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S a t o k o Yo k o g a w a Patent Attorney (benrishi) TEL: 81-3-6775-1414 Tokyo Office FAX: 81-3-6775-2414 Satoko Yokogawa is an experienced trademark attorney, regularly represents both local and international clients for a wide range of trademark proceedings. Her practice covers trademark prosecution; clearance searches; opposition, cancellation and invalidation proceedings; enforcement; design prosecution; and IP licensing and assignment. Practice Areas Intellectual Property/Life Sciences/TMT Trademark/Design Prosecution IP Disputes IP Licensing and Transactions Topics Articles New types of trademark infringement through trademark use on the internet - Comparative research on EU and Mar 2019 China Articles Using the ITC as Action against Trademark and Trade Dress Infringement Sep 2018 Articles New Examination Guidelines for Trademarks Indicating Criteria for Registering Catchphrases as Trademarks Oct 2016 Practice Groups Intellectual Property Law Group Background Mar 2002 Keio University (B.A. (Policy Management)) Apr 2002 - Jun 2005 Worked for Toshiba Ceramics Co., Ltd. (Currently, CoorsTek KK) Nov 2006 - Sep 2015 Worked for I'MEX PATENT OFFICE Sep 2017 - Apr 2018 Finnegan, Henderson, Farabow, Garrett & Dunner, Atlanta Office Publications New types of trademark infringement through trademark use on the internet - Comparative research on EU and China Website of Mar 2019 Ministry of Economy, Trade and Industry Using the ITC as Action against Trademark and Trade Dress Infringement Intellectual Property Management, Journal of JIPA Sep 2018 New Examination Guidelines for Trademarks Indicating Criteria for Registering Catchphrases as Trademarks Patents & Licensing Oct 2016 (Vol.46 No.3) October 2016 Professional Admissions Japan Patent Attorneys Association (2006) Qualified as a Litigation Patent Attorney ("Fuki-Benrishi") (2011) Professional and Academic Associations Japan Patent Attorneys Association (JPAA) INTA Languages Japanese (first language) English.

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Finnegan Japan RT 07
JAPAN ROUNDTABLE: Avoid invalidity risks in court IN ASSOCIATION WITH: 2007 JAPAN: ROUNDTABLE Many companies fear that initiating a patent infringement lawsuit in Japan is tantamount to inviting the courts to invalidate their rights. MIP and Finnegan Henderson jointly hosted a roundtable in Tokyo to consider inventive step, invalidity and successful litigation techniques in one of the world’s most important markets Avoid invalidity risks In association with: in court PO: What are the factors that make it difficult for plaintiffs to win still not brought to the court – that only happens at stage three. Of patent litigation in Japan? course, the defendant would want to avoid the risk of an injunc- NY: There are a lot of good reasons to file patent litigation in tion and therefore they will try their best to reach some kind of res- Japan. It is very, very fast, and injunctions are available. You could olution, so only those cases where such resolutions were not pos- even say it is easier than in the US. Also, judges are very experi- sible would be taken to court. enced. But the major concern that many companies have is that in AI: The viewpoint of Mitsubishi Heavy Industries on patents more than 80% of cases – of course you can dispute the statistics and, I suppose, of Japanese companies in general is that of course – but in more than 80% of cases the patentee loses, and I think if your technical development has a positive outcome you would when you have such a low success rate you will think twice before want to protect it.
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Japan Patent & Trademark Update
TMI Associates Issue7 (July 2017) Japan Patent & The reason for this misconception could be that some in the below graph, in 70% of patent infringement lawsuits First, as shown in the below graph, the number of patent In sum, the decrease in the total number of patent applications by 2007; however, the Defendant continued using the articles discuss statistics regarding Japanese patent the judges did not make any decisions on the validity of the applications filed from the other IP5 countries does not show seems to have mostly come from the change in patent filing trademark “Eemax”. The Plaintiff sued the Defendant for Unfair Trademark Update lawsuits based only on those cases which have reached a patents. Further, in 43% of patent infringement lawsuits, such a decrease. Rather, the number of patent applications filed policy, i.e., shifting the focus from quantity to quality Competition asserting that the Defendant’s use of “Eemax” was judgment. The information on settled cases, as shown in even though the plaintiffs made invalidation arguments, the by U.S. entities has actually been increasing since 2013. of patents, and not as a result of any decrease in the impermissible given that it is a well-known trademark of the the above graph, was not announced before, and such judges still did not make any decisions with respect to validity. importance of obtaining patent protection in Japan. Plaintiff, even if the Plaintiff had not registered the mark. In success rate could previously only be examined based on In other words, it is inappropriate to derive any significant Number of patent applications filed by foreign entities response, the Defendant filed a counterclaim asserting that the cases in which judgments were rendered.
