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

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

Publication

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

Lectures

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

Activity

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