BE, Mechanical Engineering, Tokyo University of Science, 1990
Qualified as Patent Attorney, National Industrial Property Council
Examination Passed in 1993
(Passing Rate was 2.8 %)
Completion, The Patent Attorneys Association Industrial Property Right
Law Training Institute, 1994
Qualified as Patent Attorney IP Infringement litigator for Intellectual
Property Infringement Courtroom Litigation,
National Industrial Property
Council Examination Passed in 2008
Bar Admission
Japan, Specifically licensed to practice Intellectual Property laws*,
1993
Japan Patent Office, for Patent, Utility Model, Design and Trademark
cases, 1993
United States Patent and Trademark Office for
Patent and Design cases, 2002
*Intellectual Property laws in Japan include: Patent law; Utility Model
Law; Industrial Design Law; Trademark Law; Copyright Law; Trade Secret
and Unfair Competition Prevention Law; Semiconductor Circuit Layout
Design Law; Plant Law; and Customs Law.
Court Admission
Japan District Courts, admitted for litigation representation practice
as attorney/counsel at Specific Intellectual
Property Infringement
lawsuits*(2008)
Japan High Courts including Intellectual Property High Court in Tokyo,
admitted for litigation representation practice
as attorney/counsel at:
Specific Intellectual Property Infringement appeal lawsuits*(2008); and,
Patent, Utility Model,
Industrial Design and Trademark registration
invalidity/patentability appeal lawsuits(1993).
The Japan Supreme Court, admitted for litigation representation practice
as attorney/counsel at: Specific Intellectual
Property Infringement
appeal lawsuits*(2008); and, Patent, Utility Model, Industrial Design
and Trademark registration
invalidity/patentability lawsuits appeal
lawsuits(1993).
*
Specific Intellectual Property Infringement lawsuits include any
infringement lawsuits involving Patent, Utility Model, Design,
Trademark, Trade Secrets and Anti Competition Prevention Laws.
Scope of Practice
Patent portfolio development for clients, including the design and
implementation of intellectual property protection
programs.
Counseling Clients regarding new and existing products including patent,
trademark, Design, copyright, copyright and
trade secret infringement
analyses, freedom of operation studies, license negotiations, patent
validity analyses and
the design and implementation of non-infringing
alternatives to patented technology.
Preparing and prosecuting for clients new and existing patent, design,
trademark applications before Japan Patent
Office (JPO) and United States
Patent and Trademark Office(USPTO)
Representing clients in Intellectual Property infringement lawsuits at
any Japanese courts, including appeal to the
Intellectual Property High
Court and the Japan Supreme Court.
Representing clients in Patent, Utility Model, Industrial Design and
Trademark registration invalidity/patentability
appeal lawsuits at the
Intellectual Property High Court and the Japan Supreme Court.
Representing
clients in Intellectual Property infringement Arbitration Proceedings at
Japan Intellectual Property ADR
Center.
Representing clients in Intellectual Property Law enforcement
Proceedings at Japan Customs and Customs Court.
Membership
Japan Patent Attorneys Association
American Intellectual Property Law Association
Licensing Executive Society
International Trademark Association
Association University Technology Managers
Teaching Experience
Visiting Professor of Kumamoto University for International Technology
Transfer Strategy, 2007 to Present
Visiting Professor of Tokyo University of Science Graduate School for
the Master of Intellectual Property Law, 2008 to
Present.
Publications
Co-author of “The Latest U.S. Business Method Patents 564” Jitsuyo no
Nihon Sha, Ltd., November 2000
Co-author of “Practice for American Patents” Japan Institute of
Invention and Innovation” February 2000
Co-author of “Illustrated Introduction to Business Method Patents”
Jitsuyo no Nihon Sha, Ltd., June 2000
Speaking
Engagements
Speaker, “Finding Solutions and Looking Into The Future Of Japan-U.S.
Technology Transfers”, Graduate School of
Management of Science and
Technology, Tokyo University of Science, Tokyo, Japan, October 26, 2007
Speaker, “The International Business of Brokering Japanese University
Technology Licenses”, Waseda University,
Tokyo, Japan, October 23, 2007
Speaker, “A Strategy For Utilizing Japanese Universities’ Intellectual
Properties Abroad” Kumamoto University,
Kumamoto City, Japan, October
22, 2007
Panelist, “Filing Patents In China, Japan and Korea”, Canadian
Intellectual Property Association’s 81st Annual
Meeting, Wesin Bayshore,
Vancourver, BC, October 11-14, 2007
Speaker, “The Qualifications Sought For Personnel In The International
Technology Transfer Field”, Kumamoto
University, Kumamoto City, Japan,
June 22, 2007
Interpreter, “An Effective Usage of American Intellectual Property Firms
a an International Business Strategy”,
Tokyo, Japan, May 25, 2007
Speaker, “Intellectual Property and Starting a Business in the U.S.A.,
and the Latest Circumstances For
International Technology Transfer”,
Metropolitan Bio-Genome Venture Network, Tokyo, Japan, February 13, 2007
Speaker, “International Licensing Between Japan and the U.S. and Support
For Cooperation Between Industry and
Academia”, Hokkaido University, pporo, February 15, 2007
Speaker, “Hand Incubator Medical Device”, Executive Briefing IX
Sponsored by yet2.com, Tokyo, Japan, November
2007
Speaker, “U.S. Intellectual Property and Entrepreneurship – Current
State of the International Technology Transfer
Field”, National Graduate
Institute for Policy Studies, Tokyo, Japan, January 20, 2007
Speaker, “Trends In the U.S. Patent Examination Process and Related
Patent Law Changes”, Kyushu Division
Ministry of Economy, Trade and
Industry, Fukuoka, Japan, October 27, 2006
Speaker, “Intellectual Property and Starting a Business in the U.S.A.,
and Latest Circumstances For International Technology Transfer, Parts I
and II”, Waseda University, Tokyo, Japan, July 6, 2006
Speaker, "How to use Japanese Professional" at the LES/AUTM 2006 Spring
Meeting, New York, NY, May 9, 2006.
