April 2014 Trip Report - American Intellectual Property Law

AIPLA - IP Practice in Japan Committee
April 7-10, 2014 Japan Trip Report
Prepared by: Chris Fildes
This year’s Japan Trip included a delegation of 21 AIPLA members traveling to Tokyo
and Osaka, Japan. The delegation included:
AIPLA Leadership:
President: Wayne Sobon
Past President: David Hill
Past President: Alan Kasper
Committee Co-Chair: Chris Fildes
Committee Co-Chair: Daphne Lainson
and Committee Members:
Monica Barone (first-time delegate)
Joseph Calvaruso (steering committee)
Kerry Culpepper (first-time delegate)
Michael Dunnam
Thomas Engellenner
Raymond Farrell
Ron Harris
Neil Henderson (steering committee)
Kevin Kunzendorf
George Lewis (steering committee)
Steven Meyer
John Pegram
Donald Studebaker
Joerg-Uwe Szipl
Yuichi Watanabe (first-time delegate)
Stephen Wentsler (steering committee)
Delegates met with influential governmental and public organizations involved in
Intellectual Property procurement, policy and enforcement to discuss issues of current
interest to Japanese IP practitioners, Japanese IP judges and Patent Office officials.
Specifically, the delegation met with members of the Japan Patent Office, AIPPIJapan/Japan Federation of Bar Association (a joint meeting), Licensing Executive Society
of Japan, US Embassy, Japan Patent Attorney Association, American Chamber of
Commerce in Japan, IP High Court, Japan Intellectual Property Association, and Japan
Trademark Association.
1
Highlights of the Delegation Visits
Japan Patent Office (JPO) – April 7, 2014
The visit with the JPO officials included:
i) a private meeting with the JPO Commissioner Hato and Assistant
Commissioner, Mr. Kihara;
ii) a meeting with the Trademark division; and
iii) a meeting with the International division and the Patent Examination
division.
The private meeting was attended by David Hill, Alan Kasper, Chris Fildes,
Daphne Lainson and George Lewis during which parties discussed a variety of topics
including harmonization and attorney-client privilege, new proposed Japanese law
revisions, NPE activities and possible legislation, ISA competency and cost, and the
integration of PPH and PCT. During the meeting, Commissioner Hato emphasized the
importance of proper pressure from users to advance harmonization discussion within IP5.
The delegation was split into two groups in order to allow for extensive meetings
with both the Trademark division and the International and Patent Examination divisions.
The meeting with the trademark division was hosted by Hiroshi Moriyama,
Director for Trademark Examination Planning, JPO. During the meeting both JPO and
AIPLA participants discussed classification of goods and services, quality management
and examination period and system for cancellation of a trademark due to loss of
distinctiveness after registration. George Lewis made a presentation on non-traditional
trademarks.
The meeting with the International division and the Patent Examination division
was hosted by Director Nakano and included presentations by AIPLA on NPE’s, PTAB
update, Presumption of Validity, Current State of Section 101, and Proposed Rules to
Implement Title 1 of the PLT. Both sides made presentations regarding PCT and PPH.
AIPPI (Association Internationale pour la Protection de la Propriete Intellectuelle)Japan/JFBA (Japan Federation of Bar Associations) April 7, 2014
During the combined meeting a panel discussion presented differing views on the
employee invention system in Japan. Summaries of recent High Profile Court decisions
in Japan were presented and AIPLA gave an overview of pending U.S. Supreme Court
cases.
2
LESJ, April 7, 2014
The LES Japan meeting focused on F/RAND issues. The lawsuit between Apple
and Samsung in Japan was thoroughly discussed, and AIPLA made an excellent
presentation on Standards and F/RAND Licensing.
Women in IP Law Meeting, April 7, 2014
Co-Chair Daphne Lainson arranged the third annual Women in IP Law Meeting
for the purpose of providing a unique venue for the female IP professionals from US and
Japan to get together to exchange information with each other and to forge stronger
professional and personal relationships. There were approximately 20 women IP
professionals from Japan in attendance. The attendees included members of the Japan
Patent Attorneys Association, the Japan Trademark Association, and the Licensing
Executive Society of Japan. AIPLA had three members attend the meeting: Committee
delegates Monica Barone and Daphne Lainson, and previous Committee delegate,
Committee member and past AIPLA board member Mercedes Meyer. At the event, there
were open discussions relating to mentorship, successorship and the advancement of
women within the IP profession. Ms. Karou Karoda shared her personal experiences, and
Mercedes Meyer gave a presentation on mentorship and sponsorship. There were also
table discussions related to these topics.