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Role of Patent Attorney 2009.Pdf
CONTENTS Page I. Patent·······················································································································································1 1. General Views ·································································································································1 2. The Role of a Patent Attorney ·······································································································3 3. The Dialogue with Applicants·······································································································4 (1) Approach by Applicants··········································································································4 (2) Conflict of Interest ···················································································································5 (3) Responsibilities of Patent Attorneys······················································································8 4. Search ···············································································································································9 5. Preparation and Filing of Patent Applications·············································································9 (1) Documents Required···············································································································9 (2) The Task of a Patent Attorney ······························································································11 (3) Order
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February 25, 2015 Office of Policy and International Affairs Attention To: Ms. Soma Soha Mr. Edward Elliot United States Patent
Lion Building 1233 20 th Street N.W., Ste. 501 Washington D.C. 20036 Tel: (202) 955-3750 Fax: (202) 955-3751 Yoichiro Yamaguchi (202) 955-8788 [email protected] February 25, 2015 Office of Policy and International Affairs Attention to: Ms. Soma Soha Mr. Edward Elliot United States Patent and Trademark Office 600 Dulany Street Alexandria, VA 22314 Re: Comments on International Issues Related to Privileged Communication between Patent Practitioners and Their Clients Dear Ms. Soha and Mr. Elliot: In response to the Request for Comments on International Issues Related to Privileged Communication between Patent Practitioners and Their Clients, published on January 26, 2015, at 80 Fed. Reg. 3953, I respectfully submit the following comments which are focussed on international issues only. Question 4. Explain how U.S. stakeholders would be impacted by a national standard for U.S. courts to recognize privilege communications with foreign patent practitioners, including potential benefits and costs. In a foreign country where no discovery in civil action is available, the national standard for U.S. courts to recognize privilege communications with a foreign patent practitioner in the foreign country has no impact, because there is no way for a civil court in the foreign country to require a party to force a testimony or to produce a document in that country concerning contents of a confidential communication. See Astra Aktiebolag v. Andrx Pharmaceuticals Inc. , 64 USPQ2d 1331 (DC S.D.N.Y. 2002) in connection with South Korea. In this context, the communications of the U.S. stakeholders with the foreign patent practitioners are privileged under the national standard for U.S.
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Patent Litigation in Japan David W
The University of Akron IdeaExchange@UAkron Akron Intellectual Property Journal Akron Law Journals March 2016 Patent Litigation in Japan David W. Hill Shinichi Murata Please take a moment to share how this work helps you through this survey. Your feedback will be important as we plan further development of our repository. Follow this and additional works at: https://ideaexchange.uakron.edu/akronintellectualproperty Part of the Intellectual Property Law Commons, International Law Commons, and the Litigation Commons Recommended Citation Hill, David W. and Murata, Shinichi (2007) "Patent Litigation in Japan," Akron Intellectual Property Journal: Vol. 1 : Iss. 2 , Article 1. Available at: https://ideaexchange.uakron.edu/akronintellectualproperty/vol1/iss2/1 This Article is brought to you for free and open access by Akron Law Journals at IdeaExchange@UAkron, the institutional repository of The nivU ersity of Akron in Akron, Ohio, USA. It has been accepted for inclusion in Akron Intellectual Property Journal by an authorized administrator of IdeaExchange@UAkron. For more information, please contact [email protected], [email protected]. Hill and Murata: Patent Litigation in Japan PATENT LITIGATION IN JAPAN David W. Hill*& Shinichi Murata** I. INTRODUCTION There are many differences between the U.S. and Japanese judicial systems. For example, Japan has no jury trial or thorough discovery sys- tem comparable to the system in the United States, and treble damages are not allowed in Japan. These judicial differences have been reflected in the patent litigations taking place in the two countries. In the past, many observers said that it took a very long time and was burdensome to enforce patent rights in Japan, and the amounts of damages awarded by Japanese courts were usually small.
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Japanese Patent Law and the WIPO Patent Law Harmonization Treaty: a Comparative Analysis
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Japan's Report on Awareness of Intellectual Property And
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Foreign Trade Barriers 193 Japan
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View and Download As
NEW YORK STATE BAR A SSOCIATION One Elk Street, Albany, New York 12207 • PH 518.463.3200 • www.nysba.org New York State Bar Association Committee on Professional Ethics Opinion 1072 (11/13/15) Topic: Partnership, multi-jurisdiction Digest: Before entering into a partnership with a foreign lawyer, a New York lawyer must engage in an independent inquiry to confirm that the educational requirements for the foreign lawyer are equivalent to those for a New York lawyer and that such a partnership would not compromise the New York lawyer’s ability to uphold the ethical requirements of this State, including those governing attorney-client confidentiality. Both determinations are beyond the jurisdiction of this Committee. Rules: 5.4(b), 5.8(a), 7.5(d) FACTS Background 1. The inquiring lawyer would like to form a partnership with a Japanese “benrishi,” a professional licensed to practice intellectual property law under Japan’s Patent Attorney Act (the “Act”). A benrishi may practice patent, copyright, trademark, unfair competition and trade secret law. They may represent clients in administrative and some court proceedings, custom seizure matters, the prosecution of trademark applications and negotiations regarding intellectual property rights. 2. Benrishi differ from patent attorneys licensed to practice patent law in the United States. One significant difference is that benrishi do not need to have a law school degree. The bar exam they must pass focuses on intellectual property law.1 3. Benrishi also differ from patent agents in the United States. They may represent clients in court in certain matters, including before the Tokyo High Court concerning appeals from the Japan Patent Office.
