Shogo Matsunaga

Partner | Attorney-at-Law | Patent Attorney

Shogo Matsunaga’s practice mainly covers legal advice and representation before courts in the following areas:

Patent infringement disputes in the ICT and semiconductor technology sectors
Trade secret protection and prevention of contamination
Brand protection and anti-counterfeiting measures
Labor issues in foreign-affiliated companies and organizations, including foreign embassies

Memberships

SEP Research Group,  Tokyo Bar Association IP Division, Unfair Competition Prevention Act Committee of Japan Patent Attorneys Association , LESJ (Licensing Executives Society Japan), IP Law Network for Lawyers, Intellectual Property Association of Japan, Japan Trademark Association Brand Management Study Group

Professional Experience

2021

Member of the Study Group on Trading Environment for Licensing of Standard Essential Patents, Ministry of Economy, Trade and Industry (METI)

2020

Member of the SIP-adus Intellectual Property Strategy Review Committee, Cabinet Office

2020

Member of the Study Group on Fair Value Calculation of Standard Essential Patents for Multi-Component Products, Ministry of Economy, Trade and Industry (METI)

2020

Vice-Chairman of the Unfair Competition Prevention Act Committee (Japan Patent Attorneys Association)

2020 – 2021

Enforcement Committee of INTA (International Trademark Association)

2019 – present

Ethics committee of the Council for Industrial use of Biological and Environmental Repositories (CIBER)

2019 – 2021

Member of Tokyo Bar Association Civil Judiciary Reform Realization Headquarters

2018 – present

Statutory auditor of Bruker Japan K.K.

2018 – 2020

Instructor of training course for IP Litigator qualification (Japan Patent Attorneys Association)

2018 – 2019

Committee member of Japan Patent Attorneys Association Unfair Competition Prevention Act

2018 – 2019

Anticounterfeiting Committee of INTA (International Trademark Association)

2013 – 2014

Visiting Scholar at University of Washington School of Law

2012 – 2013

Trademark Office Practices Committee of INTA

2008 – present

Sonderhoff & Einsel, Law and Patent Office

1993 – 2007

IPtrust Inc.

Education

1993

Waseda University (LL.B.)

Publications

“Shift from the Theory of Restriction of SEP Enforcements and the Future Issue” (Vol. 17 No. 3, Journal of Intellectual Property Association of Japan, March 2021)

“Import Status of Personal-Use Goods Infringing Trademarks; Measures and Their Limits Under Current Law”  (Trade and Tariffs, February 2021)

“Ban Urgently Needed on Private-Use Imports of Counterfeit Brand-Name Goods” (No. 15157 of “Patent News” 2020, Research Institute of Economy, Trade and Industry, Co-author)

“Determination of FRAND Obligation Violations in Germany – Düsseldorf Higher District Court Decision in Unwired Planet v. Huawei” (No. 14977 of “Patent News” 2019)

“Trademark and Copyright Infringements Related to Augmented Reality Applications” (Vol. 15 No. 3, Journal of Intellectual Property Association of Japan, March 2019)

“Issues Surrounding Trademark  Infringing Goods Imported by Individuals” (No.14868 of “Patent News” 2019)

“A Look at SEP Litigation Trends Between Countries” (No. 14648 of “Patent News” 2018)

“Limitations of Contractual Confidentiality Obligations Based on Court Precedents” ( No. 14571 of “Patent News” 2017, Research Institute of Economy, Trade and Industry)

“UK Court of Appeal’s Judgment on Site Blocking due to Infringement on Trademark” (No. 14266 of “Patent News” 2016, Research Institute of Economy, Trade and Industry)

“Recent Issues on Practice of Ban on Import of Counterfeit Products” (No. 14169 of “Patent News” 2016, Research Institute of Economy, Trade and Industry)

“Study of EU Court Decision(s) (C-170/13) HUAWEI v ZTE” (No. 14070 of “Patent News” 2015, Research Institute of Economy, Trade and Industry)

