Advisory Opinion on Operability (AOO)

(1) Purpose of AOO

AOO is a service that aims to check the qualitative content of prior patents likely to affect a variety of issues related to products, project and research and development handled by enterprises, and provide guidelines for avoiding risks associated with intellectual property (IP) related disputes in advance. The AOO is prepared by a team of one attorney-at-law and one patent attorney, who are registered panelistsl.

It is not easy to detect risks involving IP disputes that might affect businesses when, for example, they plan to enter a market for the first time. OurAOO is a new, unprecedented type of service that not only analyzes the trends of IP dispute risks, such as an analysis of patent maps, but also attempts to provide the results of a more objective analysis and evaluation of these risks through the collaboration of one attorney-at-law and one patent attorney who are specialists in IP disputes.

(2) Outline of AOO

The AOO is an advisory service that is (1) provided to businesses of all sizes, including manufacturers, financial institutions, LLPs, LLCs, industry-university alliances, etc.

(2) The AOO reports on whether or not there is any prior patents (patents, patent applications, etc. that may be infringed upon or conflict with R&D themes, projects, etc.) likely to affect the applicant's R&D themes, projects, etc. at the stage of R&D, trial manufacture, product planning, mass-production readiness, etc.

(3) The AOO is based on a qualitative evaluation made jointly by one attorney-at-law and one patent attorney, who are pre-registered panelistsregistered.

The conclusion of the AOO is reported by sending in writing to the applicant (party requesting the AOO).
The AOO is an opinion of the panelists, who are experts appointed by the Center, and has no legally binding force on any party. No appeals (including lawsuits) may be filed against the AOO.

An applicant may request a prior consultation before submitting an application for an AOO.
The procedures are explained in the process flow chart.

1. AOO Phase 1

For a business project presented by an enterprise, on AOO Phase 1 determines, based on the investigation results of outside research organizations, whether or not there exists any prior invention or device by a third party likely to affect the project. (Only inventions or devices for which an application for a patent or utility model was filed in Japan. Hereinafter referred to as a "third-party invention.") This is a service for determining whether or not there exists any prior patented invention with which the applicant's project may conflict.

2. AOO Phase 2

The AOO Phase 2 determines whether or not there exists any prior third-party invention likely to affect the applicant's project, based on the results of the AOO Phase 1 or equivalent data provided by the applicant. While the AOO Phase 1 is a service for determining the possibility of conflict, AOO Phase 2 is a service for indicating the reasons for concluding that a third-party's prior invention may affect the project (e.g., "The problem is common to the applicant's project and the structure of Part X resembles that of the applicant's project.").

3. AOO Phase 3

In the AOO Phase 3, a detailed examination is made as to whether or not the applicant's project (or the applicant's product or production process) conflicts with a third-party invention that may affect the applicant's project, which had been detected by the AOO Phase 1 or equivalent data provided by the applicant. In addition to the AOO Phase 2, this AOO Phase 3 will also indicate in detail any conflicts with patented inventions.

Process Flow of AOO

1．Process Flow of Prior Consultation

2．Process Flow of AOO Phase 1

Agents

The application and the procedures for receiving an AOO may be made by the applicant or by the applicant's agent. An attorney-at-law or a patent attorney may serve as an agent. If an applicant wishes to appoint an agent who is neither an attorney-at-law nor a patent attorney, approval from the Center is required.

Panelists

The Center appoints one attorney-at-law and one patent attorney as panelists from among a list of candidates.

To verify that a panelist has no interest in the applicant to the AOO, the panelist shall be obligated to disclose such information, such as by submitting a written statement with respect to such interests to the Center and the applicant.

In addition, the applicant may, when submitting a written application, designate a party whom the applicant considers to be an interested third party in connection with the case by submitting in writing a designation of specific interested parties./p>

When there are circumstances that give rise to justifiable concerns as to a panelist's impartiality or independence, the applicant of the AOO may put forward a motion to challenge the panelist. When there are grounds for such a request, the Center will accept the challenge and appoint another panelist.

How to Apply for an AOO

The applicant should submit one original and two duplicate copies of a written application for an AOO to the reception counter of the Japan Intellectual Property Arbitration Center.

The following attachments are necessary for an application for an AOO:

(1) Certificate of qualification for the applicant's representative if the applicant is a corporation.
(2) Certificate proving an agent's representative capacity if the applicant has appointed an agent.
(3) Written explanation of the applicant's project in question (one original and two duplicate copies of documents specifying the product or production process of the project in question).
(4) Data showing the existence and details of the rights, such as a list of patents relating to the applicant's project in question (one original and two duplicate copies).
(5) Data showing the existence and details of the rights, such as a list of third-party prior patents (excluding an application for a AOO Phase 1).
(6) Written consent.

The documents in (1) and (2) above are official copies available at the Legal Affairs Bureau having jurisdiction over the region where the corporation is located, and must have been issued within three months prior to the application date.

As for the formats and samples, please see Formats and Samples of AOO Procedures below. If you have any questions, please contact the Center's secretariat.

Fees for AOO

（1） Prior Consultation

・Fee for prior consultation: \10,000

（2） Fee for investigations by outside research organizations

・Fee for investigations: \100,000 per technical field investigated

（3） Fee for Advisory Opinion on Operability Phase 1

・Fee for Advisory Opinion: \100,000 per technical field covered.

（4) Fee for Advisory Opinion on Operability Phase 2

・ Fee for Advisory Opinion n compliance: \600,000 per technical field covered. (For up to five Patent Gazettes. Fee for the sixth and subsequent Patent Gazettes: \20,000 per Patent Gazette.)

（5） Fee for Advisory Opinion on Operability Phase 3

・ Fee for Advisory Opinion: \900,000 per technical field covered.

Bank Account for Paying Fees

Account name: Secretariat of Japan Intellectual Property Arbitration Center (Nihon Chiteki Zaisan Chusai Center)
Bank name and branch: Sumitomo Mitsui Bank, Kasumigaseki Branch
Account type and number: Ordinary account, 6559091

Formats and Samples of AOO Procedures

Please see the following formats of AOO procedures:
（1）Written Application for AOO phase 1
（2）Written Application for AOO Phase 2
（3）Written Application for AOO Phase 3
（4）Written Consent
（5）Application for Prior Consultation

Procedural Rules for AOO

The procedures for an AOO will be conducted in accordance with the Procedural Rules for AOO.