US Embassy, April 8, 2014
The AIPLA Delegation met with Jessica Webster, Economic Minister Counselor,
Blake Johnston, Economic Officer, and Jason Wilson of Homeland Security. Ms.
Webster provided an overview highlighting the increasing cooperation between Japan
and the U.S. in meeting similar challenges in both economies. Mr. Johnston presented on
the new Japan Trademark bill providing for the protection of sound and color marks as
well as updating us on the employee invention system in Japan and status of trade secrets.
Jason Wilson described the increasing amount of counterfeit drugs entering Japan.
Japanese Patent Attorney Association (JPAA), April 8, 2014 (Tokyo)
The daylong meeting between AIPLA and JPAA included a morning closed
session, an afternoon open session and for the third year, small group workshops in the
afternoon focusing on patent prosecution in the electrical/mechanical and
chemical/biotech areas, and a trademark workshop.
The closed session was attended by the AIPLA delegates and an equal number of
JPAA leadership. Presentations by both AIPLA and JPAA members were made on
subjects including: IP Valuation, Design Patents, AIA Amicus Brief Practice, and
Privilege.
3
In the afternoon open seminar attendance exceeded over 400 Japanese patent
attorneys who received CLE credit for attending. The program was recorded for the
benefit of the members in other cities who could not attend the open session.
Presentations in the afternoon session were made by AIPLA members. Topics included
an update on NPE’s, U.S. case law updates and the current state of section 101. This
year’s ‘Mock Trial/Hearing’ was a performance illustrating the procedural aspects of an
inter partes proceeding before the Patent Trial and Appeal Board.
The patent workshop included presentations on the doctrine of equivalents,
means-plus-function claiming, and written description requirements to a group of about
20 Japanese patent attorneys, followed by break-out sessions with the
electrical/mechanical and chemical/biotech attorneys.
American Chamber of Commerce Japan (ACCJ) April 9, 2014
Delegates met with members Ken Katayama, Jonathan Hobbs and Satoshi
Arakawa of the ACCJ IP Committee. ACCJ members presented a number of recent
developments in Japan including a discussion on F/RAND, scope of claims and unclear
wording, and enforceability of combination patents.
IP High Court, April 9, 2014
The meeting at the High Court began with a private meeting between Chief Judge
Toshiaki Iimura and AIPLA members Wayne Sobon, David Hill, Alan Kasper, Chris
Fildes, Daphne Lainson, and Monica Barone. A subsequent open meeting followed
between the entire delegation and a large number of judges from the IP High Court and
Tokyo District Court.
During the open meeting AIPLA delegation members made presentations on
NPE’s and their influence on litigation practice and Recent Cases on Patent Eligibility.
The court members made two presentations. The first was titled Present Situation of IP
Disputes in Japan, by Chief Judge Iimura and the second was titled Recent Situation of
Grand Panel Cases, by Presiding Judge Shitara.
Japanese Trademark Association (JTA) April 9, 2014
The meeting with the JTA consisted of two presentations given by AIPLA
members and two presentations given by JTA members. AIPLA presented on the
Procedural Differences Between Oppositions and Infringement Actions and
Registerability of Performer Names in the U.S. The JTA presented on Recent
Developments of Design Law in Japan, and the Registerability of Performer Names in
Japan.
4
Japan Intellectual Property Association (JIPA) April 9, 2014
Four presentations by AIPLA members and one presentation by a JIPA member
made for the meeting. The AIPLA topics of Claim Construction, CLS Bank, Patent
Inducement, and Update on NPE’s, held the attention of JIPA members. JIPA presented
on the effective use of patents under Article 102 of the Japanese Patent Law.
AIPLA-JPAA April 10, 2014 Osaka Meeting
For the third year in a row, the AIPLA delegation provided an open seminar in
Osaka to accommodate those members of JPAA who work in Kansai region and
generally cannot attend the Tokyo seminar. The Osaka seminar was attended by over
100 JPAA members who received CLE credit for attending the seminar. The program for
the open seminar in Osaka was the same as the program for the open seminar on April 8
in Tokyo.
Additional Function - AIPLA Reception, April 9, 2014
The AIPLA Delegation hosted a reception for many distinguished guests
including judges from IP High Court and Tokyo District Court, and leadership from JPO,
JPAA, JIPA, JTA, AIPPI-Japan, JFBA, LESJ, US Embassy, and ACCJ. The reception
provided an opportunity for the guests to engage in informal discussions about a wide
range of IP issues and to make plans for next year’s meetings.
5

Download Report