Event / Seminar

ON FEBRUARY 17, 2021, PATENT ATTORNEYS FELIX EINSEL, MASAKO BARNARD AND HIROYUKI YAJIMA HELD AN ONLINE SEMINAR FOR VPP MITTE SÜD IN GERMANY

On February 17, 2021, Felix Einsel, Masako Barnard and Hiroyuki Yajima held an online seminar for Mitte Süd region of VPP, Association of Intellectual Property Experts in Germany, about the revision of Patent Act and Design Act in 2020, criteria for the judgement of inventive step, descriptive requirements for patent applications, as well as third party observations, oppositions and invalidation trials in Japan in German language.

Many VPP members who were interested in the current patent practice in Japan joined the seminar, and after each topic, we received many questions and positive feedback on our presentations based on the experience and knowledge gathered from our long-standing service.

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On February 05, 2020, S&E held an EU Design Study Session titled, “Design Protection in Europe – a Strong IP Right”.

On February 05, 2019, S&E held an EU Design study session titled, “Design Protection in Europe – a Strong IP Right”.

 

S&E invited Dr. Achim Vierheilig, patent attorney of Klunker IP and Mr. Andreas Haberl, Attorney at law of Preu Bohlig.

 

At the study session, Mr. Haberl and Dr. Vierheilig provided a presentation on four topics focused on “Obtaining Design Protection in Europe”, “Scope of Protection and Filing Strategies”, “Design Protection without Registration” and “Update Brexit”.

 

They explained the comparison of the registration of designs in Germany and the EU, scope of protection, and design infringement by using many actual cases. Furthermore, they explained the effects on EU design, changes and key points after Brexit, effects on pending EU Design applications, and exhaustion of design rights.

 

This study session was held in English and our patent attorney provided interpretation in Japanese.

 

S&E also had a reception after the study group to allow participants further opportunities to communicate with Dr. Achim Vierheilig and Mr. Andreas Haberl.

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On February 05, 2020, S&E will hold a Study Group on EU Design, titled, “Design Protection in Europe – a strong IP right”.

Date: Wednesday, February 5, 2020

Time: 18:30 – 20:45

Study Session 18:30 – 20:00

Reception (Exchanging business cards) 20:00 -20:45

Venue: Meeting room in S&E

Theme: “Design Protection in Europe – a strong IP right”

Speaker: Mr. Andreas Haberl, Certified IP specialist lawyer, Partner at Preu Bohlig & Partner

 

Language: English

 

Please click here for information on registration and more details regarding this study group. (Japanese only)

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On November 06, 2019, S&E held an EU Life Science IP Study Session titled, “Patenting in the Field of Biotechnology, Biology and Pharmacy at the EPO – Problems and Possibilities”.

On November 06, 2019, S&E held an EU life science IP study session titled, “Patenting in the Field of Biotechnology, Biology and Pharmacy at the EPO – Problems and Possibilities”.

S&E invited Dr. Nino Maria Bratovic, Dr. rer. nat., Dipl.-Phys, European and German patent attorney, partner of the isarpatent Patent- und Rechtsanwälte and Dr. Tobias Rossteuscher, German and European patent attorney, Dr. rer. nat., Dipl.-Chem. of the isarpatent Patent- und Rechtsanwälte, which is located in Munich, Germany.

At the study session, Mr. Rosssteuscher provided an explanation of the legal basis, general principles, exclusions, and exceptions of patentability, biotechnology cases, and biology (such as animals and plants), microbiology, and pharmaceuticals-medical uses. Furthermore, he gave us some practical advice, such as how to protect data.

This Study session was held in English and Mr. Felix Einsel, our firm’s managing partner, provided an interpretation in Japanese.

S&E also had a reception after the study group to allow participants further opportunities to communicate with Dr. Nino Maria Bratovic and Dr. Tobias Rossteuscher.

