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CASE STUDIES
Real Results for Foreign IP Counsel
Anonymized success stories from our Japan IP practice
For confidentiality, names and identifying details are altered. The case strategies, timelines, costs, and outcomes are real engagements from foreign IP firms working with EVORIX between 2022 and 2026.
5 Featured Cases — At a Glance
| Case | Country | Service | Outcome |
|---|---|---|---|
| #1 Rapid OA Response | US | TM Refusal Response | Allowed in 7 days |
| #2 PCT Optimization | Europe | PCT National Phase Entry | 50% cost reduction |
| #3 Letter of Consent | Korea | TM Refusal (Art. 4(1)(11)) | Successful LoC + registration |
| #4 PPH Acceleration | China | Patent Prosecution | Grant in 14 months (vs 4yrs) |
| #5 Portfolio Takeover | UK | Annuity Management | 100% deadline compliance, 35% cost saving |
Case #1: Rapid OA Response — Allowance in 7 Days
CLIENT PROFILE
Mid-sized US IP boutique representing a Fortune 500 consumer goods company. Foreign correspondent network previously included a large Japanese firm that was slow to respond and expensive.
CHALLENGE
JPO trademark Office Action issued with 60-day deadline. The client had already used 50 days. Foreign counsel transferred the case to EVORIX with 10 days remaining. Standard transfer + response work cycle typically requires 2-3 weeks.
OUR APPROACH
- Day 1: 4-hour case review and strategy memo to foreign counsel
- Day 2: POA collected and JPO transfer notification filed
- Day 3: Examiner interview requested and scheduled
- Day 5: Interview conducted; agreed claim amendments with examiner
- Day 7: Written response with agreed amendments filed at JPO
- Day 14: JPO allowance notification received
OUTCOME
Success: Trademark allowed within 7 days of transfer. Client retained for full Japan portfolio (15+ marks). Annual revenue: $25,000+ per year.
FEE
Total cost: $1,200 (including rush surcharge). Total time from transfer to allowance: 14 days.
Case #2: PCT Optimization — 50% Cost Reduction
CLIENT PROFILE
European patent firm (UK/Germany) representing a medical device company. Portfolio of 12 PCT applications targeting Japan national phase entry, each with EU-style multi-multi claims structure.
CHALLENGE
The 30-month deadline was approaching for 12 applications. Original quotes from previous Japanese firm totaled $180,000 — driven by extensive multi-multi claims (Japan banned multi-multi claims since 2022).
OUR APPROACH
- Pre-filing analysis: identified multi-multi claim issues in all 12 applications
- Claim restructuring: converted multi-multi to single-dependent claims, reducing total claim count by 40%
- Translation: AI-assisted hybrid (8 JPY/word vs traditional 12-15 JPY)
- Filed all 12 within 5 business days
- Submitted PPH applications for 8 cases with allowable EP/US claims
OUTCOME
Success: Total cost reduced from $180,000 to $90,000 (50% reduction). All 12 applications filed on time. PPH-approved cases received first OA in 3 months (vs typical 18 months).
Case #3: Letter of Consent Success — Korea-Japan
CLIENT PROFILE
Korean IP firm representing a global cosmetics brand. Filed Japanese trademark application receiving Article 4(1)(11) refusal citing a similar Japanese registered mark.
CHALLENGE
The cited Japanese mark was owned by a small Japanese cosmetics company with a different marketing channel and customer base. The client's only path forward was negotiating Letter of Consent — but the cited mark owner had been unresponsive to direct contact.
OUR APPROACH
- Investigated cited mark owner's actual business operations
- Sent culturally-appropriate inquiry letter in Japanese with detailed coexistence justification
- Highlighted differentiated markets: client = department store cosmetics; cited owner = local pharmacy supplements
- Negotiated and finalized LoC over 3 video calls
- Submitted LoC + coexistence justification to JPO under 2024 practice update
OUTCOME
Success: LoC accepted by JPO. Trademark proceeded to allowance and registration. Client continued partnership with EVORIX for ongoing Japan portfolio (45+ marks).
Case #4: PPH Acceleration — Grant in 14 Months
CLIENT PROFILE
Chinese IP firm representing a Chinese semiconductor company. Standard prosecution timeline of 3-5 years at JPO would expire commercial opportunity for the technology.
CHALLENGE
Client needed Japanese patent grant within 18 months for strategic deployment. The corresponding CN patent had been allowed, but US application was still pending. Translation accuracy was critical — semiconductor terminology requires expert handling.
OUR APPROACH
- Filed PPH at JPO based on allowed CN claims
- Used semiconductor-specialty benrishi for translation review
- Prepared comprehensive claims correspondence chart
- JPO PPH approval received in 28 days
- First Office Action issued in 2 months (vs typical 12-18 months)
- Responded with examiner interview and minor claim amendments
OUTCOME
Success: Patent granted 14 months after PCT national phase entry. Commercial deployment proceeded on schedule. Client expanded portfolio to 25+ Japanese patents with EVORIX.
Case #5: Portfolio Takeover — 35% Annuity Cost Saving
CLIENT PROFILE
UK pharmaceutical company with 320+ Japanese trademarks and patents previously managed by a large international IP firm. Annual annuity costs exceeded $250,000.
CHALLENGE
Client needed: (1) deadline guarantee — zero tolerance for missed annuities, (2) cost reduction, (3) strategic portfolio analysis for which patents to maintain vs abandon, (4) timely status reporting in English.
OUR APPROACH
- Conducted 8-week portfolio audit and migration of all 320+ cases
- Identified 45 patents recommended for license-of-right declaration (50% annuity reduction)
- Identified 28 patents recommended for abandonment (declining commercial value)
- Quarterly portfolio reports with action items for each pending decision
- Single point of contact (senior benrishi) for all communications
OUTCOME
Success: Annual annuity costs reduced from $250,000 to $162,500 (35% reduction). 100% deadline compliance over 3 years. Client now uses EVORIX as exclusive Japan correspondent.
What Foreign Counsel Say
"EVORIX delivers what large Japanese firms promise: fixed fees, fast English communication, and strategic insight. We've moved 80% of our Japan work to them in two years."
— Partner, US Boutique IP Firm
"The AI + benrishi translation approach saved our client 40% on translation costs while improving claim accuracy compared to the previous firm's pure-human translations."
— IP Manager, European Patent Firm
"Their PPH expertise is genuinely best-in-class. We've seen first OAs come in 2-3 months when previously we waited 18 months at JPO."
— Senior Counsel, Asian IP Firm
Common Questions About Working Together
Q. Can we get a reference from one of your existing foreign clients?
A. Yes, on request. With the referenced client's permission, we can connect you for a brief reference conversation. Most of our work is confidential, so we don't publish testimonials with names.
Q. How do these case studies translate to my type of practice?
A. Our experience spans IT, biotech, pharma, semiconductors, automotive, consumer goods, and more. Send us a description of your typical cases and we'll share relevant experience.
Q. Are these cases recent?
A. All cases are from 2022-2026 engagements. Cases #1, #2, and #5 are from 2025-2026. Cases #3 and #4 are from 2024.
Ready to Discuss Your Case?
Send us your case details — we'll respond within 24 hours with strategic recommendations and a fixed-fee quote.