AIPLA – IP Practice in Japan Committee
April 8-12, 2013 Japan Trip Report
Prepared by: Joseph A. Calvaruso, Committee Co-Chair
A delegation of 28 AIPLA members (25 from US and three from Japan) including AIPLA
President Jeff Lewis and AIPLA Executive Director Todd Dickinson met with various
government and non-government organizations. The delegates met with Judges of the
IP High Court and Tokyo District Court; Japan Patent Office; Japan Patent Attorney
Association (Tokyo and Osaka); Japan Intellectual Property Association; Japan
Trademark Association; International Association for Protection of IP/Japan Federation
of Bar Association (a joint meeting); Licensing Executives Society of Japan; American
Chamber of Commerce; and US Embassy.
Highlights of the Delegation Meetings
Japan Patent Office (JPO) – April 8, 2013
The meetings with the JPO officials included:
i) a meeting of AIPLA Committee leaders with JPO Commissioner, Mr.
Fukano and the Director of International Affairs, Mr. Iwasaki;
ii) a meeting with the Trademark division; and
iii) a meeting with the International division and the Patent Examination
division.
As we did last year, the delegation was split into two groups to allow for more
extensive meetings with both the Trademark division and the International/Patent
Examination division. These meetings were very informative and productive. We
expect to continue to have split meetings in the future.
The meeting with Commissioner Fukano was attended by Jeff Lewis, Todd
Dickinson, Alan Kasper, Paik Saber and John Pegram. The focus of the meetings was
patent harmonization.
At the meeting of the Trademark division, Mr. Toshihiro Kose, Director General of
Trademark, Design, and Administrative Affairs department of JPO and AIPLA Board
Member, Kim Van Voorhis gave opening remarks. Mr. Eiji Hayashi, Director of the
Trademark Division moderated the meeting. During the meeting both sides made
presentations on: protection of non-traditional trademarks in the U.S., proposed
revisions to the law in Japan including protection of non-traditional trademarks,
expansion of regional brand protection, protection of famous marks and cancellation of
registrations based on descriptiveness. The non-traditional marks being considered
include motion, holograms, color per se, position and sound. Scent has been left for
future discussion. There also were presentations on use of the Madrid Protocol in the
U.S. and Japan, and what AIPLA expects for TM5.
The meeting with the International division and the Patent Examination division
included presentations by both sides related to: PPH and PCT, harmonization of
classification, strategy for prior art searching of foreign language documents, AIA
implementation of PGR and IPR, practice of the employee’s invention in the U.S., recent
court cases for injunction and JPO examination practices regarding claim limitations.
IP High Court, April 8, 2013
The delegation leadership team had an initial meeting with the Chief Judge
Toshiaki Iimura followed by a general meeting between the entire AIPLA delegation and
about 30 judges from the IP High Court and the IP Divisions of the Tokyo District Court.
During the general meeting, Chief Judge Iimura gave a presentation on Patent
Infringement by Plural Entities. Judge Oda presented on Recent Japanese Cases
Regarding FRAND License Declaration. From the AIPLA side, Joseph Calvaruso
presented the counterpart to Chief Judge Iimura’s topic, namely, Divided/Joint
Infringement after the Akamai/McKesson cases. Mercedes Meyer presented on the US.
Supreme Court Prometheus decision.
Japanese Patent Attorney Association (JPAA), April 9 and 12, 2013
AIPLA and JPAA have maintained a 20+ year productive and mutually beneficial
relationship. This year we continued to have our full-day meeting/seminar in Tokyo.
And as we did last year, we also added a half day seminar in Osaka, as summarized
below.
AIPLA-JPAA April 9 Tokyo Meeting (morning session)
We continued the practice of having a closed morning session and an afternoon
open seminar. The closed session was attended by all of the AIPLA delegates and
many members of the JPAA leadership team (including Mr. Fumio Furya President of
JPAA). The closed meeting included presentations on a variety of topics including: the
