JPAA Japan Patent Attorneys Association

PROGRAM

Seattle 12:00 p.m.-1:00 p.m.

Palo Alto 8:30 a.m.-9:00 a.m.

Registration and Light Meal

Seattle 1:00 p.m.-1:20 p.m.

Palo Alto 9:00 a.m.-9:20 a.m.

Welcome Remarks

Seattle 1:20 p.m.-2:00 p.m.

Palo Alto 9:20 a.m.-10:00 a.m.

Plenary Session
Benefit of the Japanese Patent Law System Over the U.S. Patent System in the Pharmaceutical Area

The Japanese pharmaceutical market ranks second after the United States. Recent uncertainties on patent eligibility from U.S. patent cases on natural products (ACLU v Myriad Genetics) and diagnostic methods (Ariosa v Sequenom) have reduced patent filings in the pharmaceutical/biotech area. However, such uncertainties do not exist in Japan. Due to the size of the Japanese pharmaceutical market, one should not be deterred from filing there. Furthermore, the speaker will discuss the benefit of the Japanese patent term extension system which can potentially extend patent exclusivity beyond that of the United States.

Speaker:
Seattle & Palo Alto: William HAN, GlaxoSmithKline

Seattle 2:00 p.m.-2:15 p.m.

Palo Alto 10:00 a.m.-10:15 a.m.

Coffee Break

Seattle 2:15 p.m.-3:15 p.m.

Palo Alto 10:15 a.m.-11:15 a.m.

Concurrent Sessions

Session 1:

“Patent Prosecution Practice in Japan – Tips for Obtaining a Patent in Japan”
In this session we will introduce the general procedure for obtaining a patent in Japan, including filing an application, responding to an office action and maintenance of a patent. We will introduce a strategic way to obtain a patent to cover your product efficiently and sufficiently with some statistical data. The session is divided into two parts: a presentation in the first part, and in the second part, we will explore the Japanese procedure in more detail with a U.S. patent attorney.

Speakers:
Seattle & Palo Alto:
Toshinori Tanno, Unius Patent Attorneys Office
Takeo Nasu, Nakamura & Partners
Hiroyasu Ninomiya, Sonderhoff & Einsel Law and Patent Office
Seattle: Robert J.M. Lee, Dorsey & Whitney LLP
Palo Alto: David Ahn, Fenwick & West LLP

Session 2:

“Strategic Enforcement of Patent Rights in Japan and Its Merits - What US Patentees Should Know When Enforcing Japanese Patents”

In this session, we will discuss how U.S. patentees can effectively enforce their Japanese patents as well as the merits of the enforcement. A panel discussion including a U.S. practitioner will provide practical tips on how to win substantial results through Japanese patent enforcement. We believe this session will help clear up most concerns about enforcing Japanese patents.

Speakers:
Seattle & Palo Alto:
Takao Matsui, Okabe International Patent Office

Seattle: Douglas F. Stewart, Bracewell LLP
Palo Alto: David S. Bloch, Winston & Strawn LLP

Seattle 3:15 p.m.-3:30 p.m.

Palo Alto 11:15 a.m.-11:30 a.m.

Coffee Break

Seattle 3:30 p.m.-4:30 p.m.

Palo Alto 11:30 a.m.-12:30 p.m.

Concurrent Sessions

Session 3:

“Latest Developments in Patent Litigation in Japan - Important Court Decisions for Exercising Patent Rights in Japan”

Japan is an important jurisdiction with regards to patent infringement lawsuits. To obtain a good outcome it is necessary to be aware of Japanese court decisions and then prepare a strategy based upon these decisions. The presentation will include important patent infringement lawsuit decisions and will cover pertinent topics, including claim construction, doctrine of equivalents, infringement of business method patents and damages.

Speaker:
Seattle & Palo Alto:Shimako Kato, Abe, Ikubo & Katayama

Session 4:

“Additional Approaches: Using Design Rights to Protect Your Technology in Japan”

This session will cover the benefits of obtaining design rights in Japan by introducing some unique features of the Japanese Design Act. We will also discuss the differences in design protection practices between the Japan and U.S. with examples of icons/user interfaces and examples of functional designs.

Speakers:
Seattle & Palo Alto:
Makoto Onda, ONDA TECHNO Intl. Patent Attys.
Tomoya Kurokawa, Soei Patent & Law Firm
Yukei Mizuno, CoTech International
Chikako Mori, Sun East IP Firm

Seattle: Kevan Morgan, Seed IP
Palo Alto:Miku Mehta, Procopio, Cory, Hargreaves & Savitch LLP

Seattle 4:30 p.m.-5:30 p.m.

Palo Alto 12:30 p.m.-1:30 p.m.

Cocktails and networking(Seattle)
Lunch and networking(Palo Alto)