DLA Piper has a long history of serving Asian clients in complex patent matters all over the globe. Historically, our clients have included Ricoh, Kyocera, Toray, Toshiba, Sony, and JFE Steel. Since the opening of DLA Piper’s Tokyo Office in 2005, DLA Piper has focused on enhancing our patent-related services to global Japanese corporations. As part of that effort, Henry Koda joined DLA Piper in 2010 as our Tokyo-based Intellectual Property Group Manager. Henry has served as a Professor at Soka University Law School.
In 2013, our efforts to serve Japanese corporations took several major steps forward. In May, our practice was joined by intellectual property litigation partners Paul Steadman and Matthew Satchwell, who collectively have nearly three decades of experience representing global Japanese corporations in US and cross-border patent and trade secret litigation. Paul, Matt and Henry – together with US Patent Prosecution Chair Daniel Christenbury – developed a seminar series to serve clients in the critical intellectual property litigation, procurement, and management market. On November 6, 2013, DLA Piper launched its first Annual Global Patent Symposium in Tokyo, attended by 120 guests, including intellectual property and technology decision-makers from top Japanese companies.
Speakers presented a live demonstration of proprietary patent procurement software, discussed how to build and maintain a strong global patent portfolio and commented on strategies for tackling patent trolls and litigating before the International Trade Commission (ITC). Dan Christenbury (Philadelphia) spoke first, giving a live demonstration of Genius Note™ software, new software for preparing computer-based provisional patent applications created by a partnership between DLA Piper and Mekiki. Genius Note™ software will soon be rolled out in Japan and elsewhere to make our clients’ filing process both easier and more cost-effective. Next, Dale Lazar (Northern Virginia) spoke about strategies for building a strong international patent portfolio. Paul Steadman (Chicago) explained a number of new and efficient approaches for defending against and defeating NPE claims, and several new NPE threats on the horizon. Intellectual Property and Technology Global Co-Chair and US Chair John Allcock (San Diego) and Matthew Satchwell (Chicago) gave an in-depth view of strategies for dealing with litigation at the ITC.
The highlight of the seminar was hearing from our clients. Tokyo Intellectual Property Group Manager Henry Koda moderated a panel in Japanese, featuring former Patent Office Commissioner and IP Analyst Hisamitsu Arai; former President of the Japanese IP Association and current Takeda Pharmaceutical Company General Manager of IP Yoichi Okumura; Tokyo University Professor Katsuya Tamai; and Meijo University Professor of Law and DENSO Corporation General Manager of IP Hirohiko Usui. This panel examined “Monetization of Japanese IP rights.” Many Japanese corporations have built huge patent portfolios, and top management, eager to generate profits from hidden assets, has recently begun to pay closer attention to those portfolios. The panelists exchanged views and strategies for patent monetization goals.
The themes and topics discussed at the seminar are applicable to more than just our Japanese clients. Others who may wish to benefit from the seminar may be able to access video and written presentation materials upon request by emailing Paul Steadman, Matt Satchwell or Dan Christenbury, whose contact information is below.
For more information about patent issues in Japan, please contact: