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Attorney-at-Law
and Patent Attorney
Iichiro Yamada

yamada

  • Specialties and Expertise

    Iichiro Yamada specializes in infringement cases in the field of intellectual property (patent, utility model, design, trademark, unfair competition, and copyright), litigation for the rescinding of trial decisions, trademark and design application filing in Japan and overseas, legal consultation, the creation of intellectual property contract documents, and judgments (appraisals). He has also engaged in many corporate legal cases unrelated to intellectual property, such as cases related to M&A services (due diligence, etc.), legal consultation and judgments (appraisals) concerning the Act against Unjustifiable Premiums and Misleading Representations, the Anti-Monopoly Act, and the Product Liability Act, various claims for damages, debt collection, and the creation of contract documents.

  • Languages used

    Japanese and English
  • Major cases and projects

    - Patent-infringement cases (in Japan, the U.S. (including ANDA litigation), and Germany)
    - Acted as a procedural attorney representing the employer in a lawsuit concerning monetary consideration for an employee’s invention (Japan)
    - Mediation concerning disputes over research commissioning and license agreements (US)
    - Various negotiations and lawsuits concerning disputes over intellectual property
    - Review of various types of intellectual property agreements
    - Development of company regulations relating to various types of intellectual property
    - Due diligence for the listing of a bio-venture company
    - Support for bio-venture start-ups
    - Acquisition of Japanese, U.S. and German companies by Japanese companies
    - Handling of a dispute concerning termination of an agency agreement in Germany and undertaking of action to ward off a provisional disposition
    - Correspondence with the relevant authorities in various countries with regard to cartel cases
    - Investigation of internal misconduct
    - Filing for bankruptcy and acting as trustee
  • Education and career history

    1999 Graduated from the Faculty of Law, Kyoto University
    1999 Joined SHUSAKU·YAMAMOTO
    1999 Registered as a patent attorney
    2000 Joined Saegusa and Partners
    2003 Registered as a patent attorney litigator (qualified as an attorney in specific infringement litigation)
    2006 Graduated from the Law School, Kyoto University
    2007 Completed training at the Legal Training and Research Institute of the Supreme Court of Japan (new 60th term) and registered with the Osaka Bar Association
    Joined Chuo Sogo Law Office, P.C.
    2008 Appointed a part-time lecturer at the Graduate School of Law and Politics, Osaka University (Intellectual Property Program)
    Apr. 2010 Appointed a guest associate professor at the Graduate School of Law and Politics, Osaka University (Intellectual Property Program)
    Jan. 2011 Established LEXIA PARTNERS
Books

Annotated Outline of Supreme Court Rulings under the Intellectual Property Law, coauthored (SEIRIN-SHOIN, 2009)
Precedent Cases under the Copyright Law, coauthored (Tokyo Nunoi Shuppan, 2001)

Articles

“Evaluation of Shapes with Source Identification Functionality in Judgments of Design Similarity” (Companies and Inventions, October 2009 issue)

“‘Trademarks Deemed as Identical from a Common Sense Perspective’ in a Trial for the Cancellation of a Registered Trademark Not in Use,” coauthored (March 2009 issue of Patent)

“Trademark Licenses between Group Companies and Transfer Pricing Taxation,” coauthored with Ms. Naoko Nakatsukasa, attorney-at-law (LES JAPAN NEWS, December 2008 issue)

“Third Q&A on Intellectual Property: The Doctrine of Equivalents” (Intellectual Property Prism, December 2008 issue)

“A New Trademark Management Approach Using an Intellectual Property Trust” (Patent, May 2008 issue)

“Judgments on Trademark Similarities in Cases of Different User Groups” (Companies and Inventions, March 2008 issue)

“Will an Online TV Program Recording Service Infringe Rights Neighboring on the Copyrights of Broadcasters?” (Companies and Inventions, July 2006 issue)

“Is a Parallel Import Defense Valid in Cases where Different Sales Entities in Japan and Overseas Are Involved in an Identical Brand?” (Intellectual Property Management, September 2005 issue)

“A Case Study of a Japanese Court’s Judgment on a Patent Infringement in the U.S.,” coauthored with Kenji Tachibana, patent attorney (Companies and Inventions, October 2004 issue)

“Violation of the Manufacturing Region Restriction Clause and the Granting or Denial of Parallel Importing under License Agreements” (Companies and Inventions, July 2003 issue)

“The Theory of Exclusion for Technical Forms under the Unfair Competition Prevention Act and a Comparative Study with the Functionality Doctrine under the US Trademarks Law” (Patent, May 2003 issue)