Speaker, “Entrepreneurship” presented at 11th Annual Wharton Asia
Business Conference, Philadelphia, PA, November 2005
Speaker, “Patent Enforcement and Prosecution in Japan,” presented at the
Cornell Club China and Japan IP Breakfast Seminar, New York, NY, October
2005
Speaker (as Japanese patent law expert), “A Global Perspective of Patent
Procurement and Litigation Issues for Biotechnology Inventions,”
presented at the BIO 2005 International Convention held in Philadelphia,
PA, June 2005
Speaker (as Japanese patent law expert), “Intellectual Property Rights
in Labor Relations and Service Provision,” presented at the
International Association of Young Lawyers (Association Internationale
des Jeunes Avocats) Annual Conference, Madrid, Spain, October 2004
Speaker, “Global Harmony, Dissonance, and Recent Developments in the
Patent Laws of Europe, Australia and Japan,” presented at the Boston
Patent Law Association, Boston, MA, October 2004
Speaker, “The Past/Present/Future of Technology Licensing between Japan
and the United States and How to Reach Key Stakeholders in the
Technology Licensing Field in Japan,” presented at a general meeting of
Licensing Executives Society’s Philadelphia Local Chapter, Philadelphia,
PA, August 2004
Speaker, “How Japanese Universities Should File Patents Effectively in
Foreign Countries,” presented at Industry/University/Government
Collaboration Workshop Series, the fifth session, sponsored by Deloitte
Touche Tohmatsu, Tokyo, Japan, February 2004
Speaker, “Strategies for Technology and Intellectual Property Transfers
between Japan and the United States,” presented at the Pennsylvania/New
Jersey Nanotechnology Network Mission sponsored by the U.S. Commercial Service Division at the U.S. Embassy, Tokyo, November 2003
Speaker, “Japan Patent Practice Update and Key Issues on U.S.-Japan
Technology Licensing,” presented at the Wharton School of the University
of Pennsylvania and University of Pennsylvania Law School, Philadelphia,
PA, November 2003
Speaker, “Environmental Business Opportunities in Japan,” presented at
Environmental Business Opportunities in Japan, co-sponsored by Japan
External Trade Organization (JETRO), U.S. Department of Commerce,
Pennsylvania Office for International Business Development, and U.S.
Environmental Protection Agency, West Conshohocken, PA, July 2003
Speaker, “The Intellectual Property Rights in Japan and the United
States,” sponsored by the Economic Affairs Bureau of Sendai City,
Sendai, Japan, February 2003
Speaker, “US/Japan Alliance on Technology Management Strategies,” at the
Greater Philadelphia Chamber of Commerce, Philadelphia, PA, February
2003
Speaker, “How to License Your Own Invention in an American Way,”
sponsored by an international consulting firm of JCI, Inc., Tokyo,
Japan, December 2002
Speaker, A Japan patent seminar on “How to Obtain Patents in Japan,”
sponsored by the Japan-America Society of Pennsylvania and Duquesne
University Small Business Development Center, Pittsburgh, PA, October
2002
Speaker, a Japanese patent seminar on "How to Efficiently Prepare and
Obtain Patents in Japan,” at the Greater Philadelphia Chamber of
Commerce, Philadelphia, PA, February 2002
Served as Japanese law expert witness for the American Arbitration
Association in a case in which a large Japanese corporation was involved
in October 2001
Selected as a Japanese delegation and delivered statements for the
Diplomatic Conference for the Adoption of the Patent Law Treaty which
was held in World Intellectual Property Office in Geneva, Switzerland,
2000
The Latest U.S. Business Method Patents 564
Omori & Yaguchi
as a
co-author
November 2000
Jitsuyo no Nihon Sha, Ltd.
Price: 3800yen
Practice for American Patents
Taro Yaguchi as a co-author
February 2000
Japan Institute of Invention and Innovation
Price: 4000yen
Illustrated Introduction to Business Method Patents
Taro Yaguchi as a co-author
June 2000
Jitsuyo no Nihon Sha, Ltd.
Price: 1400yen
Copyright ⓒ [2006] [Keisen
Associates], All rights reserved