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Takeya OKAMOTO  Aiming to be a “Real” Contributor as a Professional of Technology, Law and Service

Educational/Professional Background
1989 Graduated from Nagoya University, Faculty of Engineering, Department of Aeronautical Engineering (studied WIG Wing in Aircraft Dynamics Course)
1989 Joined Adachi International Patent Firm (now Nagoya International Patent Firm)
2005 Registered as a patent and trademark attorney
2007 Assumed the post of Vice-President/Partner when the firm was incorporated under the name of Nagoya International Patent Firm
2009 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)
Main Field of Expertise
For patent practice, specialized in control engineering, physics, information and telecommunication, and mechanical engineering.
Especially, skilled in automobile engineering (inter-vehicle distance control, motion characteristic control, etc.), ITS (car navigation, GPS, ETC, etc.), image processing, voice recognition, sound reproduction (karaoke, electronic musical instrument), etc.
Information systems security administrator

Performance in Practice

  1. Preparation and prosecution of patent applications
    • More than 20 years of experience in IP field
    • Involved in the preparation of more than a thousand and several hundreds of patent applications (several thousands when the cases where I supervised for my subordinates are included)
    • Providing lectures on intellectual property at client's intellectual property divisions making use of more than 10 years of practice training experiences
    • Drafted more than 15 applications a month to meet client's urgent requests
    • Involved in diverse levels of inventions, from those made at basic research divisions in academic and corporate entities to those related to end user products, with a belief that offering advice and proposals which meet client's potential needs is essential to provide high quality service, considering that purposes and strategies for pursuing a patent vary depending on the levels of inventions
  2. Litigation and Dispute
    • In addition to qualification as a patent and trademark attorney, qualified as an IP infringement litigator to represent a plaintiff or defendant in an infringement lawsuit
    • Experience in invalidation trial mainly based on inappropriate description
    • Extensive experiences of preparing warning letters and written replies on infringement of patent right, unfair competition, etc.
  3. Expert opinion
    Handled unique cases as below:
    1. A case regarding invention defined by a numerical limitation, in which expert opinion is asked for on whether or not the accused product with upper limit of 90.5 % infringes on the patent right having a description "upper limit of 90 %" in its claim
    2. A case regarding whether or not there exists a ground for invalidation based on breach of requirements for joint application or usurpation
  4. Consulting service
    • As well as filing applications, provide intellectual property consulting services in each step from upstream to downstream of intellectual property creation cycle, through experiences of invalidation trial, expert opinion, suit against appeal decision, infringement suit, etc.
    • Have abundant experiences in providing advices on various contracts including joint research and development, joint application and license; with a belief that reviewing contracts through discussion with several members related to the case is occasionally very effective for providing suitable advices

Fusion of Individual Power and Team Power

While handling of each case by a patent and trademark attorney is often completed on one's own, I also realize that working in a team is important as well. As mentioned above, discussion with other members related to the case in reviewing contracts is effective. In addition, I intend to gather knowledge of various members in offering expert opinions and IP consulting services, as well as in handling litigations, in order to provide high quality services.

Aiming at Contribution to Acquirement of Usable Right, and Utilization of the Right

  • A phrase "After Invention is Born, Patent Attorney Cultivates It" is known in the area of intellectual property. While it is an inventor that produces (a seed of) invention, it is a patent attorney that can show his abilities in cultivating it. Among inventions presented by clients, some are highly perfected, while some are at the idea level. Sometimes I feel "it is me that have cultivated this invention!" while being involved in plenty of cases. I feel encouraged when an invention is granted a patent, and further becomes essential to the client's business strategy, e.g., when the invention earns a large amount of license fee, and when the invention has become a significantly effective entry barrier in the industry.
  • I would very much like to contribute to acquirement of usable rights and utilization of the rights by flexibly meeting client's various needs not only in the phase from application to registration but also in upstream or downstream of the phase.

Achievement

(Achievement in recent three years)

  1. Committee of JPAA (Japan Patent Attorneys Association)
    In 2007 and 2008, belonged to Unfair Competition Prevention Act Committee, and studied cases regarding the Unfair Competition Prevention Act
    In 2009, belonged to Patent Committee, and conducted a training on cases and a trilateral comparative research among the US, Europe and Japan, mainly on 'finding of claimed invention', 'description requirements of specification' etc.
  2. Lectures
    In 2007 and 2008, served as a lecturer at a seminar of free civil courses in order to enhance people's awareness of intellectual property system and to encourage broad use of it in local community

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