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2015 JPAA IP Practitioners Seminar 2015 JPAA IP Practitioners Seminar March 2 – 3, 2015 Jakarta, Indonesia Organized by The Japan Patent Attorneys Association (JPAA) In cooperation with The Japan Patent Office(JPO) The Intellectual Property Consultants Association of Indonesia(AKHKI) Miyajima, Hiroshima, JAPAN

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Page 1: 2015 JPAA IP Practitioners Seminar · Experienced members from the JPAA will lead interactive group discussions. I believe that this seminar will be of particular benefit to those

2015 JPAA IP Practitioners Seminar2015 JPAA IP Practitioners Seminar

March 2 – 3, 2015Jakarta, Indonesia

Organized by The Japan Patent Attorneys Association (JPAA)

In cooperation with The Japan Patent Office(JPO) The Intellectual Property Consultants Association of Indonesia(AKHKI)

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/Miyajima, Hiroshima, JAPAN

Page 2: 2015 JPAA IP Practitioners Seminar · Experienced members from the JPAA will lead interactive group discussions. I believe that this seminar will be of particular benefit to those

As President of the Japan Patent Attorneys Association, I would like to express our great pleasure to be holding the JPAA IP Practitioners Seminar in Jakarta, Indo-nesia, on March 2 and 3, 2015. This Seminar is the so-called “Asian Seminar,” aimed at providing IP information to Asian practitioners. The Seminars have been held once every two years since 2005, and the next coming Seminar will be the sixth. We are very proud to have been holding the Seminars continuously and successfully. Although the particular methods for and rules on obtaining and protecting IP rights are slightly different in each country, the major parts are universal. In the Seminar, we put particular focus on teaching universal ways to obtain and protect IP rights particularly regarding patents and trademarks. We believe that the Seminar is beneficial for IP practitioners regardless of their level of experience. Beginners as well as professionals in IP practices in Asian countries are welcome to attend. As

Location Le Méridien Jakarta Hotel Jalan Jenderal Sudirman, Kav 18 – 20, Jakarta 10220, Indonesia Phone : +62 21 251 3131  Fax : ++62 21 571 1633 URL: http://www.lemeridienjakarta.com/

Dates March 2 and 3, 2015

Language English only

Registration and Seminar FeesApplications and payment of the registration fee of USD170 - per person will be accepted online only, on a first come, first served basis and will be closed on February 13, 2015. Applications after the deadline can be made on the availabil-ity basis. However, any attendee information received after the deadline might not be included on the List of Attendees. Links to the online registration form and additional information can be found on the JPAA website:

http://www.jpaa.or.jp/?cat=546

The registration fee includes all seminar materials, coffee breaks, lunches, andthe 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 in Le Méridien Jakarta Hotel with following URL.(FYI: As an example, a superior room is available at 124US$++ per night with URL as of November 19th, 2014. This fare requires a 14-day advance purchase. Please note that the fare could be changed, room fare and reserva-tion request will depend on the hotel availability.

Organizing Committee

Director General, JPAA International Activities Center NAGAOKA, Shigeyuki, KONISHI & NAGAOKA IP FIRM

Chair, Organizing Committee TANAKA, Hideki, IBUKI IP-Law Partners

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

Advisory Members FUJITA, Masahiko, KOHHARA & FUJITA HIROSE, Fumihiko, HIROSE Int'l Patent & Trademark KOSHIKAWA, Takao, KOSHIKAWA &Co. MATSUI, Takao, Okabe International Patent Office OHNISHI, Shogo, S.OHNISHI & ASSOCIATES TANI, Yoshikazu, TANI & ABE, p.c. USHIKI, Mamoru, Ushiki & Associates

Moderator OHNISHI, Shogo, S.OHNISHI & ASSOCIATES

 Le Méridien Jakarta Hotel Jalan Jenderal Sudirman, Kav 18 – 20, Jakarta 10220, Indonesia Phone: +62 21 2513131 http://www.starwoodhotels.com/lemeridien/property/overview/index.html ?propertyID=1837&language=en_US&localeCode=en_US

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

Immigration and Visa InformationA foreign visitor who wishes to enter the Indonesia is required to hold a passport with at least 6 month validity from the arrival date. Certain countries’ nationals are required to obtain a visa when entering the Indonesia, and some countries’ nationals can get visa at certain airports in Indonesia. Please check the Indonesian embassy HP in your countries to get more information. For your convenience, please visit the following URL.http://www.imigrasi.go.id/index.php/en/public-services/visa-for-visitorhttp://www.learn4good.com/travel/indonesia_visa.htmhttp://en.wikipedia.org/wiki/Visa_policy_of_Indonesia

Smoking Policy Smoking is only permitted in designated smoking areas.

shown in the brochure, the Seminar is held for two days. On the first day, lectures and discussions on general intellec-tual property are given to all participants. Then, the room is divided into two group rooms, a patent room and a trade-mark room, to hold group discussions. Tutors attend each group and help the discussions. 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 eagerly teach about the prosecution system for patents and trademarks. In each of the last five Seminars, we accepted about 150 participants. We are looking forward to accepting a similar number for the next Seminar in 2015. 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 Jakarta. Mr. Fumio Furuya President Japan Patent Attorneys Association (JPAA)

It is our pleasure to invite you to join us at the JPAA IP Practitioners Seminar in Jakarta, Indonesia to be held on March 2 and 3, 2015. This seminar is the sixth in a series of IP Practitioners Seminars that the JPAA started in 2005. The program includes sessions for all participants, as well as paral-lel workshops on patent law and trademark law. The two-day seminar will offer an update on legal developments in the IP systems in Japan, Indonesia and other coun-tries. The workshops will include small group sessions, which will provide you with unique opportunities on drafting patent claims and preparing amendments in response to office actions, and also on learning important issues relating to trade-mark protection. Experienced members from the JPAA will lead interactive group discussions. I believe that this seminar will be of particular benefit to those who have recently entered the profession and also to those who wish to improve their claim drafting skills through discussions with tutors and other participants.

