Yasunobu Okada
- Gifu
- Senior Executive Vice President Partner JP Patent Attorney
PROFESSIONAL SUMMARY
Mr. Okada has represented mainly domestic clients in patent applications, oppositions, invalidation procedures, appeal proceedings to reverse a final JPO decision, invalidation opinions, and infringement opinions. He is well-versed in the fields of software, electrical, and mechanical technologies, and has specialized knowledge and experience in cases related to IoT technologies. As a patent attorney belonging to the Japan Patent Attorneys Association, he has lectured on legal amendments for patent attorneys and served as a manager of a team for law case studies. He also has participated in the Trial and Appeal Practitioner Study Group organized by the JPO, which conducts research on appeal decisions and judgments. Currently, he is also an adjunct professor at a Japanese national university.
REPRESENTATIVE LEGAL SKILLS
PROJECT/PROCESS MANAGEMENT SKILLS
SEMINARS
- Japan Patent Attorneys Association Member Training Course "Briefing Session on Patent Law Amendments in 2008 (Nagoya)" (2019)
- FY2017 Japan Patent Committee Open Forum: "Tips for Specifications in Light of Recent Court Decisions; In Terms of Patent Requirements and Sufficiency Theory" (2018)
- Patent Committee Outcome Report Seminar (Hokkaido Branch) "Trends in court decisions and comparison with JPO examination standards, etc. (2017)
- FY2016 Japan Patent Committee Open Forum "Trends in Judgments and Comparison with JPO Examination Standards, etc." (in charge of new matters) (2017)
- The 4th Training Festival in Nagoya "Overview of Remedies under the 2014 Amendment Act and Practical Considerations in Patent Opposition". (2015)
- Japan Patent Attorneys Association Member Training Course "Briefing Session on 2015 Patent Law Amendments" in Nagoya (2015)
- Japan Patent Attorneys Association Member Training Course "Briefing Session on 2014 Patent Law Amendments" in Nagoya (2014)
PUBLICATIONS
- Trends and Considerations in Sufficiency Theory Learned from Reversed Judgements (JPAA Monthly Magazine “Patent (2020)" Vol.73, No. 5)
- Tips for Specifications in Light of Recent Court Decisions; In Terms of Patent Requirements and Sufficiency Theory (JPAA Monthly Magazine "Patent (2019)" Vol.72, No. 2)
- Comparative Study Between Trends in Inventive Step and Description Requirements from the Ruling on Appeal Proceedings to Reverse a Final JPO Decision, and Trends and Revised Examination Guidelines -Inventive Step 1 and 2 Categories (JPAA Monthly Magazine "Patent (2017)" Vol. 70, No. 1)
- Legal Amendments to the Employee Invention System that Patent Attorneys Should Understand (JPAA Monthly Magazine "Patent (2016)" Vol. 69, No. 6)
- Outline of Remedies under the 2014 Amendment Act and Practical Considerations for Patent Opposition (JPAA Monthly Magazine "Patent (2015)" Vol. 68, No. 7)
Case Study:
- Intellectual Property High Court, Second Division, Judgment handed down on September 10, 2012
Case No. 10315 (Gyo-Ke) 2011, Request for Revocation of JPO Decision (Jan. 28, 2013)
Essay:
- "Possibility of Sub-combination Inventions" – ONDA TECHNO "Patent Media" (September 1, 2019)
- "Easy + Easy = Non-easy? " – ONDA TECHNO "Patent Media" (May 1, 2018)
- "Seeking for Ways to Use Patent Applications by Insisting Referring to An Earlier Patent Application" – ONDA TECHNO "Patent Media" (Jan. 1, 2016)
EMPLOYMENT HISTORY
ONDA TECHNO Intl. Patent Attys. Gifu City, Japan
Partner 2021-Present
Japanese patent attorney 2011-Present
Gifu University Gifu City, Japan
Adjunct professor 2017-Present
AIGI Intellectual Property Law Firm Nagoya, Japan
Japanese patent attorney 2009-2011
Patent engineer 2008-2009
SHARP CORPORATION Nara, Japan
Basic research 2006-2007
EDUCATION
Nagoya University (M.S./B.S. Department of Crystalline Materials Science) Nagoya, Japan
Research on crystal growth of semiconductors 2000-2006
ADMISSIONS & MEMBERSHIPS
- Admitted to the Japan Patent Attorneys Association in 2009.
- Member of UR-10 Committee of the Japan Patent Attorneys Association in 2011.
- Member of Patent Committee of the Japan Patent Attorneys Association (2014-2018).
- Vice Chairman of Patent Committee of the Japan Patent Attorneys Association (2017-2018).
- Review member of the JPO’s Study Group for Appeal Practitioners (2017-2018).
INTERESTS
Aikido, Walking
Mr. Okada has represented mainly domestic clients in patent applications, oppositions, invalidation procedures, appeal proceedings to reverse a final JPO decision, invalidation opinions, and infringement opinions. He is well-versed in the fields of software, electrical, and mechanical technologies, and has specialized knowledge and experience in cases related to IoT technologies. As a patent attorney belonging to the Japan Patent Attorneys Association, he has lectured on legal amendments for patent attorneys and served as a manager of a team for law case studies. He also has participated in the Trial and Appeal Practitioner Study Group organized by the JPO, which conducts research on appeal decisions and judgments. Currently, he is also an adjunct professor at a Japanese national university.
