Non-Infringement Opinions

Aki Ryuka
Japan Patent Attorney, Certified for IP Litigation
Attorney at law, California, USA

Step 1: Literal Non-Infringement opinion
Because the doctrine of equivalence (DOE) is very limited in Japan, it is sometimes determined that the DOE does not apply after the products, claims, specification, and file history are studied. However, the opinion cannot be made in Step 1, if the object of the invention is at least partially achieved, even if a feature of a claim is interchanged with the feature of the product.

Step 2: Non-Infringement opinion with detailed DOE analysis
The DOE is analyzed in accordance with the test adopted in Bawl Spline (Supreme Court, 1998).

Step 3: Non-Infringement opinion with foreign file histories
Technological reasonings in foreign file histories can be helpful. We study those reasonings and citations of counterpart foreign applications for reasonably limiting the claim interpretation.

If non-infringement opinion still cannot be drafted in Step 3, we suggest prior art searches. If a close relevant prior art reference is found, we may suggest an invalidity opinion.

Opinion Style
Our opinion explains 1) what we have studied, 2) claim chart, 3) claim interpretation, 4) DOC analysis, and 4) conclusion.

Fee Schedule
Our fees are calculated on an hourly-rate basis, which ranges from JPY 25,000 to 50,000 per hour. The below table shows our typical fees and time for the above Steps 1 to 3 for a single patent and a product.

For a second and later patent or product, our fees are discounted depending on the similarities of the features.

If you have any inquiries about our opinion work, please feel free to contact us.