2017 jpaa ip practitioners seminar · because of the sponsorship by the jpaa. many japanese patent...

2017 JPAA IP Practitioners Seminar 2017 JPAA IP Practitioners Seminar February 27 – 28, 2017 Hanoi, Vietnam Organized by The Japan Patent Attorneys Association (JPAA) In cooperation with The Japan Patent Office(JPO) The Vietnam Intellectual Property Association (VIPA) Himeji Castle, JAPAN Photo Provided by Himeji City©

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Page 1: 2017 JPAA IP Practitioners Seminar · because of the sponsorship by the JPAA. Many Japanese patent attorney tutors attend the group discussions and eager-ly teach about the practice

2017 JPAA IP Practitioners Seminar2017 JPAA IP Practitioners Seminar

February 27 – 28, 2017Hanoi, Vietnam

Organized by The Japan Patent Attorneys Association (JPAA)

In cooperation with The Japan Patent Office(JPO) The Vietnam Intellectual Property Association (VIPA)

Japan Patent Attorneys Association3-4-2 Kasumigaseki, Chiyoda-ku,Tokyo, 100-0013 Japan

TEL:+81-3-3581-1211 / FAX:+81-3-3581-9188E-mail: [email protected]

http://www.jpaa.or.jp/Himeji Castle, JAPANPhoto Provided by Himeji City©

photo by Junko Saito

Page 2: 2017 JPAA IP Practitioners Seminar · because of the sponsorship by the JPAA. Many Japanese patent attorney tutors attend the group discussions and eager-ly teach about the practice

As the President of the Japan Patent Attorneys Association, I would like to announce that the JPAA IP Practitioners Seminar will be held in Hanoi, Vietnam, on February 27 and 28, 2017. The main aim of this Seminar is to provide the most up-to-date and accurate IP information to practitioners from across Asia. The Semi-nars have been held once every two years since 2005, and the coming Seminar will be the seventh. We are very proud to have held these Seminars continuously and successfully. Although rules and practices for obtaining and protecting IP rights are slightly different from country to country, the core part of our work is universal. In our teaching in this Seminar, we will focus on the universal part of how to obtain and protect IP rights particularly regarding patents, design and trademarks. We believe that the Seminar will be beneficial for IP practitioners regardless of their level of

Location INTERCONTINENTAL HANOI WESTLAKE 5 Tu Hoa street, Tay Ho district, Hanoi, Vietnam Phone : +84 4 6270 8888  Fax : + 84 4 6270 7120 URL: http://www.hanoi.intercontinental.com/

Dates February 27 and 28, 2017

Language English only

Registration and Seminar FeesApplications and payment of the registration fee of USD 200/person will be accepted online only on a first-come-first-served basis and will be open on January 4, 2017 and closed on February 10, 2017. Links to the online registra-tion form and additional information can be found on the JPAA website:

www.jpaa.or.jp/english/index.html

The registration fee includes all seminar materials, coffee breaks, lunches, and the Welcoming Reception. All other expenses, such as accommodation fees, are the responsibility of the attendees.

AccommodationsAttendees are responsible for their own accommodations. The attendees can book their own accommodations at INTERCONTINENTAL HANOI WESTLAKE with following URL.

https://www.ihg.com/intercontinental/hotels/gb/en/reservation/findandbook

IATA #:99801505、Group Code: W3A

Organizing Committee

President ITAMI, Masaru, Kisaragi Associates

Vice President AOYAMA, Hitoshi, TSUTSUI & ASSOCIATES

Director General, JPAA International Activities Center OHNISHI, Shogo, S.OHNISHI & ASSOCIATES

Chair, Organizing Committee KUROKAWA, Tomoya, SOEI Patent & Law Firm

Vice-Chair, Organizing Committee INOUE, Seiichi, Urban International Patent Firm

Speakers ASHIHARA, Emi, YKI Patent Attorneys IIZUKA, Takeshi, Iizuka International Patent Office INOUE, Hironari, AIWIL PATENT LAW FIRM KANAMORI, Akihiro, ONDA TECHNO Intl. Patent Attys. KONISHI, Kay, KONISHI & NAGAOKA IP Firm MURAI, Koji, Shinjyu GLOBAL IP OKUMURA, Naoki, Nakamura & Partners SAITO, Junko, ISHIDA & ASSOCIATES SATO, Shunji, TMI Associates SHIBATA, Fujiko, Ayafune International Patents & Trademarks, PPC SUZUKI, Yasuhito, ABE, IKUBO & KATAYAMA

Cancellation and LiabilityAttendees are encouraged to purchase travel insurance as the organizers willassume no liability and the registration fee is not refundable.

Immigration and Visa InformationImmigration and Visa InformationAttendees who wish to enter Vietnam should confirm visa information, such as visa exemption to Vietnam. Please check with the Vietnam embassy HP in your countries to get more information. For your convenience, please visit the following URL.http://lanhsuvietnam.gov.vn/Lists/BaiViet/B%C3%A0i%20vi%E1%BA%BFt/DispForm.aspx?List=dc7c7d75-6a32-4215-afeb-47d4bee70eee&ID=306

Smoking Policy Smoking is only permitted in designated smoking areas.

experience. Beginners as well as professionals in IP practices in Asian countries are welcome to attend. The Seminar is sponsored and organized by the JPAA. The fee for attending the Seminar is fairly inexpensive because of the sponsorship by the JPAA. Many Japanese patent attorney tutors attend the group discussions and eager-ly teach about the practice of patents and trademarks. In each of the last six Seminars, we accepted 100 or more partic-ipants. We are looking forward to accepting a similar number for the next Seminar in 2017. We are quite sure that the next Seminar will also provide practical information and knowledge to all the participants. I look forward to seeing you in Hanoi.

Mr. Masaru Itami President Japan Patent Attorneys Association (JPAA)

We are pleased to make the announcement of the opening of the JPAA IP Practi-tioners Seminar again. As mentioned in this brochure we are holding this seminar continuously or every 2 years. This seminar is the 7th seminar since we held it in Singapore in 2005 for the first time. As done in the past, we do our best to give the students useful information as well as skills to be IP professionals. Many Japanese patent attorney tutors will take care of the proceedings of the seminar, which includes several plenary sessions and workshops for the patent group and trademark/design group. All the tutors have matured skills in IP fields, and accordingly they will surely give good lectures and discussions. Many sessions, particularly workshops are planned to be done in an interactive way. Therefore all students are required to express their own thoughts to the tutors, since the tutors will give a lot of questions for the discussions. Please enjoy the interactive lectures.

As the students learned in the past seminars, we tutors learned a lot through the 6 seminars that we had in the past. The experiences and knowledges that we got through past seminars will help our lectures in the 7th seminar, and accordingly we are sure that we can have a useful, pleasant and enjoyable seminar this time, too. We look forward to seeing you in Hanoi.

Mr. Shogo Ohnishi Director General International Activities Center, JPAA

2017 JPAA IP Practitioners Seminar

General Information

2017 JPAA IP Practitioners Seminar

 TSUCHIYA, Fumihiko, Tsuchiya Patent Office TSUTSUI, Shoko, TSUTSUI & ASSOCIATES TSUNO, Masaya, TMI Associates UEDA, Shinichi, GOTOH & PARTNERS YOKOTA, Nobutaka, FIELDS IP Attorneys

Tutors ENDOH, Shusa, AKIT patent and trademark attorneys IWAKIRI, Atsushi, Panasonic Corporation KAIGUCHI, Muneaki, KAIGUCHI & ASSOCIATES KATAYAMA, Ken-ichi, OHNO & PARTNERS KAWASAKI, Shinji, Honda Motor Corporation KOSHIKAWA, Takao, KOSHIKAWA &Co. ONUKI, Toshifumi, TMI Associates SAKASHITA, Noriko, KONISHI&NAKAMURA SUZUKI, Yasuhiro, MORI & WARD, LLP YAMASHITA, Yuji, WILLFORT INTERNATIONAL PATENT FIRM

Welcome Message

Page 3: 2017 JPAA IP Practitioners Seminar · because of the sponsorship by the JPAA. Many Japanese patent attorney tutors attend the group discussions and eager-ly teach about the practice

As Exective Vice President of the Vietnam Intellectual Property Association (VIPA), I am very pleased to announce that through the valuable cooperation between the Japan Patent Attorneys Association (JPAA) and the Vietnam Intellectu-al Property Association (VIPA), the JPAA 2017 IP Practitioners Seminar will be held in Hanoi, Vietnam on February 27-28, 2017. It is our special honor to coordi-nate with JPAA in organizing such a meaningful Seminar this year. Nowadays, the Vietnam’s Government has been making many efforts in improv-ing the IP system, such as perfecting IP legislation, cooperating with other jurisdic-tions to speed up the examination, and organizing many seminars aimed at over-coming certain existing difficulties in the IP practice. As an IP specialized organiza-tion duly organized under the Vietnam laws, VIPA has been assisting the Govern-ment in reviewing legal documents, connecting with foreign partners, and collabo-rating in the organization of a number of professional conferences and seminars. On behalf of VIPA, I wish to take this opportunity to warmly welcome all partic-ipants attending this JPAA 2017 IP Practitioners Seminar in Hanoi, and to say how

grateful we are to JPAA for choosing our Hanoi for this special event and for the devotion and commitment to the organization of this valuable Seminar. Also, I would like to extend a very warm Vietnamese welcome to Mr. Masaru Itami, President of JPAA, all of our friends and colleagues, and all IP practitioners from Japan who are attending this event for sharing your comprehensive knowledge on intellectual property to the participants. It is an opportune time for us to learn and exchange knowledge and information regarding intellectual property from each other. I do believe that all participants will find this Seminar to be so beneficial and fruitful to your IP practices. Once again, it is with great pleasure that I warmly welcome you all to the JPAA 2017 IP Practitioners Seminar in Hanoi. I sincerely wish you a productive and successful Seminar, and a pleasant stay amongst us. Mr. Mai Ha Executive Vice President Vietnam Intellectual Property Association (VIPA)

Trademark & Design Group(Ballroom 3)

9:00 - 9:45 Session T-3Regional Phase of International Registration of MarksMURAI, KojiThis session reviews the outline of the Madrid System, and present analysis on the various aspects of regional phases of the System from a statistical view point, and introduces actual mark examples in and from Asian countries.