new PTAB and Control and Improvement of Examination Quality at the USPTO, Recent
Developments on Non-Traditional Trademarks and a Round Table Discussion on Patent
Harmonization.
AIPLA-JPAA April 9 Tokyo Seminar (afternoon session)
The afternoon open seminar, in which the attendees receive Japanese
continuing legal education credits, has become a very popular event with JPAA
members. Attendance in the open session has continuously exceeded 300 in the
recent years, including this year. The program was also recorded for the benefit of the
members in other cities who could not attend the open session. One popular aspect of
the open seminar has been a Mock Hearing in the form of a skit performed by several
AIPLA delegates. This year’s Mock Hearing was a mock hearing before a United States
District Court dealing with a motion to stay a litigation pending resolution of an IPR. The
JPAA members also received presentations on a number of topics including: “Practical
Guides to the First Inventor to File” System, New Grace Period and Transaction
Applications, Prior Art under 35 USC § 102(a), exception under USC 102(b)(1)(B) and
102(b)(2)(B), Laboratory Notebooks and Record Keeping in light of AIA, IDS Practice
Post-Therasense and Subject Matter eligibility under § 101 post Bilski.
This year, for the first time, the AIPLA delegates also conducted two workshops
for JPAA members, one patent and one trademark. The patent workshop included
detailed discussions on file wrapper estoppel, means plus function claims, claim
translation issues and the enablement and written description requirements. The
trademark workshop included instruction on the various filing bases, proper
identification of goods/services, proper trademark use, proper specimens, intent to use
issues, surname rejections and amendments of mark.
Feedback from JPAA is that the seminar and workshops were very well received
by JPAA members. The Committee is considering the possibility of continuing to
provide patent and trademark workshops to JPAA during our future annual April
meetings.
AIPLA-JPAA April 12 Osaka Meeting
The AIPLA delegation also provided an open seminar in Osaka to accommodate
those members of JPAA who work in Kansai region and could not attend the Tokyo
seminar. The Osaka seminar was attended by about 90+ JPAA members. The
program for the Osaka open seminar was purposefully chosen to be the same as the
one in Tokyo. The Osaka members of JPAA expressed their appreciation for AIPLA’s
agreement to extend its open seminar to Osaka. The Committee plans to continue to
incorporate a visit to Osaka into its future annual visits to Japan.
Women in IP Law Meeting, April 10, 2013
Following last year’s first, very successful, Women in IP event, the Committee
arranged for a second Women in IP Law Meeting. The purpose of the meeting was to
provide a unique venue for the women IP professionals from the US and Japan to get
together and exchange information with each other and to forge stronger professional
and personal relationships. This year there were approximately 50 women IP
professionals from Japan in attendance. The attendees included members of the Japan
Patent Attorneys Association, the Japan Trademarks Association, and the Licensing
Executives Society of Japan. The AIPLA delegates included AIPLA Board members
Mercedes Meyer and Kimberly Van Voorhis, as well as Daphne Lainson, Laura Brutman
and Sarah Moore. The meeting included a presentation from the Japanese side dealing
with issues women in Japan have faced. And on the U.S. side, there was a
presentation on “Business Plan Boot Camp.” There was a networking reception
following the presentations.
LESJ, April 8, 2013
The Committee had a two hour meeting with LES Japan. The meeting with LES
Japan included AIPLA presentations on Troll Litigation in the Federal Courts and ITC,
and the Proposed Shield Act. LESJ gave a presentation on Troll Litigation in Japan and
Damages. The presentations were followed by a panel discussion and a very enjoyable
reception.
Japan Trademark Association (JTA), April 8, 2013
o Thirteen members of the AIPLA delegation had a luncheon meeting with
the leadership of the Japan Trademark Association. JTA and AIPLA
representatives made presentations on the following topics:

