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Keisaku ISHIHARA  I will Contribute to Our Clients by Consistently Thinking through Every Possible Measure

Educational/Professional Background
1996 Completed Nagoya University, Faculty of Engineering, Department of Mechanical Engineering, Master's course
1996 Joined Mitsubishi Electric Corporation
1997 Received JSME (The Japan Society of Mechanical Engineers) Treatise Award
1998 Joined Adachi International Patent Firm (now Nagoya International Patent Firm)
2001 Registered as a patent and trademark attorney
2004 Trained in Boehmert & Boehmert course in Germany
2006 Qualified as an IP infringement litigator (Qualified as having passed the Specific Infringement Litigation Representation Examination under Article 15 bis of the Patent Attorneys Law in Japan)
2007 Assumed the post of Vice-President/Partner when the firm was incorporated under the name of Nagoya International Patent Firm
Main Field of Expertise
Specialized in mechanical engineering, control engineering, mechatronics and business method
Especially, familiar with vehicle control such as braking control and engine control, etc., information and telecommunication, semiconductor substrate manufacture and fluid equipment
Knowledgeable about IP practice in various countries in the world, as well as in Japan
Member of AIPPI, APAA, INTA
Language
English (highly fluent, written and spoken), Chinese (read), and German (read)

Performance in Practice

  1. Application Practice
    I am well-experienced in representing various domestic and foreign clients including large companies, small and medium-sized companies, universities and individuals in filing applications. I often prepare amendments or rebuttals by discussing the matter with patent attorneys or inventors in foreign countries on the phone, which often results in an appropriate handling. I have abundant experiences in interviewing with the examiner of the Japan Patent Office (JPO). I have dealt with many applications having office actions that seem to indicate that it is difficult to obtain a decision of registration, yet were given protections through interviews I conducted. Also I have represented our clients in filing many applications of design and trademark, in addition to patent and utility model.
  2. Trial and Interpretation Practice
    I have represented our clients in patent invalidation trials. In one case, invalidity based on lack of novelty or inventive step and inappropriate descriptions was disputed only by documentary evidence. In another case, I attempted to prove, by examination of witnesses, that the invention was publicly worked prior to the filing of the patent application. In addition to patent invalidation trials, I have also represented our clients in trademark invalidation trials. Furthermore, I have plenty of experience with trials for correction and appeals against examiner’s decision of rejection. Also, I have good experience in litigation against decisions of the above trials or appeals (suits against appeal decisions). Moreover, I have represented our clients in requesting interpretation on whether or not specific product belongs to the technical scope of a patented invention to the JPO.
  3. Expert Opinion Practice
    I have abundant experiences in preparing expert opinions on infringement and invalidity of patent right. I have also prepared written opinions arguing how specification of the current product may be modified in design in order to possibly avoid infringement.
  4. Dispute Practice
    I have sent infringement warning letters and conducted direct negotiations (including license negotiations). In the negotiation process, I.always keep reminding myself that it is important to maximize the benefits of the client rather than sticking to arguments concerning intellectual property. As for infringement suits, I have represented both plaintiff and defendant.
  5. Contract-Related Matters
    I have abundant experiences in counseling and drafting contracts in the areas of license agreement, joint development agreement, joint application agreement, etc.

Appropriately Meet Foreign Client's Requirements

I am a partner in charge of foreign services at Nagoya International Patent Firm. Accordingly, in response to requests by foreign clients, I perform management services. In other words, for the field of my specialty, I handle the cases on my own or in a team led by myself. When a requested case is in the field other than my specialty, I, of course, arrange another patent and trademark attorney having a specialty in the field the case is related to, or a team led by the patent and trademark attorney, to practically and appropriately handle the case, and at the same time, expend my efforts so that the attorney or team can communicate smoothly and appropriately with our foreign clients. I consistently make every possible effort to improve quality of services offered by our firm to foreign clients. Also, I intend to appropriately understand the needs foreign clients have by directly exchanging opinions with foreign patent attorneys and clients through frequent visits to their offices and participations in intellectual property-related international conferences (AIPPI, APAA, INTA, etc.).

Make Use of Experiences as Developer

In former workplace in an electric manufacturer, I was engaged in the development of compressor for air conditioner. During the development, I myself was involved, as an inventor, in applications filed in Japan and the US. Also, in parallel to the development task, I conducted invalidity research of competitor's patent which had become a barrier in process of the development in order to invalidate the competitor's patent. Based on such experiences of myself, I place great importance on meeting our clients' needs most important to them from the viewpoint of a CEO/business owners, as well as inventors.

Achievement

  1. Committee of JPAA (Japan Patent Attorneys Association)
    (2004-2005) Belonged to International Activity Center (US Division, Europe Division), and involved in research of intellectual property systems in the US and Europe
    (2006-2011) Belonged to Intellectual Property Value Evaluation Promotion Center, and involved in research on the monetary value evaluation of intellectual property and the value evaluation needed to be conducted during alliance formation process
    (2008 and 2009) Belonged to Intellectual Property Consultation Committee
  2. Lectures
    In 2004 and 2007, served as a lecturer at seminars for general public and for university professors/lecturers in order to enhance people's knowledge and understanding of intellectual property rights and to encourage broad use of it in local community (activities of JPAA Tokai Branch);
    In 2012, served as a seminar lecturer on the subjects titled “IP Protection Strategy in Japan” and “Enforcing IP in Japan” at a seminar event we held in New York in collaboration with three patent firms from the U.S., Germany, and China;
    In 2013, served as a seminar lecturer at Nagoya University on the subject titled “Influence of Revision of U.S. Patent Law”;
    In 2015, served as a seminar lecturer on the subject titled “European Patent System” at a special training course in Nagoya sponsored by Japan Intellectual Property Association;
    In 2017, served as a speaker on the subject titled “Tips for Prosecution in Japan based on EPO-style PCT applications” in a session titled “[PATENTS] What do foreign colleagues expect from EPO­style PCT applications? The view from outside / best practice / claim drafting” at UNION IP Congress 2017 sponsored by UNION IP (https://www.union-ip.org/);
    In addition, served as a lecturer at seminars for members of JPAA and for client companies.
  3. International Conferences
    As a member of AIPPI, APAA, INTA, MARQUES, and IPO, continuously attended their annual meetings as far as the circumstances permit.

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