9:45 - 10:30 Session T-4Hague SystemSATO, ShunjiShunji will present a basic of Hague Agreement Concerning the International Registration of Industrial Designs, including protectable subject matter, procedure to obtain design registration. Then he will present the differences between the Hague system and the Madrid system/PCT system and how we should utilize this system.

10:30 - 11:00 Coffee Break

11:00 - 11:45 Session T-5Geographical Indications Protect System in JapanINOUE, hironariIn this session, contents of GI (geographical indication) registration system newly legalized in Japan will be explained. Specifically, the difference between the GI registration system and conventional GI protection methods in trademark law will be studied.

11:45 - 12:30 Session T-6Progress in Non-Traditional trademarks' protection -Registered cases in Japan-TSUTSUI, ShokoNon-Traditional trademarks, such as for motion, hologram, color, position, and sound trademarks are protectable under the Japan Trademark Act since April 1, 2015. This session will summarize related statistical data and report some registered trademarks before the JPO.

12:30 - 14:00 Lunch (Saigon and Milan Restaurant)

14:00 - 15:00 Session T-7Use Requirement of Trademarks in JapanSUZUKI, YasuhitoThis session focus on use requirement of trademark in Japan before registration and after registration from practical point of view. Also, how use requirement is fulfilled in case cancellation action for non-use is demanded by reviewing the recent IP High Court ruling. Necessity of positive intent to use is discussed in reviewing the ruling.

15:00 - 15:20 Coffee Break

15:20 - 17:00 Session T-8Mock Trial (Trademark Infringement Litigation)Moderator: OKUMURA, NaokiIn this session, we will have a mock trial of hypothetical trademark infringement case, together with a presentation and lecture on ordinary trademark infringement proceeding under the Japanese judicial system. We will also discuss the possibility of application of the Unfair Competition Act.

2017 JPAA IP Practitioners Seminar

Tuesday, February 28Patent Group(Ballroom 1&2)

Training of Patent PracticeParticipants of these sessions P-7 to P-10 for patent practice will have group discussions on how to draft claims and how to respond to official actions through two inventions. Finally each group will give a presentation about their discussion for all the participants

9:00 - 10:30 Session P-7Training of Claim Drafting ①INOUE, SeiichiIn this session participants will discuss how to draft claims for an invention in their group. They will prepare draft claims for their group based on the explanation of the gist of the invention and the prior arts.

10:30 - 11:00 Coffee Break

11:00 -12:30 Session P-8Training of Claim Drafting ②INOUE, SeiichiThe leader appointed in each group will present the draft claims in front of all participants. The tutor of the group will comment on the presented draft response and finally a commentator will review the presented draft responses by the groups.

12:30 - 14:00 Lunch(Saigon and Milan Restaurant)

How to Respond to Office Actions 14:00 - 17:00In this session, the participants will discuss how to effectively respond to office actions, especially focusing on the rejections as to novelty, inventive step, and description requirement. Some points for obtaining a strong patent with suitable broadness of invention will be discussed and explained.

14:00 -15:00 Session P-9TSUCHIYA, FumihikoParticipants will review the office action and prepare draft response in a group.

15:00 - 15:30 Coffee Break

15:30 -17:00 Session P-10TSUCHIYA, FumihikoThe leader appointed in each group will present the draft response in front of all participants. The tutor of the group will comment on the presented draft response and finally a commen-tator will review the presented draft responses by the groups.

2017 JPAA IP Practitioners Seminar

photo by Fumihiko Tsuchiya

Page 4: 2017 JPAA IP Practitioners Seminar · because of the sponsorship by the JPAA. Many Japanese patent attorney tutors attend the group discussions and eager-ly teach about the practice

2017 JPAA IP Practitioners Seminar 2017 JPAA IP Practitioners Seminar

ProgramDuring the two-day seminar, intellectual property practitioners will gain a practical overview of the Japanese intellectual property (IP) system and environment.

Each session will provide applicants and their agents with specific tools and information which they can use to smooth prosecution, increase the value of the IP portfolio, and reduce overall costs.

For all participants, the Monday morning sessions are designed to cover the Japanese IP system and environment in general.

On the other hand, participants may choose one of the three groups, 1) Patent (Electrics and Mechanics Group), 2) Patent (Chemicals Group) or 3) Trademark & Design, starting from Monday afternoon.1) Patent (Electrics and Mechanics Group) and 2) Patent (Chemicals Group) will be held in same room.3) Trademark & Design Group will be simulta-neously held in different room.

