FOR FOREIGN IP COUNSEL
Comprehensive FAQ
40+ Answers for Foreign Counsel Working with EVORIX
Everything you need to know about engaging EVORIX for Japan patent, trademark, and design matters. Organized by topic for easy navigation.
🤝 Engagement
Q. How do I start an engagement with EVORIX?
A. Simply email us at info@evorix.jp or submit our contact form with a brief description of your matter. We respond within 24 hours with a fixed-fee quote and timeline.
Q. Do you require a retainer or upfront payment?
A. No retainer required. We invoice upon completion of milestones (filing, OA response, grant). For larger engagements (e.g., $10,000+ portfolios), we may request a deposit.
Q. Can I engage EVORIX for a single case?
A. Yes. We accept single-case engagements with no minimums. Many foreign counsel relationships begin with one case and grow from there.
Q. What is required from the inventor or applicant?
A. For most matters: just contact details and signature on the Power of Attorney. We prepare all other documents.
Q. Do I need to send original documents?
A. No. Scanned PDFs by email are sufficient. Originals are needed only in rare cases (e.g., notarized assignments for litigation).
Q. Can I transfer cases from my current Japanese counsel?
A. Yes. We routinely take over cases mid-prosecution. Transfer requires: (1) new Power of Attorney, (2) notification to JPO via Form 21. We handle the administrative paperwork.
Q. Do you have conflicts policy for trademark searches?
A. Yes. We run conflict checks against existing clients before accepting trademark matters. No conflicts identified in the past 5 years for prosecution matters.
Q. Can I have a video call with the responsible benrishi before engaging?
A. Yes. Initial consultation calls are complimentary and typically 30-45 minutes. Available in English, Japanese, or via interpreter for other languages.
💰 Costs & Billing
Q. What is your fee structure?
A. Fixed fees for routine matters: filings, OA responses, translations, annuities. Hourly billing only for complex litigation or strategic advisory. See our published fee schedule.
Q. Are JPO official fees included in your fees?
A. No. JPO fees are separate and paid as out-of-pocket disbursements. We provide a clear breakdown of attorney fees and official fees in every quote.
Q. What currency do you bill in?
A. Default invoicing in USD or JPY. Other currencies available on request. Bank transfers (SWIFT) or credit card payment accepted.
Q. Do you offer volume discounts?
A. Yes. Discount tiers: 5–10 cases/year: 5%, 11–25 cases: 10%, 26+ cases: 15%. Discounts apply to attorney fees, not JPO official fees.
Q. What are your payment terms?
A. Net 30 days from invoice. Some long-standing clients have net 60-day terms. Late payment surcharge: 1% per month.
Q. Are translation fees included in filing fees?
A. No. Translation is a separate line item, billed at $0.054 per English source word for our AI + benrishi hybrid (vs $0.08–0.10 at traditional firms).
Q. How much does PPH cost at EVORIX?
A. PPH itself is free at JPO (no official fee). Our attorney fee for preparing the PPH application and claims correspondence: $400–600.
Q. What's the average total cost from PCT entry to grant?
A. For a typical 15-claim, 10,000-word PCT application: $8,500–14,500 to grant. Including filing, translation, examination, OAs, and registration.
Q. Can I get a budget estimate for a 5-year portfolio?
A. Yes. We provide budget projections including filing, prosecution, and annuity costs for portfolio planning. Free service for clients managing 10+ cases.
⏱️ Timeline
Q. How quickly can you file a PCT national phase entry?
A. Standard turnaround: 3–5 business days from instruction to filing receipt. Rush service: 1–2 business days (50% fee surcharge).
Q. How long does Japanese patent translation take?
A. Standard: 5 business days for a 10,000-word application. Rush: 2–3 business days (+50%). We rarely refuse rush jobs.
Q. What is the typical time to grant for a Japanese patent?
A. Without PPH: 3–7 years. With PPH: 1–2 years. Time to first OA averages 12–18 months standard, 3 months with PPH.
Q. How long does an OA response take to prepare?
A. Standard: 10–14 business days for patent OAs, 5–10 days for trademark OAs. Rush service available.
Q. Can you handle urgent deadlines?
A. Yes. Our rush service can deliver filings or responses in 24–72 hours. Surcharge: 50% over standard fee.
Q. What is the JPO's typical OA response deadline?
A. 60 days from notification. Extension of 60 days is available with JPY 2,100 fee (we handle this routinely).
Q. How long is the PPH application processing at JPO?
A. JPO typically approves PPH applications within 1 month. After approval, first OA arrives in 2–3 months on average.
Q. What is the typical time from filing to first OA in standard examination?
A. 12–18 months for patents. 4–7 months for trademarks.
💬 Communication
Q. What languages do you communicate in?
A. Primary: English. Also Japanese (native), Chinese, Korean, German, French, Spanish, Portuguese, Italian, Russian, Turkish. Most foreign counsel work is conducted in English.
Q. What is your guaranteed response time?
A. 48 hours for general inquiries. 24 hours for engagement quotes. Same business day for urgent matters and existing clients with priority status.