“Expansion of the Concept of Public Order and Decency under the Trademarks Law” (Intellectual Property Management, Vol. 51, December 2001 issue)

“Infringement or Non-infringement of Trademark Rights in Cases where a Trademarked Part Is Incorporated in a Completed Product” (Intellectual Property Management, Vol. 50, November 2000 issue)

Lectures

“A Clause-by-Clause Explanation of the Patent Law” (hosted by the JIII Osaka Branch, 2010)

“Doctrine of Equivalents” (Intellectual Property Training by the Osaka Bar Association, 2010)

“How to Use the Unfair Competition Prevention Act” (Two-part Series) (Amagasaki Venture Study Group, 2010)

“Points in the Intellectual Property Law Dealing with Effective Collaboration through Industry-University Cooperation and with Large Corporations: Points to Note to Avoid Suffering Losses through Joint Research and Development and License Agreements” (hosted by the JPO, Kansai Bureau of Economy, Trade and Industry, and KIP-NET, 2010)

“A Clause-by-Clause Explanation of the Patent Law” (hosted by the JIII Osaka Branch, 2009)

“Intellectual Property Strategies for Small and Medium-Sized Businesses: Should You Focus on Know-How or Patent Applications?” (hosted by the JPO, Kansai Bureau of Economy, Trade and Industry, and KIP-NET, 2009)

“Intellectual Property Infringement Litigation” (Kyoto University, Theory of Intellectual Property, 2009)

“Content Creation and Intellectual Property Rights: What Do Content Creators Need to Know for Practical Content Creation?” (hosted by the JPO, Kansai Bureau of Economy, Trade and Industry, and KIP-NET, 2009)

“Intellectual Property Licenses Granted to Foreign Affiliates and Transfer Pricing Taxation” (Intellectual Property seminar hosted jointly by Chuo Sogo Law Office, P.C., and Saegusa and Partners, 2009)

“Trademark and Copyright Licenses” (Intellectual Property seminar hosted jointly by Chuo Sogo Law Office, P.C., and Saegusa and Partners, 2008)

“Works and Copyright” (JIII Osaka Branch, 2008)

“Trademark Licenses between Group Companies-From the Perspective of Intellectual Property Trust and Transfer Pricing Taxation” (Economic Evaluation Work Group for Intellectual Property, Licensing Executives Society Japan, 2008)

“Approach to the Management and Effective Use of Trademarks: Focus Includes Trademark Inventory, Exercise of Rights, and Intellectual Property Trust” (intellectual property seminar hosted by Thomson Corporation, 2008)

“How to Avoid Joint Research and Development Problems: Focusing on the Basics and Points to Note in Practical R&D” (seminar at IP Business Matching Fair, 2008)

“A Light Emitting Diode Case and the Scale of Company Employee Inventions” (trademark and design briefing hosted by Saegusa and Partners, 2005)

“Trademark Registration Requirements: Focusing on Article 3 (Discrimination) of the Trademarks Law” (Thomson Brandy, 2004)

“Trends in Revisions to the Design Law” (new employee training by the JPAA, 2004)

“Trademark Right Infringement Case Study” (trademark and design briefing hosted by Saegusa and Partners, 2004)

“Well-known Marks in Asia-Pacific Rim Countries E(INTA ANNUAL MEETING, 2003)

“Overview of the Intellectual Property Law” (Osaka Prefectural Minato High School, 2003)

“Overview of the Intellectual Property Law” (Ryukoku University, 2003)

“Overview of the Intellectual Property Law” (Kwansei Gakuin University, 2003)

“Legal Protections for Product Designs” (trademark and design briefing hosted by Saegusa and Partners, 2003)

“Using the Patent Law” (Bio Venture Center, Osaka Institute of Technology, 2002)

“Introduction to the Intellectual Property Rights System” (Tennoji Junior High School attached to OKU, 2002)

“The Internet and Trademark Rights” (ANS, 2002)

“Effective Protection of Designs” (trademark and design briefing hosted by Saegusa and Partners, 2002)

“Brand Strategies for Companies with Growth Potential” (ANS, 2001)

“How to Write a Written Opinion” (JIII Kyoto Branch, 2001)

“Using the Industrial Property Act and Related Laws” (JIII Osaka Branch, 2001)

“The Basics of Design Applications” (trademark and design briefing hosted by Saegusa and Partners, 2001)

“Specific Trademark Registration Requirements” (Thomson Brandy, 2000)

“Overview of the Trademark System” (trademark briefing hosted by Saegusa and Partners, 2000)

In addition to the above, Iichiro Yamada has given many other in-company training sessions (on topics such as patents, design, trademarks, trade secrets, and the Vienna Sales Convention).

