Professional Profile

E-mail:tyaguchi@keisenassociates.com
Japanese Patent Attorney / IP Infringement Litigator (Reg. No. 10441), Japan.
Patent Agent, United States Patent and Trademark Office

Education

BE, Mechanical Engineering, Tokyo University of Science, 1990.
Qualified as Patent Attorney, National Industrial Property Council Examination Passed in 1993 (Passing Rate was 2.8 %).
Completion, The Patent Attorneys Association Industrial Property Right Law Training Institute, 1994.
Qualified as Patent Attorney IP Infringement litigator for Intellectual Property Infringement Courtroom Litigation.
National Industrial Property Council Examination Passed in 2008

Bar Admission

Japan, Specifically licensed to practice Intellectual Property laws*, 1993.
Japan Patent Office, for Patent, Utility Model, Design and Trademark cases, 1993.
United States Patent and Trademark Office for Patent and Design cases, 2002.
*Intellectual Property laws in Japan include: Patent law; Utility Model Law; Industrial Design Law; Trademark Law; Copyright Law; Trade Secret and Unfair Competition Prevention Law; Semiconductor Circuit Layout Design Law; Plant Law; and Customs Law.

Court Admission

-Japan District Courts, admitted for litigation representation practice as attorney/counsel at Specific Intellectual Property Infringement lawsuits*(2008)
-Japan High Courts including Intellectual Property High Court in Tokyo, admitted for litigation representation practice as attorney/counsel at: Specific Intellectual Property Infringement appeal lawsuits*(2008); and, Patent, Utility Model, Industrial Design and Trademark registration invalidity/patentability appeal lawsuits(1993).
-The Japan Supreme Court, admitted for litigation representation practice as attorney/counsel at: Specific Intellectual Property Infringement appeal lawsuits*(2008); and, Patent, Utility Model, Industrial Design and Trademark registration invalidity/patentability lawsuits appeal lawsuits(1993).
* Specific Intellectual Property Infringement lawsuits include any infringement lawsuits involving Patent, Utility Model, Design, Trademark, Trade Secrets and Anti Competition Prevention Laws.

Scope of Practice

-Patent portfolio development for clients, including the design and implementation of intellectual property protection programs.
-Counseling Clients regarding new and existing products including patent, trademark, Design, copyright, copyright and trade secret infringement analyses, freedom of operation studies, license negotiations, patent validity analyses and the design and implementation of non-infringing alternatives to patented technology.
-Preparing and prosecuting for clients new and existing patent, design, trademark applications before Japan Patent Office (JPO) and United States Patent and Trademark Office(USPTO)
-Representing clients in Intellectual Property infringement lawsuits at any Japanese courts, including appeal to the Intellectual Property High Court and the Japan Supreme Court.
-Representing clients in Patent, Utility Model, Industrial Design and Trademark registration invalidity/patentability appeal lawsuits at the Intellectual Property High Court and the Japan Supreme Court.
-Representing clients in Intellectual Property infringement Arbitration Proceedings at Japan Intellectual Property ADR Center.
-Representing clients in Intellectual Property Law enforcement Proceedings at Japan Customs and Customs Court.

Membership

-Japan Patent Attorneys Association
-American Intellectual Property Law Association
-Licensing Executive Society
-Philadelphia Intellectual Property Law Association
-New York Intellectual Property Law Association
-International Trademark Association
-Association University Technology Managers

Teaching Experience

-Visiting Professor of Kumamoto University for International Technology Transfer Strategy, 2007 to 2010
-Visiting Professor of Tokyo University of Science Graduate School for the Master of Intellectual Property Law, 2008 to 2011

Publications

-Co-author of “The Latest U.S. Business Method Patents 564” Jitsuyo no Nihon Sha, Ltd., November 2000
-Co-author of “Practice for American Patents” Japan Institute of Invention and Innovation” February 2000
-Co-author of “Illustrated Introduction to Business Method Patents” Jitsuyo no Nihon Sha, Ltd., June 2000

Speaking Engagements

-Speaker, “Finding Solutions and Looking Into The Future Of Japan-U.S. Technology Transfers”, Graduate School of Management of Science and Technology, Tokyo University of Science, Tokyo, Japan, October 26, 2007
-Speaker, “The International Business of Brokering Japanese University Technology Licenses”, Waseda University,Tokyo, Japan, October 23, 2007
-Speaker, “A Strategy For Utilizing Japanese Universities’ Intellectual Properties Abroad” Kumamoto University, Kumamoto City, Japan, October 22, 2007
-Panelist, “Filing Patents In China, Japan and Korea”, Canadian Intellectual Property Association’s 81st Annual Meeting, Wesin Bayshore, Vancourver, BC, October 11-14, 2007
-Speaker, “The Qualifications Sought For Personnel In The International Technology Transfer Field”, Kumamoto University, Kumamoto City, Japan, June 22, 2007
-Interpreter, “An Effective Usage of American Intellectual Property Firms a an International Business Strategy”, Tokyo, Japan, May 25, 2007
-Speaker, “Intellectual Property and Starting a Business in the U.S.A., and the Latest Circumstances For International Technology Transfer”, Metropolitan Bio-Genome Venture Network, Tokyo, Japan, February 13, 2007
-Speaker, “International Licensing Between Japan and the U.S. and Support For Cooperation Between Industry and Academia”, Hokkaido University, pporo, February 15, 2007
-Speaker, “Hand Incubator Medical Device”, Executive Briefing IX Sponsored by yet2.com, Tokyo, Japan, November 2007
-Speaker, “U.S. Intellectual Property and Entrepreneurship – Current State of the International Technology Transfer Field”, National Graduate Institute for Policy Studies, Tokyo, Japan, January 20, 2007
-Speaker, “Trends In the U.S. Patent Examination Process and Related Patent Law Changes”, Kyushu Division Ministry of Economy, Trade and Industry, Fukuoka, Japan, October 27, 2006
-Speaker, “Intellectual Property and Starting a Business in the U.S.A., and Latest Circumstances For International Technology Transfer, Parts I and II”, Waseda University, Tokyo, Japan, July 6, 2006
-Speaker, “How to use Japanese Professional” at the LES/AUTM 2006 Spring Meeting, New York, NY, May 9, 2006.
-Speaker, “Entrepreneurship” presented at 11th Annual Wharton Asia Business Conference, Philadelphia, PA, November 2005
-Speaker, “Patent Enforcement and Prosecution in Japan,” presented at the Cornell Club China and Japan IP Breakfast Seminar, New York, NY, October 2005
-Speaker (as Japanese patent law expert), “A Global Perspective of Patent Procurement and Litigation Issues for Biotechnology Inventions,” presented at the BIO 2005 International Convention held in Philadelphia, PA, June 2005
-Speaker (as Japanese patent law expert), “Intellectual Property Rights in Labor Relations and Service Provision,” presented at the International Association of Young Lawyers (Association Internationale des Jeunes Avocats) Annual Conference, Madrid, Spain, October 2004
-Speaker, “Global Harmony, Dissonance, and Recent Developments in the Patent Laws of Europe, Australia and Japan,” presented at the Boston Patent Law Association, Boston, MA, October 2004
-Speaker, “The Past/Present/Future of Technology Licensing between Japan and the United States and How to Reach Key Stakeholders in the Technology Licensing Field in Japan,” presented at a general meeting of Licensing Executives Society’s Philadelphia Local Chapter, Philadelphia, PA, August 2004
-Speaker, “How Japanese Universities Should File Patents Effectively in Foreign Countries,” presented at Industry/University/Government Collaboration Workshop Series, the fifth session, sponsored by Deloitte Touche Tohmatsu, Tokyo, Japan, February 2004
-Speaker, “Strategies for Technology and Intellectual Property Transfers between Japan and the United States,” presented at the Pennsylvania/New Jersey Nanotechnology Network Mission sponsored by the U.S. Commercial Service Division at the U.S. Embassy, Tokyo, November 2003
-Speaker, “Japan Patent Practice Update and Key Issues on U.S.-Japan Technology Licensing,” presented at the Wharton School of the University of Pennsylvania and University of Pennsylvania Law School, Philadelphia, PA, November 2003
-Speaker, “Environmental Business Opportunities in Japan,” presented at Environmental Business Opportunities in Japan, co-sponsored by Japan External Trade Organization (JETRO), U.S. Department of Commerce, Pennsylvania Office for International Business Development, and U.S. Environmental Protection Agency, West Conshohocken, PA, July 2003
-Speaker, “The Intellectual Property Rights in Japan and the United States,” sponsored by the Economic Affairs Bureau of Sendai City, Sendai, Japan, February 2003
-Speaker, “US/Japan Alliance on Technology Management Strategies,” at the Greater Philadelphia Chamber of Commerce, Philadelphia, PA, February 2003
-Speaker, “How to License Your Own Invention in an American Way,” sponsored by an international consulting firm of JCI, Inc., Tokyo, Japan, December 2002
-Speaker, A Japan patent seminar on “How to Obtain Patents in Japan,” sponsored by the Japan-America Society of Pennsylvania and Duquesne University Small Business Development Center, Pittsburgh, PA, October 2002
-Speaker, a Japanese patent seminar on “How to Efficiently Prepare and Obtain Patents in Japan,” at the Greater Philadelphia Chamber of Commerce, Philadelphia, PA, February 2002
– Served as Japanese law expert witness for the American Arbitration Association in a case in which a large Japanese corporation was involved in October 2001
-Selected as a Japanese delegation and delivered statements for the Diplomatic Conference for the Adoption of the Patent Law Treaty which was held in World Intellectual Property Office in Geneva, Switzerland, 2000

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