Q. How do you handle time zone differences?
A. We operate on JST. For US East Coast: response by your next morning. For Europe: within same business day. We accommodate scheduled calls between 7am and 11pm JST.
Q. Do you share pre-action drafts before filing?
A. Yes, on request. For Office Action responses and key filings, we share an English summary of the proposed approach before drafting in Japanese. This adds 2–3 days to the timeline but greatly reduces revisions.
Q. How do you provide status updates on cases?
A. We send a status report email after each substantive action (filing, OA, grant). For large portfolios, we provide quarterly status reports with action items and recommended decisions.
Q. Can my client speak directly with the responsible benrishi?
A. Yes. We routinely arrange direct calls between foreign clients and our benrishi, with foreign counsel either joining or briefed afterward.
Q. Do you use case management software?
A. Yes. We use a customized HubSpot CRM with deadline tracking. Foreign counsel can be set up with portal access to see real-time case status.
Q. How do I escalate an urgent matter?
A. Email with "URGENT" in the subject line, or call our dedicated foreign counsel hotline (provided after engagement). Same-business-day response guaranteed for urgent matters.
📋 Procedure
Q. Can I file PCT national phase entry directly?
A. Foreign applicants must use a Japanese benrishi for JPO filings. We act as your local agent. National phase entry must be filed within 30 months from priority date.
Q. Do you handle PCT direct filing (international stage)?
A. Yes. We file PCT applications at the JPO Receiving Office for both Japanese-resident and foreign applicants where applicable.
Q. How does PPH work in Japan?
A. PPH allows accelerated examination based on a corresponding foreign application with allowed claims. JPO charges no fee for PPH. See our complete PPH guide.
Q. Can I amend claims at national phase entry?
A. Yes. Voluntary amendments at entry are common. This is the best time to restructure claims to comply with Japan's multi-multi claim rules (mandatory since 2022).
Q. What happens if I miss a deadline?
A. JPO offers a 6-month grace period with surcharge for annuities. For substantive deadlines (OA response), no extension after 120 days. Restoration under "due care" standard is rarely granted.
Q. Can I file a divisional application?
A. Yes. Divisional applications can be filed during prosecution, after final rejection (within 4 months), or during appeal proceedings. Useful for pursuing different claim scopes.
Q. How does Japan handle priority documents?
A. Japan accepts DAS (Digital Access Service) codes from most major offices. Paper certified copies are also accepted. No notarization or legalization required.
Q. What is the Japan trademark opposition procedure?
A. Post-grant opposition: 2 months after publication. Pre-grant opposition: not available. We have extensive experience in both filing and defending oppositions.
Q. Can I file a Letter of Consent in Japan?
A. Yes, especially after the 2024 practice update. JPO is more receptive to Letter of Consent for trademark refusals. We have a high success rate with this approach.
Q. Can foreign-language documents be filed at JPO?
A. For patents: foreign-language filing is allowed for PCT national phase entry, with Japanese translation due within 32 months. For trademarks and designs: all Japanese-only.
Q. What is the appeal procedure if my Japanese application is rejected?
A. Two routes: (1) Request for reconsideration before trial (within 4 months), (2) Appeal to JPO Appeal Board. If Board affirms, appeal to IP High Court (within 30 days).
🔤 Translation
Q. How does your AI + benrishi translation work?
A. AI provides initial draft → benrishi reviews and edits → claims-focused QA → optional client review → final delivery. Patent-law-grade quality at 30–40% reduced cost. See our translation process.
Q. Is AI-only translation safe?
A. No. AI alone produces translations with claim-scope errors that could invalidate patents. Always include benrishi review for filings.
Q. How much does translation cost?
A. $0.054 per English source word (8 JPY) — significantly below industry standard of $0.08–0.10. Volume discounts available.
Q. What languages do you translate from?
A. English, Chinese, Korean, German, French, Spanish, Portuguese, Italian, Russian into Japanese. Non-major source languages routed through English first.
Q. How accurate is your translation?
A. Quality assurance: AI draft + benrishi review + senior benrishi spot-check on claims. We provide back-translation summaries for verification.
Q. Can I use Google Translate and have you only check the claims?
A. Not recommended. Specification-defined terms must be consistent throughout. We strongly recommend full document review.
Q. Do you have specialty-matched translators?
A. Yes. Our benrishi pool covers IT, biotech, chemistry, mechanical engineering, electronics, and semiconductors. We assign matching specialty for each project.
Q. Do you offer rush translation?
A. Yes. Standard: 5 business days for 10,000 words. Rush: 2–3 business days (+50% fee). Available for filing deadlines.
Q. Do you build translation memories for ongoing clients?
A. Yes. For clients with 10+ patents per year, we build custom translation memories and terminology glossaries. Reduces cost by 10–20% on subsequent translations.
Have More Questions?
We're happy to discuss any aspect of Japan IP practice. Send your specific question by email and we'll respond within 24 hours.
FOR FOREIGN IP COUNSEL
Comprehensive FAQ
40+ Answers for Foreign Counsel Working with EVORIX
Everything you need to know about engaging EVORIX for Japan patent, trademark, and design matters. Organized by topic for easy navigation.