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ON OCTOBER 17, 2019, S&E HELD AN EU IP LAW SEMINAR

On October 17, 2019, S&E held a European IP law seminar titled, “Recent patent law cases in EPO and BGH, and the recent recommendations for drafting effective patent claims and specifications”.

For this seminar, S&E invited Dr. Erik Richly, LL.M. who is a German patent attorney and European patent, trademark and design attorney and Mr. Robert Ritschel, a European patent, trademark and design attorney from the patent firm, RICHLY & RITSCHEL Patentanwälte which is located in Gladbach, Germany.  

At the seminar, Dr. Richly and Mr. Ritschel explained the description of patent applications for Europe and the key points for successful patent prosecution and enforcement in Europe. They focused on providing attendees with a detailed explanation of the matters which should be written on and excluded from applications, as well as evaluation criteria for novelty and inventive steps with concrete examples (such as decisions of the EPO). Dr. Richly and Mr. Ritschel also informed attendees on the know-how for the setup of descriptions of an application.

The seminar was held in English and Mr. Felix Einsel, our firm’s managing partner, provided an interpretation in Japanese. 

S&E also had a reception after the seminar to allow participants further opportunities to communicate with Dr. Richly and Mr. Ritschel.

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On September 24, 2019, S&E held an Indian IP Law Study Group titled, “Insight into the Protection and Enforcement of Patent Rights in India”

S&E invited Ms. Mamta Rani Jha, Indian attorney at law, partner, and head of the litigation practice of INTTL Advocare which is located in New Delhi, India. She has more than 18 years of experience in litigation, with expertise in intellectual property laws.

At the study group, she gave a presentation on patent infringement cases in India and explained Indian Patent Law sections which deny the discoverability of any new polymorphism forms, obligation to supply information to the Intellectual Property Appellate Board (IPAB), framework of patent law in India such as the procedures of the IPAB, enforcement of patents by patent infringement lawsuits including provisional injunctions, working statements, the Bolar exemption, recent conditions of compulsory licenses with specific cases (“Novartis vs Union of India”, ”Cipla vs Novartis”, ”Bayer vs. Union of India”, ”Novartis AG vs. Nutra”, etc.). Furthermore, she provided a detailed explanation of the prior preparations needed when applying for a patent. This Study Group was held in English and Mr. Felix Einsel, our firm’s managing partner, provided an interpretation in Japanese. 

S&E also had a reception after the study group to allow participants further opportunities to communicate with Ms. Jha.

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ON SEPTEMBER 11, 2019, S&E HELD A GERMAN IP SEMINAR ON PATENT INFRINGEMENT LITIGATION CASES AND THE PROTECTION OF TRADE SECRETS

On September 11, 2019, S&E held a German IP seminar on “Patent Infringement Litigation Cases and the Protection of Trade Secrets”.

As speakers for this seminar, S&E invited Dr. Matthias Hülsewig, a partner of Preu Bohlig & Partner in Düsseldorf, and Dr. Axel Oldekop, a partner of Preu Bohlig in Munich and Düsseldorf.

The seminar was divided into two sessions, and in the first session, Dr. Hülsewig gave a presentation on “Patent Infringement Proceedings and Recent Developments in Germany“ and explained the number of patent actions in Germany per year, timeframe of infringement proceedings, basic costs and content of patent actions in Germany. In addition, he spoke about the strategic considerations for patent infringement cases and the preparation for infringement lawsuits and their effects on business. Furthermore, he gave an explanation of the Huawei vs. ZTE (C-170/13) decision by the European Court of Justice and focused on current German cases regarding FRAND defenses, licensing negotiations and compensation of damages. For the first session, Mr. Felix Einsel, our firm’s managing partner, provided an interpretation in Japanese.

For the second session, Dr. Oldekop gave a presentation on “The New German Trade Secrets Act”. He provided a detailed explanation of the proceedings of the German Trade Secrets Act which was enacted on April 26, 2019, and its fundamentals, key points to protect trade secrets under the Act, and its effects and consequences. For this session, Mr. Kengo Sakai, attorney at law, provided his interpretation in Japanese.

