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Yoshinari
Kishimoto
Partner
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Mr. Kishimoto has served Sughrue Mion, PLLC in the executive and managerial position of Managing Partner at its office in Tokyo, Japan since April 2004. He has extensive experience in preparing and filing of applications for U.S. Patents with the USPTO, rendering legal advice and opinions concerning the infringement of and the validity of U.S. Patents as well as Japanese Patens, licensing and assignment of rights in U.S. Patents, and representing Japanese clients to litigate in the U.S. District Courts and U.S. International Trade Commission. His work focuses on electrical, mechanical and chemical areas. He is native Japanese, speaks fluent Japanese, and is a registered Japanese Patent Attorney. He is author of many books and articles and often gives lectures for various IP associations, universities and companies.
Bars
District of Columbia, New York
U.S. Court of Appeals - Federal Circuit
U.S. Patent and Trademark Office
Japanese Patent Office
Tokyo and Osaka District Courts and IP High Court in specified infringement litigation
Education
George Washington University Law School (LL.M. Intellectual Property, 1998)
Keio University (Bachelor of Laws 1994)
University of Tokyo (B.S. M.E., 1980)
Expertise
Various mechanical and electrical arts, including but not limited to, motor vehicles, semiconductors, circuitry, control devices, robotics, endoscopes, optics, information systems and printing devices.
Prior Experience
Armstrong, Westerman, Hattori, McLeland & Naughton (1994 - 2001) Hiraki & Associates, Associate, (1991-94) Japan Patent Office, Examiner, (1981-91)
Publications and Teaching
How to Challenge Patent Validity
Nikkei Interview about “U.S. Patent Reform” (Nikkei Sangyo Shimbun, September 29 morning edition)
“US Patent Litigation Defense Manual”, Chuo Keizai
“Utilizing IP to become president (US volume)”, Nikkei Shimbun
Intellectual Property Management, Vol. 57 No. 7, “Defensive Strategies for Protecting Companies from Patent Trolls”, July 2007
Business Houmu, “Pre-litigation Countermeasures against Patent Trolls”, May 2007
“Canon tests patent exhaustion doctrine”, Managing Intellectual Property, July/August 2006
Nikkei Nano Business, No. 39, “Patent Now, First CAFC decision on nanotechnology”, June 2006
Patent Journal, Vol. 48, Nos. 6, 9 & 10 "A comparative study of the relationship between patent systems and antitrust laws in the United States vs. Japan".
Speeches
Presentation on “Patent Reform Act” JPAA Training Seminar (Nov., 2011)|
Presentation on “Sughrue Seminar - America Invention Act” Sughrue Tokyo (October, 2011)
Lecture on “ Patent Enforcement in the U.S.” at Keio University (July, 2011)
Lecture on “U.S. Patent litigation” at Keio University (July, 2010)
Presentation on “Litigation before United States International Trade Commission” UBIC Symposium at Nagoya (January, 2010)
Presentation on “Pitfalls and blind spot Japanese companies encounter in the US litigation” LES Japan (September, 2009)
OITDA Patent Forum, “Recent IP Trend and How to Defend Your Company against Patent Litigation” (Mar 2009)
JIPA Kanto Electrical Machinery Division, “Strategies for Patent Disputes in the US – Defense Strategies for Patent Trolls” (Jan 2009)
BRI Seminar, “Practical Tips for US Patent Litigation” (Mar 2008)
AIPPI “Mock Trial Seminar” (Nov 2007)
2007 JPAA Training Program for Nagoya members, “New Rules for USPTO” (Oct 2007)
Kyoto University, Management of Technology in Medical Science Course, “US Patent Litigation”, (Nov 2006)
2006 APLF-DePaul University School of Law Symposium, “New Japanese Patent Law” (Sept 2006)
2005 JPAA IP symposium “Update on US Patent Legislative Movements and Litigation” (May 2005)
2003 JPAA IP Symposium, “Post-graduate IP Education in Japan”, (Mar 2003)
“Patent Enforcement in the US”, Advanced Industrial Science and Technology, (Jul 2002)
JPO Seminar, “Basic Differences in Patent Systems between Japan and the United States”, (Oct 2001)
Institute for International Research Seminar, “Beyond GATT: Commercialize & Exploit Intellectual Property in the Global BioRX Market”, (Dec 1995)