Furthermore, a portion of these three group sessions will allow participants to share their real world Experiences in IP practice, and obtain feedback on the same from their fellow attendees.

A welcome reception will be conducted after the conclusion of the last Monday session. This recep-tion will be an excellent opportunity to forge or renew acquaintances and network with each other.

Monday, February 27All Participants(Grand Ballroom)

08:00 - 09:00 Registration

09:00 - 09:15 Welcoming Remarks

09:15 - 09:40 Session M-1International exchange and activity of JPAAITAMI, Masaru President, Japan Patent Attorneys Association (JPAA)We would like to review the international exchange and activity of the JPAA as a patent attorney profession. Especially, we would like to explain it on Asia area.

09:40 - 09:50 Session M-2Welcome message from Vietnam Intellectual Property Associa-tionHA, MaiExecutive Vice President, Vietnam Intellectual Property Association (VIPA)He will give all the attendees his welcome message on behalf of Vietnam Intellectual Property Association, and brief introduc-tion of VIPA.

09:50 - 10:20/10:50 - 11:20 Session M-3Recent Developments and Future Prospects in the IP Fields of AMSTAKADA, MotokiDirector, IP department, JETRO BangkokSAWAI, YokoIP specialist, IP department, JETRO BangkokThis session will overview the recent developments and future prospects in the IP fields of ASEAN member states(AMS) from the perspective of bilateral or multilateral cooperation between Japanese governments and AMS as well as from the perspective of Japanese companies' expectation for AMS

10:20 - 10:50 Coffee Break

11:20 - 12:30 Session M-4①Patent SearchKONISHI, KayPatent search is of great significance for every IP practitioner in every phase of patent prosecution including pre-filing, during prosecution, and enforcement. Vast amount of patent informa-tion at JPO is accessible for foreign IP practitioners through “J-Plat Pat”. These days not only patent publications but also dossier information in connection with patent application family is open to public.This session will address an outline of patent search through the J-Plat Pat”, then some hypothetical scenarios will be discussed so as to facilitate your Japan related daily practice.

②Trademark SearchSAITO, JunkoTrademark search is important to reduce the possibility of rejection of trademark application and avoid the infringement risk of another’s right. In this session, available information in the J-Plat Pat English version is introduced and how to conduct trademark searches will be shown using several examples.

12:30 - 14:00 Lunch (Saigon and Milan Restaurant)

Patent Group(Ballroom 1&2)

14:00 - 14:40 Session P-1How to Draft Claims for a Patent Application and How to Respond to an Official Action (Electrics and Mechanics )KANAMORI,AkihiroIn this session, how to draft claims for a patent application and how to respond to an Official Action (OA) are generally explained. You will experience each step for drafting claims and responding to OA using a practical example.

14:40 - 15:00 Session P-2How to Draft Claims for a Patent Application and How to Respond to an Official Action (Chemistry)SHIBATA, FujikoClaim Drafting & Response to the Office Action for a chemical case are explained, because there are differences from those in the electrical or mechanical cases. In this session, such differences between the chemical cases and other cases belong-ing to other fields are explained, including points to be focused for drafting claims and preparing a response to the OA.

15:00 - 15:30 Session P-3Explanation for Claim Drafting (Electrics and Mechanics) UEDA, ShinichiThis session provides how to find out a feature of an invention, which is not disclosed and suggested by prior art. The client letter and the prior art of the assignment as well as some tips for claim drafting will be explained.

15:30 - 15:50 Coffee Break

15:50 - 16:20 Session P-4Explanation for Claim Drafting (Chemistry)YOKOTA, NobutakaIn this session, the materials and information necessary for the next day’s group discussion (Sessions P-7 & P-8) will be explained. This session will help you in understanding the gist of the invention and the contents of the prior art documents D1 and D2. Claim formats adapted to JPO practice will also be explained.

16:20 - 16:50 Session P-5Explanation for How to Respond to an Office Action (Electrics and Mechanics)IIZUKA, TakeshiIn this session, a mock patent case at an Office Action stage will be explained. Specifically, a summary of an invention, an Office Action and cited references will be explained, which will help participants to prepare a set of an amendment and a summary of an argument on the next day.

16:50 - 17:20 Session P-6Explanation for How to Respond an Office Action (Chemistry) TSUNO, MasayaIn this session, participants will be explained an office action with an application and the cited reference. Each group will be required to prepare a draft claim amendment and the gist of arguments for the next day.

18:00 - 20:00 Welcome Reception for all participants (Sunset Bar)

Trademark & Design Group(Ballroom 3)

14:00 - 15:30 Session T-1Trademark Examination Guidelines in JapanASHIHARA, EmiEmi will provide an outline of the JPO 'Examination Guidelines for Trademarks' by comparing real examples from Vietnam. The session will also feature group discussions about distinctiveness and similarity of trademarks.