REPRESENTATIVE LEGAL SKILLS
- Technology Areas
Mechanical
Nano technology
Electric (circuits, semiconductors, communication, power transmission)
Software (IoT, control)
Control
Consumer electronics
Computers (hardware) - Typical legal skills
・TInvolvement in examination and litigation at all stages of Japanese patent applications, including post-grant prosecution, interview, appeal against decision of rejection, opposition, invalidation trial, and appeal proceedings to reverse a final JPO decision.
・Preparation of opinions on patentability and non-infringement.
・Lecturing at seminars on Japanese patent laws and examination standards
PROJECT/PROCESS MANAGEMENT SKILLS
- Developed and implemented an internal system to streamline the workflow of the firm, including a software solution for practitioners to go paperless.
- As a team leader consisting of attorneys and patent attorneys outside the firm, compiled infringement arguments and tips for specifications based on court decisions.
SEMINARS
- Japan Patent Attorneys Association Member Training Course "Briefing Session on Patent Law Amendments in 2008 (Nagoya)" (2019)
- FY2017 Japan Patent Committee Open Forum: "Tips for Specifications in Light of Recent Court Decisions; In Terms of Patent Requirements and Sufficiency Theory" (2018)
- Patent Committee Outcome Report Seminar (Hokkaido Branch) "Trends in court decisions and comparison with JPO examination standards, etc. (2017)
- FY2016 Japan Patent Committee Open Forum "Trends in Judgments and Comparison with JPO Examination Standards, etc." (in charge of new matters) (2017)
- The 4th Training Festival in Nagoya "Overview of Remedies under the 2014 Amendment Act and Practical Considerations in Patent Opposition". (2015)
- Japan Patent Attorneys Association Member Training Course "Briefing Session on 2015 Patent Law Amendments" in Nagoya (2015)
- Japan Patent Attorneys Association Member Training Course "Briefing Session on 2014 Patent Law Amendments" in Nagoya (2014)
PUBLICATIONS
- Trends and Considerations in Sufficiency Theory Learned from Reversed Judgements (JPAA Monthly Magazine “Patent (2020)" Vol.73, No. 5)
- Tips for Specifications in Light of Recent Court Decisions; In Terms of Patent Requirements and Sufficiency Theory (JPAA Monthly Magazine "Patent (2019)" Vol.72, No. 2)
- Comparative Study Between Trends in Inventive Step and Description Requirements from the Ruling on Appeal Proceedings to Reverse a Final JPO Decision, and Trends and Revised Examination Guidelines -Inventive Step 1 and 2 Categories (JPAA Monthly Magazine "Patent (2017)" Vol. 70, No. 1)
- Legal Amendments to the Employee Invention System that Patent Attorneys Should Understand (JPAA Monthly Magazine "Patent (2016)" Vol. 69, No. 6)
- Outline of Remedies under the 2014 Amendment Act and Practical Considerations for Patent Opposition (JPAA Monthly Magazine "Patent (2015)" Vol. 68, No. 7)
Case Study:
- Intellectual Property High Court, Second Division, Judgment handed down on September 10, 2012
Case No. 10315 (Gyo-Ke) 2011, Request for Revocation of JPO Decision (Jan. 28, 2013)
Essay:
- "Possibility of Sub-combination Inventions" – ONDA TECHNO "Patent Media" (September 1, 2019)
- "Easy + Easy = Non-easy? " – ONDA TECHNO "Patent Media" (May 1, 2018)
- "Seeking for Ways to Use Patent Applications by Insisting Referring to An Earlier Patent Application" – ONDA TECHNO "Patent Media" (Jan. 1, 2016)
EMPLOYMENT HISTORY
ONDA TECHNO Intl. Patent Attys. Gifu City, Japan
Partner 2021-Present
Japanese patent attorney 2011-Present
Gifu University Gifu City, Japan
Adjunct professor 2017-Present
AIGI Intellectual Property Law Firm Nagoya, Japan
Japanese patent attorney 2009-2011
Patent engineer 2008-2009
SHARP CORPORATION Nara, Japan
Basic research 2006-2007
EDUCATION
Nagoya University (M.S./B.S. Department of Crystalline Materials Science) Nagoya, Japan
Research on crystal growth of semiconductors 2000-2006
ADMISSIONS & MEMBERSHIPS
- Admitted to the Japan Patent Attorneys Association in 2009.
- Member of UR-10 Committee of the Japan Patent Attorneys Association in 2011.
- Member of Patent Committee of the Japan Patent Attorneys Association (2014-2018).
- Vice Chairman of Patent Committee of the Japan Patent Attorneys Association (2017-2018).
- Review member of the JPO’s Study Group for Appeal Practitioners (2017-2018).
INTERESTS
Aikido, Walking