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Attorney-at-Law
(Japan and New York)
Koyu Nakamura

03_00_弁理士・弁護士紹介63

  • Specialties and Expertise

    Koyu Nakamura specializes in consultation, dispute services, contract creation, and judgments (appraisals) in a variety of fields related to the Intellectual Property Law (patent, utility model, design, trademark, unfair competition, and copyright). She is also involved in providing legal advice on corporate business activities from a general perspective based on her experience in areas such as general corporate legal services, competition law services, mergers and acquisitions, and business revitalization. In addition, she engages in contract negotiations and lawsuits with foreign corporations and provides ADR-related support.

  • Languages used

    Japanese, English and German (intermediate)
  • Major cases and projects

    - Patent-infringement cases (in Japan, the U.S. (including ANDA litigation), and Germany)
    - Acted as a procedural attorney representing the employer in a lawsuit concerning monetary consideration for an employee’s invention (Japan)
    - Mediation concerning disputes over research commissioning and license agreements (US)
    - Review of various types of intellectual property agreements
    - Various negotiations and lawsuits concerning disputes over intellectual property
    - Development of company regulations relating to various types of intellectual property
    - Due diligence for the listing of a bio-venture company
    - Support for bio-venture start-ups
    - Acquisition of Japanese, U.S. and German companies by Japanese companies
    - Handling of a dispute concerning termination of an agency agreement in Germany and undertaking of action to ward off a provisional disposition
    - Correspondence with the relevant authorities in various countries with regard to cartel cases
    - Investigation of internal misconduct
    - Filing for bankruptcy and acting as trustee
  • Education and career history

    1999 Entered the Department of Integrated Human Studies (Science Course), Kyoto University
    2000 Transferred to the Faculty of Law, Kyoto University
    2003 Graduated from the Faculty of Law, Kyoto University
    2006 Completed a course at the Law School, Kyoto University
    2007 Completed training at the Legal Training and Research Institute of the Supreme Court of Japan (new 60th term) and registered with the Osaka Bar Association
    Joined Kitahama Partners
    2010 Seconded to the IP division of a major manufacturing company
    2012 Completed a course at the School of Law, Northwestern University (Chicago, USA), (Master of Law [LL.M.])
    Aug. 2012 Seconded to Masuda, Funai, Eifert & Mitchell, Ltd. (Chicago, USA)
    Nov. 2012 Passed the New York bar exam
    Feb. 2013 Seconded to the Intellectual Property Law and Competition Law Section of Gleiss Lutz (Düsseldorf, Germany)
    Jul. 2013 Returned to Kitahama Partners
    Apr. 2014 Joined LEXIA PARTNERS
    Apr. 2015 Appointed a part-time lecturer at the Law School, Kyoto University
Books

Joint Research and Development Contract Handbook: Practical Work and Japanese-English Clause Examples (Separate Volume of NBL, No. 149, Shojihomu Co., Ltd., April 2015)

Approach to the Development, Evaluation, and Practical Application of DDS Formulation Based on Medical Needs, Regulations, Advanced Technologies, Drug Prices, Business Strategies, and Examples (Technical Information Institute, Co., Ltd., March 29, 2013)

Articles

“Guidelines for Practical Work in Consideration of a Decision to Accept an Infringement under the Doctrine of Equivalents” (Intellectual Property Management, Japan Intellectual Property Association, December 2015 issue)

“Japan’s Trade Secret Law Reform Should Focus on Discovery” (LAW360, October 22, 2014)

“New EU Competition Law System Related to Technology Transfer Agreements” (LES JAPAN NEWS, Licensing Executives Society Japan, September 2014, Vol. 55 No. 3)

“Study on a Legal System for Strengthening Trade Secret Protection: Focusing on US Practices as Reference” (NBL, No. 1026, Shojihomu Co., Ltd., June 1, 2014)

“The New Unitary Patent: Overview of the New System and Practical Responses” (NBL, No. 1010, Shojihomu Co., Ltd., October 1, 2013)

“How to Approach the First-to-File System and the Abolishment of the First-to-Invent System” (Featured article, “Changes in the New US Patent Law and Its Specific Future Impacts and Measures,” The Lawyers, November 2011 issue)

“Mistakes Made by Licensees in License Agreements and the Pros and Cons of Claiming for Refunds of Consideration for Licenses: Countermeasures for the Licensor and the Licensee” (Intellectual Property Management, Japan Intellectual Property Association, July 2010 issue)