15:30 - 16:00 Coffee Break

16:00 - 17:00 Session T-2Outline of Japanese Unfair Competition Prevention LawSAITO, JunkoIn this session, Japanese unfair competition prevention law will be briefly explained.Specifically, unfair competition acts relating to use of another person's famous indication of goods will be discussed with several cases.

18:00 - 20:00 Welcome Reception for all participants (Sunset Bar)

Page 5: 2017 JPAA IP Practitioners Seminar · because of the sponsorship by the JPAA. Many Japanese patent attorney tutors attend the group discussions and eager-ly teach about the practice

2017 JPAA IP Practitioners Seminar 2017 JPAA IP Practitioners Seminar

ProgramDuring the two-day seminar, intellectual property practitioners will gain a practical overview of the Japanese intellectual property (IP) system and environment.

Each session will provide applicants and their agents with specific tools and information which they can use to smooth prosecution, increase the value of the IP portfolio, and reduce overall costs.

For all participants, the Monday morning sessions are designed to cover the Japanese IP system and environment in general.

On the other hand, participants may choose one of the three groups, 1) Patent (Electrics and Mechanics Group), 2) Patent (Chemicals Group) or 3) Trademark & Design, starting from Monday afternoon.1) Patent (Electrics and Mechanics Group) and 2) Patent (Chemicals Group) will be held in same room.3) Trademark & Design Group will be simulta-neously held in different room.

Furthermore, a portion of these three group sessions will allow participants to share their real world Experiences in IP practice, and obtain feedback on the same from their fellow attendees.

A welcome reception will be conducted after the conclusion of the last Monday session. This recep-tion will be an excellent opportunity to forge or renew acquaintances and network with each other.

Monday, February 27All Participants(Grand Ballroom)

08:00 - 09:00 Registration

09:00 - 09:15 Welcoming Remarks

09:15 - 09:40 Session M-1International exchange and activity of JPAAITAMI, Masaru President, Japan Patent Attorneys Association (JPAA)We would like to review the international exchange and activity of the JPAA as a patent attorney profession. Especially, we would like to explain it on Asia area.

09:40 - 09:50 Session M-2Welcome message from Vietnam Intellectual Property Associa-tionHA, MaiExecutive Vice President, Vietnam Intellectual Property Association (VIPA)He will give all the attendees his welcome message on behalf of Vietnam Intellectual Property Association, and brief introduc-tion of VIPA.

09:50 - 10:20/10:50 - 11:20 Session M-3Recent Developments and Future Prospects in the IP Fields of AMSTAKADA, MotokiDirector, IP department, JETRO BangkokSAWAI, YokoIP specialist, IP department, JETRO BangkokThis session will overview the recent developments and future prospects in the IP fields of ASEAN member states(AMS) from the perspective of bilateral or multilateral cooperation between Japanese governments and AMS as well as from the perspective of Japanese companies' expectation for AMS

10:20 - 10:50 Coffee Break

11:20 - 12:30 Session M-4①Patent SearchKONISHI, KayPatent search is of great significance for every IP practitioner in every phase of patent prosecution including pre-filing, during prosecution, and enforcement. Vast amount of patent informa-tion at JPO is accessible for foreign IP practitioners through “J-Plat Pat”. These days not only patent publications but also dossier information in connection with patent application family is open to public.This session will address an outline of patent search through the J-Plat Pat”, then some hypothetical scenarios will be discussed so as to facilitate your Japan related daily practice.

②Trademark SearchSAITO, JunkoTrademark search is important to reduce the possibility of rejection of trademark application and avoid the infringement risk of another’s right. In this session, available information in the J-Plat Pat English version is introduced and how to conduct trademark searches will be shown using several examples.

12:30 - 14:00 Lunch (Saigon and Milan Restaurant)

Patent Group(Ballroom 1&2)

14:00 - 14:40 Session P-1How to Draft Claims for a Patent Application and How to Respond to an Official Action (Electrics and Mechanics )KANAMORI,AkihiroIn this session, how to draft claims for a patent application and how to respond to an Official Action (OA) are generally explained. You will experience each step for drafting claims and responding to OA using a practical example.

14:40 - 15:00 Session P-2How to Draft Claims for a Patent Application and How to Respond to an Official Action (Chemistry)SHIBATA, FujikoClaim Drafting & Response to the Office Action for a chemical case are explained, because there are differences from those in the electrical or mechanical cases. In this session, such differences between the chemical cases and other cases belong-ing to other fields are explained, including points to be focused for drafting claims and preparing a response to the OA.

15:00 - 15:30 Session P-3Explanation for Claim Drafting (Electrics and Mechanics) UEDA, ShinichiThis session provides how to find out a feature of an invention, which is not disclosed and suggested by prior art. The client letter and the prior art of the assignment as well as some tips for claim drafting will be explained.