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Japan's New Patent Attorney Law Breaches Barrier Between the "Legal" and "Quasi-Legal" Professions: Integrity of Japanese Patent Practice at Risk?
Washington International Law Journal Volume 10 Number 3 5-1-2001 Japan's New Patent Attorney Law Breaches Barrier Between the "Legal" and "Quasi-Legal" Professions: Integrity of Japanese Patent Practice at Risk? Lee Rousso Follow this and additional works at: https://digitalcommons.law.uw.edu/wilj Part of the Comparative and Foreign Law Commons, Intellectual Property Law Commons, and the Legal Profession Commons Recommended Citation Lee Rousso, Comment, Japan's New Patent Attorney Law Breaches Barrier Between the "Legal" and "Quasi-Legal" Professions: Integrity of Japanese Patent Practice at Risk?, 10 Pac. Rim L & Pol'y J. 781 (2001). Available at: https://digitalcommons.law.uw.edu/wilj/vol10/iss3/9 This Comment is brought to you for free and open access by the Law Reviews and Journals at UW Law Digital Commons. It has been accepted for inclusion in Washington International Law Journal by an authorized editor of UW Law Digital Commons. For more information, please contact [email protected]. Copyright 0 2001 Pacific Rim Law & Policy Journal Association JAPAN'S NEW PATENT ATTORNEY LAW BREACHES BARRIER BETWEEN THE "LEGAL" AND "QUASI- LEGAL" PROFESSIONS: INTEGRITY OF JAPANESE PATENT PRACTICE AT RISK? Lee Roussot Abstract: In order to increase the quantity of intellectual property related legal services made available to the public, the Japanese Diet enacted a complete revision of Japan's eighty-year-old Patent Attorney Law. Under the terms of the new law, which became effective on January 6, 2001, benrishi (patent attorneys) have authority to greatly expand their range of professional activities. The newly recognized activities encroach upon the statutory monopoly long enjoyed by Japan's bengoshi (attorneys).
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Attorney Client Privilege (ACP) Problem in Japan
WIPO/AIPPI CONFERENCE ON CLIENT PRIVILEGE IN INTELLECTUAL PROPERTY PROFESSIONAL ADVICE Geneva, May 22 and 23, 2008 Attorney Client Privilege (ACP) Problem in Japan Yuzuru Okabe Patent Attorney of Japan [Slide: 1] ACP Problem in Japa n [Slide: 2] The problem of Attorney Client privilege for Japanese patent attorney or agent ( benrishi) goes back to 1970s. In many decisions related to AC privilege for non -lawyer IP professionals, US judges expressed variety of different views. Some jud ges say that the ACP is admitted only for the bar members of the United States and some judges say that non -lawyer patent agent even outside of the U.S. should enjoy the ACP. Although various way of thinking were expressed by U.S. judges , the typical view which later became the main stream can been seen in Duplan Corp. v. Miliken Inc. issued on May 30, 1974. In Duplan Corp. v. Miliken Inc., Judge said that: 1.Basically, ACP is admitted only to a member of the bar of a court in the U.S. 2.Any communication touching base with the U.S. will be governed by the U.S. Federal Discovery R ules. 3. Any communications related to matters solely involving foreign country will be governed by the applicable foreign law. [Slide: 3] In accordance with this “touching base ” theory, many decisions denied the applicability of ACP to Japanese benrishi . An example of such a decision is Santrade Ltd. v. General Electric issued on April 15, 1993. In the decision, judge ruled that: 1 Article 281 of the Japanese Code of Civil proc eeding refers to the applicability of privilege.
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Intermediary Functions and the Market for Innovation in Meiji and Taishō Japan
Tom Nicholas and Hiroshi Shimizu Intermediary Functions and the Market for Innovation in Meiji and Taishō Japan Japan experienced a transformational phase of technological development during the late nineteenth and early twentieth centuries. We argue that an important, but so far neglected, factor was a developing market for innovation and a patent- attorney system that was conducive to rapid technical change. We support our hypothesis using patent data and we also present a detailed case study on Tomogorō Ono, a key devel- oper of salt-production technology who used attorneys in con- nection with his patenting work at a time when Japan was still in the process of formally institutionalizing its patent-attorney system. In accordance with Lamoreaux and Sokoloff’s 1999 infl uential study of trade in invention in the United States, our quantitative and qualitative evidence highlights how inven- tors and intermediaries in Japan interacted to create a market for new ideas. ew episodes in modern business history can match the scale and F signifi cance of Japan’s economic reversal from relative economic backwardness during the feudal Tokugawa period to Meiji era modern- ization. At the heart of this transformation was a concerted push by the new Meiji government to nurture industrial development.1 New institu- tions, such as legal frameworks permitting limited liability businesses to be established and a banking system to channel fi nance into industry, created a radically different economic environment for development. Technological innovation was prioritized by the government. Notably, The authors thank Teresa Amabile for providing funding via Harvard Business School’s Division of Research and two referees for very helpful comments and suggestions.
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