“Recent Development of Trademark Law Revision in Japan” –
Mr. Koji Murai (JTA)

“Non-Traditional Trademarks in the U.S.” – Mr. Joseph A.
Calvaruso (AIPLA)

“Madrid Protocol and Japan” – Ms. Chiaki Kawai (JTA)

“Madrid Protocol and the U.S.” – Mr. George Lewis (AIPLA)

“Bad Faith” – Mr. Fumihiko Hirose (JTA)
Japan Intellectual Property Association (“JIPA”), April 11, 2013
o A total of six presentations (one from JIPA and five from AIPLA) were made
during this meeting covering a variety of topics including: Patent Exhaustion,
Means Plus Function Claims, Post-Therasense Cases and Practical IDS Tips,
Post-Prometheus Interim USPTO Guidelines, Practice Tips under the AIA,
and Trilateral Comparison of the Written Description Requirement.
Association Internationale pour la Protection de la Propriete Intellectuelle ((“AIPPI”) and
Japan Federation of Bar Associations (“JFBA”). April 10, 2013 (a joint meeting)
o A total of six presentations (three from AIPPI/JFBA and 3 from AIPLA) were
made during this meeting covering topics such as: IP High Court Decisions on
Damages; Decisions by the Tokyo and Osaka District Courts on Indirect
Infringement of a Combination Drug Patent, and the Tokyo District Court
decision in the Apple/Samsung case regarding a FRAND defense based on
an abuse of right theory. From the U.S. side there were presentations on
Trade Secrets and Recent Criminal Provisions, Patent Exhaustion and
Divided Infringement.
Additional Meetings
The AIPLA Delegation also met with the following other organizations:
US Embassy, April 10, 2013
o The AIPLA Delegation met with Mr. Frank Stanley, Acting Minister of
Economic Affairs, Robert Thommen, U.S. Customs and Border Protection
Attache’, and Christina Lim, Economic Officer in Charge of IPR Portfolio.
Minister Stanley shared his perspective on the economic and political
issues in Japan. Ms. Lim advised that the U.S. had been discussing
several issues with Japan including possible statutory damages which are
not now available in Japan for copyright infringement, as well as extension
of the copyright term. Ms. Lim also advised that Japan has not yet
submitted its promised report on possible protection of geographic
indications and that JPO is sending its examiners to South East Asia
countries in an effort to standardize examination practices. She also
advised that patent litigation in Japan is still difficult for patentees with the
patentee losing 80% of the time and 60% of patents being declared
invalid. Mr. Thommen reported on a number of customs related IP efforts
in Japan. He reported that $1.2 billion in goods was seized in 2012, with
most of the seizures coming from mail.
American Chamber of Commerce Japan (“ACCJ”), April 10 , 2013
o We met with several members of ACCJ IP Committee (including Chair of
the ACCJ IP Committee David Case of Orrick, Herrington & Sutcliffe LLP
and Mr. Toyotaka Abe of Microsoft) where we discussed a number of
recent IP developments in Japan.
AIPLA Reception, April 11, 2013
Every year, the Delegation hosts a reception which is attended by many
distinguished guests including judges from IP High Court and Tokyo District Court, and
leadership from JPO, JPAA, JIPA, JTA, AIPPI, JFBA, LESJ, US Embassy, and ACCJ.
The event is viewed as a rare opportunity to gather members of the government,
industry and academia together for informal discussions about a wide range of IP
issues. This year the reception was held at Okura hotel and was attended by over 130
guests.
Final Note
The Committee chairs (Joe Calvaruso and Chris Fildes) would like to thank the
April Trip Steering Committee members (Daphne Lainson, Paik Saber, Mercedes
Meyer, Neil Henderson and Tom Engellenner) for their invaluable efforts in support of
every aspect of this trip making it a very successful and rewarding one. Thank You!
The Committee plans to post all the trip presentations (to the extent feasible) on
its microsite in a near future.
List of Delegates
AIPLA Leadership
Jeffrey I.D. Lewis
Q. Todd Dickinson
David W. Hill
Alan J. Kasper
Mercedes Meyer
Kimberly Van Voorhis
Committee Co-Chairs
Joseph A. Calvaruso
Christopher J. Fildes
Delegation Members
William S. Boshnick
Laura Brutman
Mike Dunnam
Thomas Engellenner
Raymond E. Farrell
Ron C. Harris,Jr.
Neil Henderson
Soonhee Jang
John Johnson
Kevin Kunzendorf
Daphne Lainson
George Lewis
Jack O’Brien
John P. Pegram
John J. (Jack) Penny, V
Paik Saber
Donald R. Studebaker
Ken Vu
Tatsuo Yabe
Sarah Moore