15:30 - 15:50 Coffee Break

15:50 - 16:20 Session P-4Explanation for Claim Drafting (Chemistry)YOKOTA, NobutakaIn this session, the materials and information necessary for the next day’s group discussion (Sessions P-7 & P-8) will be explained. This session will help you in understanding the gist of the invention and the contents of the prior art documents D1 and D2. Claim formats adapted to JPO practice will also be explained.

16:20 - 16:50 Session P-5Explanation for How to Respond to an Office Action (Electrics and Mechanics)IIZUKA, TakeshiIn this session, a mock patent case at an Office Action stage will be explained. Specifically, a summary of an invention, an Office Action and cited references will be explained, which will help participants to prepare a set of an amendment and a summary of an argument on the next day.

16:50 - 17:20 Session P-6Explanation for How to Respond an Office Action (Chemistry) TSUNO, MasayaIn this session, participants will be explained an office action with an application and the cited reference. Each group will be required to prepare a draft claim amendment and the gist of arguments for the next day.

18:00 - 20:00 Welcome Reception for all participants (Sunset Bar)

Trademark & Design Group(Ballroom 3)

14:00 - 15:30 Session T-1Trademark Examination Guidelines in JapanASHIHARA, EmiEmi will provide an outline of the JPO 'Examination Guidelines for Trademarks' by comparing real examples from Vietnam. The session will also feature group discussions about distinctiveness and similarity of trademarks.

15:30 - 16:00 Coffee Break

16:00 - 17:00 Session T-2Outline of Japanese Unfair Competition Prevention LawSAITO, JunkoIn this session, Japanese unfair competition prevention law will be briefly explained.Specifically, unfair competition acts relating to use of another person's famous indication of goods will be discussed with several cases.

18:00 - 20:00 Welcome Reception for all participants (Sunset Bar)

Page 6: 2017 JPAA IP Practitioners Seminar · because of the sponsorship by the JPAA. Many Japanese patent attorney tutors attend the group discussions and eager-ly teach about the practice

As Exective Vice President of the Vietnam Intellectual Property Association (VIPA), I am very pleased to announce that through the valuable cooperation between the Japan Patent Attorneys Association (JPAA) and the Vietnam Intellectu-al Property Association (VIPA), the JPAA 2017 IP Practitioners Seminar will be held in Hanoi, Vietnam on February 27-28, 2017. It is our special honor to coordi-nate with JPAA in organizing such a meaningful Seminar this year. Nowadays, the Vietnam’s Government has been making many efforts in improv-ing the IP system, such as perfecting IP legislation, cooperating with other jurisdic-tions to speed up the examination, and organizing many seminars aimed at over-coming certain existing difficulties in the IP practice. As an IP specialized organiza-tion duly organized under the Vietnam laws, VIPA has been assisting the Govern-ment in reviewing legal documents, connecting with foreign partners, and collabo-rating in the organization of a number of professional conferences and seminars. On behalf of VIPA, I wish to take this opportunity to warmly welcome all partic-ipants attending this JPAA 2017 IP Practitioners Seminar in Hanoi, and to say how

grateful we are to JPAA for choosing our Hanoi for this special event and for the devotion and commitment to the organization of this valuable Seminar. Also, I would like to extend a very warm Vietnamese welcome to Mr. Masaru Itami, President of JPAA, all of our friends and colleagues, and all IP practitioners from Japan who are attending this event for sharing your comprehensive knowledge on intellectual property to the participants. It is an opportune time for us to learn and exchange knowledge and information regarding intellectual property from each other. I do believe that all participants will find this Seminar to be so beneficial and fruitful to your IP practices. Once again, it is with great pleasure that I warmly welcome you all to the JPAA 2017 IP Practitioners Seminar in Hanoi. I sincerely wish you a productive and successful Seminar, and a pleasant stay amongst us. Mr. Mai Ha Executive Vice President Vietnam Intellectual Property Association (VIPA)

Trademark & Design Group(Ballroom 3)

9:00 - 9:45 Session T-3Regional Phase of International Registration of MarksMURAI, KojiThis session reviews the outline of the Madrid System, and present analysis on the various aspects of regional phases of the System from a statistical view point, and introduces actual mark examples in and from Asian countries.

9:45 - 10:30 Session T-4Hague SystemSATO, ShunjiShunji will present a basic of Hague Agreement Concerning the International Registration of Industrial Designs, including protectable subject matter, procedure to obtain design registration. Then he will present the differences between the Hague system and the Madrid system/PCT system and how we should utilize this system.

10:30 - 11:00 Coffee Break

11:00 - 11:45 Session T-5Geographical Indications Protect System in JapanINOUE, hironariIn this session, contents of GI (geographical indication) registration system newly legalized in Japan will be explained. Specifically, the difference between the GI registration system and conventional GI protection methods in trademark law will be studied.

11:45 - 12:30 Session T-6Progress in Non-Traditional trademarks' protection -Registered cases in Japan-TSUTSUI, ShokoNon-Traditional trademarks, such as for motion, hologram, color, position, and sound trademarks are protectable under the Japan Trademark Act since April 1, 2015. This session will summarize related statistical data and report some registered trademarks before the JPO.

