AIPLA - IP Practice in Japan Committee April 7-10, 2014 Japan Trip Report Prepared by: Chris Fildes

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1 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, AIPPI- Japan/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

2 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

3 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

4 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

5 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