There was also a lively exchange of questions and opinions during the Q&A session, and we believe attendees were able to gain insight on the latest trends in German patent law and trade secrets act. S&E also had a reception after the seminar to allow participants further opportunities for communication with Dr. Hülsewig and Dr. Oldekop.

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On July 25, 2019: Attorneys Ayuko Nemoto and Ryo Takamatsu gave a presentation at the Legal & Compliance Committee of the American Medical Devices and Diagnostics Manufacturers’ Association (AMDD).

On July 25, 2019, Attorneys Ayuko Nemoto and Ryo Takamatsu of S&E gave a presentation titled “The 2019 Amendment of the Pharmaceuticals and Medical Devices Law and its Impact on Manufacturing Medical Devices” at the Legal & Compliance Committee of the American Medical Devices and Diagnostics Manufacturers’ Association (AMDD). Ayuko and Ryo provided an overview of the amendment of the Pharmaceuticals and Medical Devices Law which has been submitted to the ordinary Diet session of 2019, and discussed the impact on manufacturing medical devices, as well as certain key practical points to consider regarding the business involving such devices.

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ON JULY 11, 2019: S&E SPONSORED A LATIN AMERICA IP SEMINAR.

On July 11, 2019, S&E sponsored a Latin America IP seminar on “Pharmaceutical and Biotechnical Inventions in Latin America”.

At the seminar, Dr. Sergio Escorza, European patent attorney of Ungria, a Spanish firm specialized in intellectual property with many offices in the U.S. and Latin America, explained the main procedures of patent prosecution in Latin America. Since the practices of patent prosecution for pharmaceutical and biotechnical inventions are very different in each country within Latin America, Dr. Escorza provided a detailed explanation of the differences with regard to drafting patent applications to acquisition of patent rights, compulsory licenses after acquisition of patent rights, and the procedures for requesting a trial for patent invalidation.

The study group lasted about an hour and 30 minutes and S&E also had a reception after the study group to allow participants further opportunities for communication with Dr. Escorza.

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ON JUNE 21, 2019, S&E SPONSORED A US IP LAW SEMINAR.

On June 21, 2019, S&E sponsored a US IP law seminar titled, “Applying Extraterritoriality of US Patents: Effect on the Patent Practices of Japanese Companies.”

The speakers were Professor Toshiko Takenaka who, while teaching at prominent universities such as Keio University Law School and Washington University School of Law, is involved in the acquisition and exercise of patent rights at the Seed IP Law Group in Seattle, and Mr. Paul T. Meiklejohn (US Attorney at Law), who is an adjunct professor at the University of Washington School of Law and is a partner in Dorsey & Witney’s Intellectual Property Litigation Practice Group.

In recent years, the tendency of courts has been to recognize the extraterritorial reach of U.S. patents. Last year, the U.S. Supreme Court supported a jury verdict that the defendant should award $93.4 million for worldwide damages caused by their infringement act where they shipped a component to be used in a patented invention to the United Kingdom. As this case indicates, there is an increase of risk for certain acts in Japan to be regarded as an infringement of a patent in the US. While it is necessary to take measures to avoid this infringement, we also need measures to acquire the right to positively utilize US patents for which the potential amount of damages is high.   

At the seminar, Ms. Takenaka gave a presentation on the “Territoriality Principle of US Patent Law and Applying Extraterritoriality – Comparative Study” and explained the basic ideology which applies extraterritoriality of US patent law, and direct and indirect infringements of U.S. patent law in comparison with German and Japanese patent laws. In addition, Mr. Meiklejohn gave a presentation on the “Direct and Indirect Infringement of U.S. Patents” and introduced many judicial precedents of direct and indirect infringements under 35 U.S.C. Section 271. He also explained the know-how to avoid such infringements and to write method and system claims to use the applied extraterritoriality.

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