Discover IP JAPAN Conference 2018


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PROGRAM [Houston]

9:30 a.m. ~ 10:00 a.m.

Registration and Light Meal

10:00 a.m. ~ 10:20 a.m.

Welcome Remarks

10:20 a.m. ~ 11:00 a.m.

Plenary Session 1

“Benefits of Including Japan as a Key Part of Your Company’s IP Portfolio and Filing Strategies”

U.S. companies have many different factors to consider – strategy, costs, timing, and more – when choosing which countries to include as part of their IP portfolio and filing strategies. This session will provide insight into the reasons a U.S. company should consider the benefits and efficiencies of the Japanese patent system as a complement to the systems in the U.S. and other countries. Discussion will include commentary from licensed practitioners with experience incorporating both Japan and U.S. as co-existing points of focus in their company’s strategies.

Misty Blair, IP Counsel/Head of IP Legal Department, Kaneka Americas Holding, Inc.
Atsuyuki Fujimoto, Kaneka Corporation, Former JPO Examiner


11:00 a.m. ~ 11:15 a.m.

Coffee Break

11:15 a.m. ~ 11:45 a.m.

Plenary Session 2

“International Patent Exhaustion”

In this session, we will discuss international patent exhaustion in Japan. More specifically, we will introduce a Supreme Court decision on international patent exhaustion, and discuss whether patent owners can enforce their patent rights in Japan against their genuine products sold outside Japan and imported into Japan against their will. In addition, we will introduce some other perspectives on international patent exhaustion in Asian countries.

Tomoya Kurokawa, SOEI Patent & Law Firm


11:45 a.m. ~ 1:15 p.m.


1:15 p.m. ~ 2 :15 p.m.

Concurrent Sessions


Session 1:

“Patent Prosecution Practice in Japan – Tips for Obtaining a Patent”

In this session, we will introduce the general procedure for obtaining patents inJapan, including filing applications, responding to office actions and maintaining granted patents. We will highlight strategies for obtaining patents which to cover your product efficiently and sufficiently with some statistical data. In addition, we will introduce the requirements for a bio-tech patent, with a special focus on the enablement requirement. 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. practitioner.

Shusa Endo, AKIT Patent & Trademark Attorneys
Toshinori Tanno, Unius Patent Attorneys Office
Hiroyasu Ninomiya, Sonderhoff & Einsel Law and Patent Office
Yuichi Watanabe, Osha Liang LLP


Session 2:

“Strategic Enforcement of Patent Rights in Japan – What U.S. 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 enforcement in Japan. A panel discussion including a U.S. practitioner will provide practical tips for achieving substantial results through Japanese patent enforcement. We believe this session will help clear up most concerns about enforcing Japanese patents.

Naoki Okumura, Nakamura & Partners
Takeo Nasu, Nakamura & Partners
Steven Spears, Baker Hostetler


2:15 p.m. ~ 2:30 p.m.

Coffee Break

2:30 p.m. ~ 3:30 p.m.

Concurrent Sessions


Session 3:

“Post-Grant Review in Japan”

Both the U.S. and Japan offer tools to the public and third parties for revoking or invalidating patent rights. This session will provide a brief explanation of the different tools available in Japan and how to effectively utilize these tools in light of situation and timing. A U.S. speaker will then provide insight into the U.S. counterparts.

Toshifumi Onuki, TMI Associates
Peter Schechter, Osha Liang LLP


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 Japan and the U.S. with examples of icons/user interfaces and examples of functional designs.

Makoto Onda, ONDA TECHNO Intl. Patent Attys.
Yukei Mizuno, CoTech International
Margaret Boulware, Boulware & Valoir Intellectual Property Attorneys


3:30 p.m. ~ 5:00 p.m.

Cocktail and Networking