SIKs & Co. Patent firm specializing in chemistry and bio-related fieldsSIKs & Co. Patent firm specializing in chemistry and bio-related fields

Patent firm specializing in chemistry and bio-related fields

ACHIEVEMENTS

We deal with cutting-edge technologies on a daily basis, have filed numerous applications in both Japan and foreign countries, and have dealings in over 90 countries across the globe

We have so far handled many filings of domestic applications not only from domestic clients but also from foreign clients. Also, we have abundant experience in handling foreign filing applications including PCT international applications. In filing foreign applications, it is necessary to draft high-quality English specifications. At SIKs, we prevent technical mistranslations by our patent attorneys directly checking the English translation of patent specifications. Furthermore, we appoint suitable foreign agents who are familiar with the corresponding technical field, and our patent attorneys personally prepare correspondences, which contain technical subject matter, to be frequently exchanged with foreign agents. We endeavor to work closely with our foreign agents by giving them appropriate instructions.

Administrative staff department

At SIKs, our patent attorneys and administrative staff work closely together, and we believe that we can provide the best services to our clients based on this close teamwork between our patent attorneys and administrative staff. SIKs’ administrative staff department consists of the following three departments; namely, the domestic application department which mainly handles affairs related to filings of domestic applications and PCT applications, the foreign application department which mainly handles affairs related to filings of foreign applications, and the department which handles general affairs, accounting and human affairs. Each department has 10 to 15 competent staff members, and a majority of the staff members of each department consists of persons with 5 to 10 years of experience who are familiar with various affairs and procedures. The general affairs group has two IT engineers who ensure that our electronic information system can be operated safely and securely on a daily basis.

Office management system

At SIKs, we use our self-developed office management system “S-PAT®” not only to manage procedural deadlines and cases, but also for centralizing various business affairs such as the automatic creation of various postal matter, management of various documents as electronic information, and accounting operations including the handling of billings from foreign agents.

Applications Filed by SIKs

Number of applications filed – Domestic (2019)

  • Patent applications
    • 714cases
  • PCT national phase applications
    • 244cases
  • PCT international applications
    • 270cases

Decisions on Cases Handled by SIKs

[1]Japanese Patent No. 2621842 “Process for Searching Stable Complex Structure of Biopolymer - Ligand Molecule”

IMMD Inc. (Patentee/Plaintiff: our client) vs. Sumisho Electronics Co., Ltd. (Defendant)... Case Seeking Injunction Against Infringement of Patent Right

(A)Tokyo District Court (2001 (wa) Case No. 21278)... Dismissal with prejudice on the merits

(B)Tokyo High Court (2003 (ne) Case No. 1223, our client: Appellant)... Revocation of original decision

(C)Supreme Court (2004 (ju) Case No. 997, our client: Appellee)... Supreme Court Decision (Dismissal of appeal: Decision which acknowledged the right to demand an injunction of the patentee that established an exclusive license: Law Report Vol. 59, No. 5, p. 1074)

[2]Japanese Patent No. 3737801 “Pravastatin sodium substantially free of pravastatin lactone and epi-pravastatin, and compositions containing the same”

Teva Gyogyszergyar Zartkoruen Mukodo Reszvenytarsasag (Plaintiff) vs. Tohri Co., Ltd. (Defendant: our client)... Case Seeking Injunction Against Infringement of Patent Right

(A)Tokyo District Court (2008 (wa) Case No. 16895)... Dismissal with prejudice on the merits

(B)Intellectual Property High Court (2011 (ne) Case No. 10057, our client: Appellee)... Dismissal with prejudice on the merits

(C)Supreme Court (2012 (ju) Case No. 2658, our client: Appellee)... Supreme Court Decision (Reversal of original decision, remanded to the Intellectual Property High Court: Decision which rendered judgment on the definiteness requirement regarding product-by-process claims: Law Report Vol. 69, No. 4, p. 904)

(D)Intellectual Property High Court (2015 (ne) Case No. 10093, our client: Appellee)... Dismissal with prejudice on the merits became final and binding based on the waiver of claim in the case remanded to the Intellectual Property High Court

Decision of this case

[3]Japanese Patent No. 3310301 “Intermediates for the synthesis of vitamin D and steroid derivatives and processes for preparation thereof”

Chugai Pharmaceutical Co., Ltd. (Patentee/Plaintiff) vs. DKSH Japan K.K. and three others (Defendant: our client)... Case Seeking Injunction Against Infringement of Patent Right

(A)Tokyo District Court (2013 (wa) Case No. 4040, our client: Defendant)... Acknowledgement of claim

(B)Intellectual Property High Court (Grand Panel Case: 2015 (ne) Case No. 10014, our client: Appellant)... Dismissal of appeal (infringement under the doctrine of equivalents was acknowledged)

(C)Supreme Court (2016 (ju) Case No. 1242, our client: Appellant)... Supreme Court Decision (Dismissal of appeal: Decision which rendered judgment on the fifth requirement under the doctrine of equivalents: Law Report Vol. 71, No. 3, p. 359)

[4]Japanese Patent No. 2648897 “Pyrimidine Derivatives”

Kenichi Hibino (Claimant) vs. Shionogi & Co., Ltd. (Patentee/Claimee) + AstraZeneca (Intervener)

(A)Appeared in court as the subagent for the oral proceedings of Invalidation Case No. 2015-800095 + Represented Nippon Chemiphar Co., Ltd. as Claimant’s intervener... Dismissal with prejudice on the merits

(B)Case Seeking Revocation of Trial Decision (Grand Panel Case: First case of 2016 (gyo ke) Case No. 10182, our client: Plaintiff)... Dismissal with prejudice on the merits