12:30 - 14:00 Lunch (Saigon and Milan Restaurant)

14:00 - 15:00 Session T-7Use Requirement of Trademarks in JapanSUZUKI, YasuhitoThis session focus on use requirement of trademark in Japan before registration and after registration from practical point of view. Also, how use requirement is fulfilled in case cancellation action for non-use is demanded by reviewing the recent IP High Court ruling. Necessity of positive intent to use is discussed in reviewing the ruling.

15:00 - 15:20 Coffee Break

15:20 - 17:00 Session T-8Mock Trial (Trademark Infringement Litigation)Moderator: OKUMURA, NaokiIn this session, we will have a mock trial of hypothetical trademark infringement case, together with a presentation and lecture on ordinary trademark infringement proceeding under the Japanese judicial system. We will also discuss the possibility of application of the Unfair Competition Act.

2017 JPAA IP Practitioners Seminar

Tuesday, February 28Patent Group(Ballroom 1&2)

Training of Patent PracticeParticipants of these sessions P-7 to P-10 for patent practice will have group discussions on how to draft claims and how to respond to official actions through two inventions. Finally each group will give a presentation about their discussion for all the participants

9:00 - 10:30 Session P-7Training of Claim Drafting ①INOUE, SeiichiIn this session participants will discuss how to draft claims for an invention in their group. They will prepare draft claims for their group based on the explanation of the gist of the invention and the prior arts.

10:30 - 11:00 Coffee Break

11:00 -12:30 Session P-8Training of Claim Drafting ②INOUE, SeiichiThe leader appointed in each group will present the draft claims in front of all participants. The tutor of the group will comment on the presented draft response and finally a commentator will review the presented draft responses by the groups.

12:30 - 14:00 Lunch(Saigon and Milan Restaurant)

How to Respond to Office Actions 14:00 - 17:00In this session, the participants will discuss how to effectively respond to office actions, especially focusing on the rejections as to novelty, inventive step, and description requirement. Some points for obtaining a strong patent with suitable broadness of invention will be discussed and explained.

14:00 -15:00 Session P-9TSUCHIYA, FumihikoParticipants will review the office action and prepare draft response in a group.

15:00 - 15:30 Coffee Break

15:30 -17:00 Session P-10TSUCHIYA, FumihikoThe leader appointed in each group will present the draft response in front of all participants. The tutor of the group will comment on the presented draft response and finally a commen-tator will review the presented draft responses by the groups.

2017 JPAA IP Practitioners Seminar

photo by Fumihiko Tsuchiya

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As the President of the Japan Patent Attorneys Association, I would like to announce that the JPAA IP Practitioners Seminar will be held in Hanoi, Vietnam, on February 27 and 28, 2017. The main aim of this Seminar is to provide the most up-to-date and accurate IP information to practitioners from across Asia. The Semi-nars have been held once every two years since 2005, and the coming Seminar will be the seventh. We are very proud to have held these Seminars continuously and successfully. Although rules and practices for obtaining and protecting IP rights are slightly different from country to country, the core part of our work is universal. In our teaching in this Seminar, we will focus on the universal part of how to obtain and protect IP rights particularly regarding patents, design and trademarks. We believe that the Seminar will be beneficial for IP practitioners regardless of their level of

Location INTERCONTINENTAL HANOI WESTLAKE 5 Tu Hoa street, Tay Ho district, Hanoi, Vietnam Phone : +84 4 6270 8888  Fax : + 84 4 6270 7120 URL: http://www.hanoi.intercontinental.com/

Dates February 27 and 28, 2017

Language English only

Registration and Seminar FeesApplications and payment of the registration fee of USD 200/person will be accepted online only on a first-come-first-served basis and will be open on January 4, 2017 and closed on February 10, 2017. Links to the online registra-tion form and additional information can be found on the JPAA website:

www.jpaa.or.jp/english/index.html

The registration fee includes all seminar materials, coffee breaks, lunches, and the Welcoming Reception. All other expenses, such as accommodation fees, are the responsibility of the attendees.

AccommodationsAttendees are responsible for their own accommodations. The attendees can book their own accommodations at INTERCONTINENTAL HANOI WESTLAKE with following URL.

https://www.ihg.com/intercontinental/hotels/gb/en/reservation/findandbook

IATA #:99801505、Group Code: W3A

Organizing Committee

President ITAMI, Masaru, Kisaragi Associates

Vice President AOYAMA, Hitoshi, TSUTSUI & ASSOCIATES

Director General, JPAA International Activities Center OHNISHI, Shogo, S.OHNISHI & ASSOCIATES

