Shinji KATO / Patent attorney

  • PRACTICE AREAS
  • Intellectual property prosecution, expert opinions, appeals, litigation, support for oversea disputes with regard to intellectual property
  • TECHNICAL FIELDS
  • Information processing, telecommunications, machine learning, automated driving, robotics, imaging (optical, image processing), plants, manufacturing equipment, articles of daily use, business models, consumer electronics, etc.
  • LANGUAGES
  • Japanese, Chinese, English

EDUCATION & CAREER SUMMARY

  • 1998 Graduated from Department of Applied Physics, School of Engineering, Nagoya University
  • 1998 Minolta Co., Ltd.
  • 2000 Patent Attorney Registration
  • 2001 Ohno & Partners
  • 2004 Trained at Peking University Law School
  • 2004 Intern at Zhongzi Law Office
  • 2005 Assigned to King & Wood Mallesons
  • 2009 Returned to Ohno & Partners
  • 2016 KSI Partners Law & Patent Firm

PUBLICATIONS

  • "Understanding Chinese Patents" (series), (Chizai prism Nos. 37 to 50)
  • "Interpretation of Doctrine of Equivalents and Prosecution History Estoppel in Japan, the U.S. and China", (Intellectual Property Management Vol.57 No.7), (Coauthor)
  • "Introducing Chinese Patent Trial Decision Rescission Litigation Precedents" (series), (Chizai prism Nos. 55 to 93)
  • "Key Points of Third Revision of Chinese Patent Law", (The Lawyers, June 2009)
  • "How to Fight an Intellectual Property Lawsuit in China", (The Lawyers, November 2010) (Coauthor)
  • "Introducing Chinese Intellectual Property Rights Litigation Precedents" (series), (Chizai prism Nos. 100 to 113)
  • "Technology Licensing to Chinese Companies and Technology Modification - Measures Licensor Can Take Concerning Modification of Technology by Licensee", (The Lawyers, September 2011)
  • "Points to Consider Concerning Technical Service Contracts with Chinese Companies", (M&A Review, Vol. 25, No.6) (Coauthor)
  • "Risk of Being Involved in IP Lawsuits in China: The Risk Has Now Become Reality", (M&A Review, Vol.26, No.2) (Coauthor)
  • "Prior User's Right in China", (Patent, September 2012) (Coauthor)

LECTURES

  • AOTS Chinese Patent Attorney Training and Development Course, "Introduction to Precedents of Patent Right Infringement Cases in Japan" (March 2008)
  • Kansai Patent Attorneys Study Group, Software Subgroup, "Examination of Business Method Invention Patent Applications in China" (October 2008)
  • JETRO Beijing IPG Seminar, "Points for Japanese-owned Companies to Consider in View of Utility Model Dispute Between Schneider and Chint" (November 2008)
  • Semiconductor Equipment Association of Japan, Intellectual Property Ad Hoc Committee, "Points to Consider Regarding Chinese Patent Filing" (January 2009)
  • Japan Office Institutional Furniture Association, "Practical Points to Consider that Take into Account Revised Chinese Patent Law" (June 2009)
  • Kogakuin University/Asahi College "Points to be Noted Regarding Intellectual Property Contracts in China" (December 2009)
  • Licensing Executives Society Japan, Monthly Seminar, "How Will Chinese Patent Trials Change? - Commentary on New Judicial Interpretation" (December 2009)
  • Shanghai Pentagon Managers Club Seminar, "Chinese Intellectual Property Risk - Being Sued by a Chinese Company" (June 2010)
  • IIPPF Third Project Meeting, "Method for Dealing with Design Right Infringement in China" (February 2011)
  • Beijing Management Club Seminar, "Technology Licensing and Technology Modification - Relation Between Base Technology and Modified Technology" (August 2011)
  • Japan Patent Attorneys Association Regional Training (Kyushu), "Intellectual Property Situation in East Asian Region (Centering on Intellectual Property Situation in China in Particular)" (December 2011)
  • Japan Machinery Center for Trade and Investment, Chinese Patent Infringement Litigation Countermeasures Seminar, "Chinese Invalidation Appeal - Practice and Strategy" (February 2012)
  • Standard Essential Patent (SEP) Study Group, "Handling of SEP in China, and Future Prospects" (October 2013)

ACTIVITIES

  • FY 2002 Japan Patent Attorneys Association, Member of Committee of International Activities
  • FY 2003 Japan Patent Attorneys Association, Member of Committee of International Activity Center
  • FY 2009 Japan Patent Attorneys Association, Vice Chair of Committee for Industrial Competitiveness Promotion
  • FY 2010 Japan Patent Attorneys Association, Vice Chair of Committee for Industrial Competitiveness Promotion
  • FY 2012 Patent Attorney Examination Committee Member (Patents)
  • FY 2013 Patent Attorney Examination Committee Member (Patents)
  • FY 2013 to 2015 Standard Essential Patent (SEP) Study Group Member
  • FY 2014 Japan Patent Attorneys Association, Patents Committee Member
  • FY 2015 Japan Patent Attorneys Association, Patents Committee Member
  • FY 2015 24th Japan-China Patent Attorneys Exchange Meeting Project Group Member
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