Discover IP JAPAN Conference 2018


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PROGRAM [San Diego]

12:00 p.m. ~ 1:00 p.m.

Registration and Light Meal

1:00 p.m. ~ 1:20 p.m.

Welcome Remarks

1:20 p.m. ~ 2:00 p.m.

Plenary Session

“Benefit of Japanese Patent from Viewpoint of US Companies”

There are many factors U.S. companies should consider when making their IP portfolio internationally. Strategies, market sizes, costs, and so on. Benefits and efficiencies of the Japanese patent system should be considered as a complement to the systems in the U.S. and other countries. Example cases may be discussed.

Dan Altman, Knobbe Martens


2:00 p.m. ~ 2:15 p.m.

Coffee Break

2:15 p.m. ~ 3 :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 in Japan, 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
Mark M. Abumeri, Knobbe Martens


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
Brian M. Kramer, Morrison & Foerster LLP


3:15 p.m. ~ 3:30 p.m.

Coffee Break

3:30 p.m. ~ 4 :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
Kerry Taylor, Knobbe Martens


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
Paul Hunter, Foley & Lardner LLP


4:30 p.m. ~ 6:00 p.m.

Cocktail and Networking