Chair, Organizing Committee KUROKAWA, Tomoya, SOEI Patent & Law Firm

Vice-Chair, Organizing Committee INOUE, Seiichi, Urban International Patent Firm

Speakers ASHIHARA, Emi, YKI Patent Attorneys IIZUKA, Takeshi, Iizuka International Patent Office INOUE, Hironari, AIWIL PATENT LAW FIRM KANAMORI, Akihiro, ONDA TECHNO Intl. Patent Attys. KONISHI, Kay, KONISHI & NAGAOKA IP Firm MURAI, Koji, Shinjyu GLOBAL IP OKUMURA, Naoki, Nakamura & Partners SAITO, Junko, ISHIDA & ASSOCIATES SATO, Shunji, TMI Associates SHIBATA, Fujiko, Ayafune International Patents & Trademarks, PPC SUZUKI, Yasuhito, ABE, IKUBO & KATAYAMA

Cancellation and LiabilityAttendees are encouraged to purchase travel insurance as the organizers willassume no liability and the registration fee is not refundable.

Immigration and Visa InformationImmigration and Visa InformationAttendees who wish to enter Vietnam should confirm visa information, such as visa exemption to Vietnam. Please check with the Vietnam embassy HP in your countries to get more information. For your convenience, please visit the following URL.http://lanhsuvietnam.gov.vn/Lists/BaiViet/B%C3%A0i%20vi%E1%BA%BFt/DispForm.aspx?List=dc7c7d75-6a32-4215-afeb-47d4bee70eee&ID=306

Smoking Policy Smoking is only permitted in designated smoking areas.

experience. Beginners as well as professionals in IP practices in Asian countries are welcome to attend. The Seminar is sponsored and organized by the JPAA. The fee for attending the Seminar is fairly inexpensive because of the sponsorship by the JPAA. Many Japanese patent attorney tutors attend the group discussions and eager-ly teach about the practice of patents and trademarks. In each of the last six Seminars, we accepted 100 or more partic-ipants. We are looking forward to accepting a similar number for the next Seminar in 2017. We are quite sure that the next Seminar will also provide practical information and knowledge to all the participants. I look forward to seeing you in Hanoi.

Mr. Masaru Itami President Japan Patent Attorneys Association (JPAA)

We are pleased to make the announcement of the opening of the JPAA IP Practi-tioners Seminar again. As mentioned in this brochure we are holding this seminar continuously or every 2 years. This seminar is the 7th seminar since we held it in Singapore in 2005 for the first time. As done in the past, we do our best to give the students useful information as well as skills to be IP professionals. Many Japanese patent attorney tutors will take care of the proceedings of the seminar, which includes several plenary sessions and workshops for the patent group and trademark/design group. All the tutors have matured skills in IP fields, and accordingly they will surely give good lectures and discussions. Many sessions, particularly workshops are planned to be done in an interactive way. Therefore all students are required to express their own thoughts to the tutors, since the tutors will give a lot of questions for the discussions. Please enjoy the interactive lectures.

As the students learned in the past seminars, we tutors learned a lot through the 6 seminars that we had in the past. The experiences and knowledges that we got through past seminars will help our lectures in the 7th seminar, and accordingly we are sure that we can have a useful, pleasant and enjoyable seminar this time, too. We look forward to seeing you in Hanoi.

Mr. Shogo Ohnishi Director General International Activities Center, JPAA

2017 JPAA IP Practitioners Seminar

General Information

2017 JPAA IP Practitioners Seminar

 TSUCHIYA, Fumihiko, Tsuchiya Patent Office TSUTSUI, Shoko, TSUTSUI & ASSOCIATES TSUNO, Masaya, TMI Associates UEDA, Shinichi, GOTOH & PARTNERS YOKOTA, Nobutaka, FIELDS IP Attorneys

Tutors ENDOH, Shusa, AKIT patent and trademark attorneys IWAKIRI, Atsushi, Panasonic Corporation KAIGUCHI, Muneaki, KAIGUCHI & ASSOCIATES KATAYAMA, Ken-ichi, OHNO & PARTNERS KAWASAKI, Shinji, Honda Motor Corporation KOSHIKAWA, Takao, KOSHIKAWA &Co. ONUKI, Toshifumi, TMI Associates SAKASHITA, Noriko, KONISHI&NAKAMURA SUZUKI, Yasuhiro, MORI & WARD, LLP YAMASHITA, Yuji, WILLFORT INTERNATIONAL PATENT FIRM

Welcome Message

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2017 JPAA IP Practitioners Seminar2017 JPAA IP Practitioners Seminar

February 27 – 28, 2017Hanoi, Vietnam

Organized by The Japan Patent Attorneys Association (JPAA)

In cooperation with The Japan Patent Office(JPO) The Vietnam Intellectual Property Association (VIPA)

Japan Patent Attorneys Association3-4-2 Kasumigaseki, Chiyoda-ku,Tokyo, 100-0013 Japan

TEL:+81-3-3581-1211 / FAX:+81-3-3581-9188E-mail: [email protected]

http://www.jpaa.or.jp/Himeji Castle, JAPANPhoto Provided by Himeji City©

photo by Junko Saito