In IP infringement litigation in general and in patent infringement litigation in particular, it is common practice for the defense of invalidity of patent to be submitted and for the defendant to initiate nullification proceedings at the Japan Patent Office at the same time, with the related appeal proceedings held at the IP High Court. Therefore, a team of specialists who have expertise in not only civil proceedings at the court but also nullification proceedings at the Japan Patent Office and the IP High Court becomes necessary. Sonderhoff & Einsel has outstanding teams for IP court proceedings consisting of both patent attorneys and attorneys-at-law. We fully leverage the wealth of experience our patent attorneys have in their technical fields and in the IP prosecution process, and the outstanding expertise of attorneys-at-law in IP infringement litigation as well as nullification proceedings.
IP Practice Areas
Patent Infringement Litigation, patent nullification proceedings at Japan Patent Office and at the IP High Court
2006 – 2009 Supreme Court, Legal Training and Research Institute of Japan Professor (Civil Procedures)
1993 – 1996 Supreme Court, Legal Training and Research Institute of Japan, Assistant Professor (Civil Procedures)
IP Practice Areas
Patent Infringement Litigation, Patent Nullification Proceedings at the Japan Patent Office and the IP High Court, Employee Invention-related Disputes
“New Employee Invention Regulation in Japan after 2016 Amendments” (Newsletter August of Preu Bohlig & Partner) February 2017
“License Agreements with U.S. Companies: Provisions Which Japanese Companies Should Carefully Consider – With a Focus on Provisions Regarding Infringement and Intellectual Property under Japanese and U.S. Law.” (the Japan Pharmaceutical Industry Legal Affairs Association’s Study Group on International Issues) December 2017
“Patent Infringement Litigation in Japan“ (Japanese-German Business Association, “Intellectual Property in Japan”) October 2017
“Patent Infringement Litigation in Japan” (Seminar with Preu Bohlig & Partner, “Current Development in Intellectual Property in Japan and Germany”) October 2017
Areas of Intellectual Property Practice
Infringement lawsuits (trademarks, unfair competition) invalidation trial procedures/trial decision revocation actions, preparation of licensing contracts and representation during negotiation of same
“Legal Consulting for Trademarks I” (Seirin-shoin, co-author) September 2017
“Introduction to Trademark License Agreements” (Workshop of Japan Patent Attorneys Association, Kanto Branch) 2016
“Overview of Recent IP-related Court Precedents (Trademark Law)” (IP-related Workshop of Japan Bar Association) 2016
IP Practice Areas
Patent applications, trials and appeals, expert opinions, and litigation in the fields of pharmaceuticals, organic chemistry, pharmaceutical formulations, and biochemistry.
Mr. Morita has extensive IP experience in the life-science field due to his work at a global pharmaceutical company, where he secured exclusivity through the utilization of intellectual property in areas as diverse as worldwide patent filings, prosecutions, litigation, patent evaluation for in-licensing, patent strategies, etc.
・2007 (Ne) 10034 Patent Infringement Injunction Appeal (September 10, 2007)
・2009 (Gyo-ke) Request for Rescission 10170 (May 10, 2010)
“Patent Strategy and the Trend in Developing Technologies for Drug Modalities” (The Technical Information Institute Co., Ltd., pp. 549-555, Co-author: Hiroshi Morita, etc.) May 31, 2019.
“4 Global Business Expansion and IP Management in the Pharmaceutical Industry” (“Institute of Intellectual Property Forum, 2015, Spring, Vol. 101, Special Feature: “Japanese Company Overseas Business Expansion and IP Strategies/ Issues and Responses in IP Negotiations” pp. 4-7, Institute of Intellectual Property) 2015.
“From the Ground Up: The Latest IP Information Related to Pharmaceutical Patents such as the China/Taiwan Patent Linkage System”(Johokiko Co., Ltd) August 2018.
“Employee Inventions in Germany and Japan” (EU-Japan Centre for Industrial Cooperation) 2016.
IP Practice Areas
Patent nullification proceedings at the Japan Patent Office and litigation rescinding trial decisions at the IP High Court
IP Practice Areas
Prosecution of Patent and Utility models, provision of expert opinion regarding patent scopes, patent infringement litigation, patent invalidation trials and suits for canceling trial decisions
IP Practice Areas
Patent Infringement Litigation, patent nullification proceedings at Japan Patent Office and the IP High Court
IP Practice Areas
Appeal, Suit against appeal decision
IP Practice Areas
Suits against appeal, trial decisions, patent infringement litigations, license negotiations
Eight suits against appeal/trial decisions, two patent infringement litigations, four license negotiations
IP Practice Areas
Patent nullification proceedings at the Japan Patent Office, suits against appeals/trial decisions at the IP High Court and Patent Infringement Litigation
・represented a European automotive/power tool manufacturer (Patentee) in a provision for patent infringement litigation while assisting in license engagement negotiation. This assistance led to a successful conclusion of a license engagement after convincing a licensee (a Japanese major electronics manufacturer) that it would not prevail in patent infringement litigation.
・represented a European automotive/power tool manufacturer, a European electronics manufacturer, and a Canadian communication equipment developer in several cases of suit regarding appeals/trial decisions at the IP High Court.
“Basic knowledge of Intellectual property 1” Textbook for Sangyo nouritsu University correspondence course (Sanno Institute of Management), coauthor, 2006
Registered as a patent attorney as of 2001
Registered as a Qualified IP Litigator in 2006
IP Practice Area
Trademark infringement litigation; trademark oppositions, trials and appeals, unfair competition
IP Practice Areas
Mr. Ohta has extensive IP experience in worldwide patent filing and prosecution, patent searches, providing opinions, and consulting regarding company IP strategy in the field of chemistry. His specialties are chemical engineering, polymer chemistry, organic chemistry, and electrochemistry.
Litigation case No. 2006 (Gyo-ke) 10094
Litigation case No. 2008 (Gyo-ke) 10367
Invalidation trial No. 2010-800149
Invalidation trial No. 2013-800073
Many opposition cases
IP Practice Areas
semiconductors, circuits, information processing and communication devices
As a patent attorney assisting attorneys-at-law, represented a Korean IT venture company in three provisional dispositions. These three cases ended due to withdrawal by the obligee.
Represented the same Korean IT venture company (appellee) in a patent infringement litigation as a patent attorney assisting attorneys-at-law.