark that was applied for or registered in your home country, According to Madrid route, in principle () you can obtain the right at low cost and you can easily manage it compared with applying directly to each country. () After applying via Madrid route, examination will be conducted in each country. If the reason for refusal is not found as a result of the examination, it will be registered with no procedures, so cost advantage will be large. On the other hand, if a reason for refusal is found as a result of the examination, the cost advantage will be small in that country because the reason for refusal has to be dealt with through the procedure by a local agent.
In addition, there are some points to note when applying for Madrid application, so please contact us.