“Typical NDA Clause Examples and Variations” (Business Law Journal, LexisNexis, June 2010 issue)

Lectures

“Practical Patent Prosecutions Based on a Close Examination of Patent Right Infringement Litigation: Beneficial Claim Drafting and New Strategies for Using Objection and Invalidation Trials” (JPAA Shikoku Branch Office, November 13, 2015)

“The Basics of Legal Services for Industry-University Cooperation in the Life Science Field: Non-disclosure Agreements & Collaborative Research Agreements” (Regional Innovation Strategy Support Program of the Ministry of Education, Culture, Sports, Science and Technology; hosted by Osaka City University, September 30, 2015)

“Global IP Litigation Risk Management: Focusing on Discovery in the U.S. and Responding to Litigation in China” (joint lecture with Tse Cheuk Fung, patent attorney; hosted by SunFlare Co., Ltd., February 18, 2015)

“Entering into Transactions with Overseas Companies!: Things You Need to Know before Entering into Contracts with US, European, and Asian Companies” (hosted by the Osaka Institute of Invention and Innovation, November 11, 2014)

“Basic Contracts for Industry-University Cooperation Activities: NDA, MTA, and JRA” (hosted by the Kansai Life Innovation Promotion Association, September 17, 2014)

“Overseas Expansion and Entering into License Agreements with Overseas Companies: Legal Precautions in Overseas Expansion and License Agreement Clauses that You Secretly Wish You Could Ask About” (hosted by the Monodzukuri Business Information-center Osaka (MOBIO), September 5, 2014)

“Initial Response to Discovery of a Cartel and Specific Preventive Measures: Emergency Responses for Surviving a Leniency Race and Effective Cartel Prevention during Normal Times in Preparation for an Emergency” (hosted by Deloitte Tohmatsu Financial Advisory LLC in Tokyo on November 22, 2013, Osaka on November 27, 2013, and Nagoya on November 28, 2013)

“Differences in Contract Styles in Japan, Europe, and the U.S.” (lecture given at Goethe University as a guest lecturer in Frankfurt, Germany, April 22, 2013)

“Training Program for Transferred Personnel: A Welcome to the United States of America and an Introduction to What You Should Know before Starting Your New Position (Focusing on Differences between the Japanese and US Labor Law Systems)” (hosted by Masuda, Funai, Eifert & Mitchell, Ltd., Chicago, USA, August 24, 2012)

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Attorney-at-Law
and Pharmacist
Kyoko Matsumoto

03_00_弁理士・弁護士紹介65

  • Specialties and Expertise

    Kyoko Matsumoto specializes in consultation and dispute services in a variety of fields related to the Intellectual Property Law (patent, utility model, design, trademark, unfair competition, and copyright), general corporate legal services, and general civil legal services.

  • Languages used

    Japanese and English
  • Qualifications

    2009 Registered as a pharmacist
    2014 Registered as a lawyer

  • Education and career history

    2009 Graduated from the Faculty of Pharmaceutical Sciences, Kobe Pharmaceutical University
    2013 Completed a course at the Law School, Kyoto University
    Dec. 2014 Completed training at the Legal Training and Research Institute of the Supreme Court of Japan (67th term)
    Jan. 2015 Joined LEXIA PARTNERS
Lectures

“The Basics of Legal Services for Industry-University Cooperation in the Life Science Field: Non-disclosure Agreements & Collaborative Research Agreements” (Regional Innovation Strategy Support Program of the Ministry of Education, Culture, Sports, Science and Technology; hosted by Osaka City University, September 30, 2015)

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Attorney-at-Law Kazuhiko Shibata

shibata

  • Specialties and Expertise

    Kazuhiko Shibata specializes in consultation and dispute services in a variety of fields related to the Intellectual Property Law (patent, utility model, design, trademark, unfair competition, and copyright), general corporate legal services, and general civil legal services.

  • Languages used

    Japanese and English
  • Education and career history

    2005 Entered the Division of Natural Sciences II, Faculty of Arts and Sciences, University of Tokyo
    2008 Transferred to the Division of History, Faculty of Letters, University of Tokyo
    2011 Graduated from the Division of History, Faculty of Letters, University of Tokyo
    2014 Completed a course at the Law School, Kobe University
    Dec. 2015 Completed training at the Legal Training and Research Institute of the Supreme Court of Japan (68th term)
    Jan. 2016 Joined a law firm in Tokyo
    Nov. 2016 Joined LEXIA PARTNERS
    2017 Appointed a part-time lecturer at School of Policy Studies, Kwansei Gakuin University

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