“Trend of Decision on RAND Royalty in the US Justice – Is “Stacking” an Issue of the Past?” (No. 14007 of “Patent News” 2015, Research Institute of Economy, Trade and Industry)

“Overview of Patent Infringement Litigation Proceedings and FRAND Related Issues in Germany” (No. 13917 of “Patent News 2015, Research Institute of Economy, Trade and Industry)

“Apple v. Samsung: Summary and Analysis of Opinions Submitted to IP High Court Grand Panel” (LES JAPAN NEWS Vol.55 No.3, September, 2014, Co-author)

“Study of Two US Court Decisions Recognizing RAND Royalty for SEP and Tokyo District Court Decision Denying Damage Claim Based on SEP” (CIPIC Journal, December 2013, Customs Intellectual Property Information Center)

“Trademark-related Court Precedents in 2011” (July issue of “PATENT” 2012, Co-author)

“Trademark-related Court Precedents in 2010” (April issue of “PATENT” 2011, Co-author)

“Trend Analysis of Intellectual Property Rights in Europe” (IP Annual Report 2009, NBL, Co-author)

Lectures

“SEP Litigation Trends and Licensing Reality in loT” (Global Intellectual Property Management (LL.M), Keio University Law School) 2021

“Trends in Recent SEP Judgements and Future Perspectives from the Lawyer’s Viewpoint” (LESI Virtual Annual Conference 2021)

“Enforceability of Standard Essential Patents in the IoT era” (Global Intellectual Property Management (LL.M.), Keio University Law School) 2020”

“Online Anti-Counterfeiting Strategies – Internet Trademark Infringement and Intermediary Liability” (International IP Symposium co-organized by IPAJ and JPAA) 2020

“General Overview of Discussions Surrounding SEP Licensing” (17th Annual Academic Research Conference of IPAJ) 2019

“The latest of Standard Essential Patent Issues” (Global Intellectual Property Management (LL.M.), Keio University Law School) 2019

“SEP eco system in the next decade” (Global Intellectual Property Management (LL.M.), Keio University Law School) 2018

“Latest issues of local employment” (EU consular and administrative counsellors meeting at the Delegation of the European Union to Japan) 2018

“Court Precedents and the Evolution of SEP-Related Issues: An Overview” (SEP Study Group Symposium in 2017, co-organized by SEP Study Group and the Licensing Executives Society Japan, sponsored by the Ministry of Economy, Trade and Industry)

“Development of child pornography site blocking scheme and applicability to trademark infringement site” (Union des Fabricants Tokyo) 2017

“Biobank Contract Issues” (JMAC’s Life Science Innovation Forum 3’s “Medical Treatment and Biobanking in the Post Genome Era”) 2017

“The Newly Adopted EU Trade Secrets Directive and the Japanese Law of Trade Secrets” (EU-Japan Centre for Industrial Cooperation) 2016

“Management Strategy and Business Strategy Involving Intellectual Property, Standards and Anti-Trust Law” (SEP Study Group, Ministry of Economy, Trade and Industry) 2016

“Trend of Judicial Precedents regarding Standard Essential Patent in the US (SEP Study Group, Ministry of Economy, Trade and Industry) 2015

“Making Japanese Labor Law Work for You-Focusing on Employment Rules and Dismissal Practices” (The German Chamber of Commerce and Industry in Japan) 2015

“Multi-stakeholder Perspectives on the Japanese Patent System”(University of Washington School of Law – Hosted by the Law, Technology & Arts Group, the Asian Law Center, and the Visiting Scholars Program) 2014

“Points for HR Person to be Aware of for Prevention of Divulgation of Trade Secrets by Retired Employees” (The German Chamber of Commerce and Industry in Japan) 2015

“Several Issues Related to Overtime Work and Extra Pay” (Tokyo, Japan)  2012

“Trademark-related Court Precedents” (Tokyo, Japan) 2011

“Validity of Dismissals and Trend of Recent Precedents” (Tokyo, Japan) 2011

Languages

Japanese, English