A Trip to Japan with the American Intellectual Property Law Association

John Hardaway of Nexsen Pruet’s Intellectual Property Group traveled to Japan with the Japan Practice Committee of the American Intellectual Property Law Association. Mr. Hardaway is prior co-chair of the Committee, and co-chaired the Committee with David J. Kappos who is now the Director of the U.S. Patent and Trademark Office. A brief review of the Committee activity follows.

The Committee had a full week of meetings. The Committee was headed up by the President and Vice President of the American Intellectual Property Law Association and 20 committee members and officers.

The Committee spent a morning meeting with the American Chamber of Commerce in Japan. Discussions included the current political climate in Japan. An interesting follow up is that after this meeting the Prime Minister of Japan resigned and the new appointee is Mr. Naoto Kan. Mr. Kan is actually a Benrishi, i.e., a Japanese patent attorney.

The Committee met that afternoon with the Japanese Trademark Association with discussions on both the U.S. and Japanese side regarding trademark issues. The Japanese contingent reported on Intellectual Property Border Enforcement and Japan Customs. These were followed by presentations from the U.S. side regarding Intent to Use Trademark Applications and Opposition Practice in the U.S.

The Committee spent a full day with the Japan Patent Attorney Association, having a closed meeting with the leadership of the Japan Association and an open meeting in the afternoon where all practicing Japanese patent attorneys were invited. During the closed meeting, presentations were made by both the U.S. and Japanese contingents relating to intellectual property controls in the respective countries. The U.S. section opined as to the effect of the Ariad v. Lilly decision on written description and its impact on prosecution and claim construction. The U.S. made various presentations regarding the changes in the U.S. Patent and Trademark Office that have come about as a result of USPTO Director, David Kappos.

The closed meeting consisted of the U.S. contingent and 20 members of the leadership of the Japan Patent Attorneys Association.

The open meeting had only presentations of the U.S. Section to the Membership of the Japan Patent Attorneys Association. (Approximately 400 Japanese patent attorneys were present for the seminar presentations by the U.S. Committee.) Presentations were directed to Obviousness Standards under KSR, The Evolution of Reexamination and Litigation in the U.S., Current Patent Reform Efforts in the U.S., as well as pending cases on fraud in the USPTO. The U.S. Section attorneys conducted a mock trial of a typical patent infringement case for the benefit of the Japanese Patent Attorneys.

A repeat of the U.S. Delegation presentations occurred at the Japanese Intellectual Property Owners Association and at the Institute of Intellectual Property. One half-day was spent at the Japanese Patent Office meeting with the Japanese Commissioner of Patents, with discussions regarding difficulties faced by U.S. applicants in Japan.

On the final day of the meetings, a breakfast meeting was held with the staff of the U.S. Embassy and with resident FBI personnel to discuss cross-border enforcement efforts in Japan, particularly as they relate to counterfeit goods.

A further meeting was held with the Japan Federal Bar Association which is the Association of Bengoshi, who are more closely related to a U.S. attorney status as opposed to a patent agent status. Many of the earlier presentations were repeated.

The final afternoon was spent with the Judges of the Intellectual Property High Court where a number of the cases from the Court of Appeals for the Federal Circuit were discussed. The judges were happy to receive this information and reported about similar cases heard in the IP High Court.

During the week there were a number of social events held with the various organizations. The IP Practice in Japan Committee entertained all of the respective groups from the various meetings at a closing reception at the American Club in Tokyo.