The Japan Patent Attorneys Association has been offering this IP Practitioners Seminar every other year since 2005, with the International Activities Center being the responsible body for this seminar. The International Activities Center is an affiliated organization of the JPAA, and about 40 patent attorneys are involved in the preparation of this Jakarta seminar. I hope you will find the JPAA IP Practitioners Seminar rewarding in terms of education, networking, and the foster-ing and enjoyment of mutual friendships. I look forward to seeing you in Jakarta in March 2015.

Mr. Shigeyuki Nagaoka Director General International Activities Center, JPAA

2015 JPAA IP Practitioners Seminar

General Information

2015 JPAA IP Practitioners Seminar

Speakers ARAI, Tamotsu, Fuji Patent Law Firm ASHIHARA, Emi, YKI Patent Attorneys FUJITA, Masahiko, KOHHARA & FUJITA HIROSE, Fumihiko, HIROSE Int'l Patent & Trademark INOUE, Seiichi, Urban International Patent Firm INOUE, Tomoya, Haruka Patent & Tradamark Attorneys and Hubbs, Enatsky, Inoue PLLC KATAYAMA Ken-ichi, OHNO & PARTNERS KAWASAKI, Shinji KOSHIKAWA, Takao, KOSHIKAWA &Co. KUROKAWA, Tomoya, SOEI Patent & Law Firm MURAI, Koji, Shinjyu GLOBAL IP NISHIMOTO, Taizo, Nishimoto IP Firm NOMURA, Akiyo, EGRET IP FIRM OGURA, Keishichi, Patent corporate body Global Intellectual Property ONUKI, Toshifumi, TMI Associates SUZUKI, Yasuhito, ABE, IKUBO & KATAYAMA TASAKA, Kazuaki, Nagasawa Patent Firm/The Tokyo-Marunouchi Law Offices TSURU, Kurumi, KT IP TSUTSUI, Shoko, TSUTSUI & ASSOCIATES YOKOTA, Nobutaka, FIELDS IP Attorneys

Tutors HIROKAWA, Koji, SOYO International IP Attorneys IWAKIRI, Atsushi, Corporate IP Professional SUZUKI, Yasuhiro

Welcome Message

Page 3: 2015 JPAA IP Practitioners Seminar · Experienced members from the JPAA will lead interactive group discussions. I believe that this seminar will be of particular benefit to those

It is a great pleasure to announce that the 2015 Japan Patent Attorneys Asso-ciation (JPAA) IP Practitioners Seminar will be held in cooperation with the Intel-lectual Property Consultants Association of Indonesia (AKHKI) in arranging the 2015 JPAA IP Practitioners in Jakarta, Indonesia on March 2 and 3, 2015. As President of Intellectual Property Consultants Association of Indonesia (AKHKI), on behalf of AKHKI, it is with great pleasure to extend a warm Indone-sian welcome to all participants attending the 2015 Japan Patent Attorneys Associa-tion IP Practitioners Seminar in Jakarta. We are most honored that Jakarta was chosen for this event and are grateful to Mr. Hideki Tanaka, Chairman of the JPAA Committee for his interest and dedication to the organization of this most worth-while seminar. I would like to extend a particular welcome to Mr. Hideki Tanaka,

his Committee, JPAA and all of our friends and learned colleagues from Japan. I am certain that all participants will benefit from their in-depth knowledge of intellectual property-which they so generously impart to us. On behalf of the Intellectual Property Consultants Association of Indonesia, it is with great pleasure that I welcome you to the 2015 JPAA IP Practitioners Seminar in Jakarta. I sincerely hope that you find this event to be beneficial to your practice. Dr. Cita Citrawinda Noerhadi President Indonesian Intellectual Property Consultants Association (AKHKI)

Trademark Track(Sasono Mulyo 1)

9:00 - 9:45 Session T-3New Types of Trademarks in JapanSUZUKI,YasuhitoSUZUKI Yasuhito introduces new types of trademarks (sound, motion, color itself, position and hologram) which will become protectable in Japan on or before May 14, 2015. Mr. Suzuki will introduce how the new types of trademarks should be identified and how distinctiveness and similarity of the marks is determined, concluding with guided discussion using questions to the attendees.

9:45 - 10:30 Session T-4Multiple Protection Approach Using Trademark, Copyright, Design, and Unfair Competition Prevention LawsTSUTSUI,ShokoThis session focuses on what types of protection could be considered for protecting a creative work using multiple Japanese IP laws. We will study conditions for protection, limitations of plural rights protec-tions, and illustrative Japanese court decisions.

10:30 - 11:00 Coffee Break

11:00 - 11:45 Session T-5Parallel Import of Genuine GoodsOGURA,KeishichiOGURA Keishichi introduces the parallel import of genuine goods into Japan. In particular, Mr. Ogura will introduce requirements for legal parallel importation of genuine goods as defined in Japanese Supreme Court precedents.

11:45 - 12:30 Session T-6Non-use Cancellation System for Registered TrademarksNISHIMOTO,TaizoMr. NISHIMOTO explains the system for cancelling a Japanese registered trademark based on non-use. Mr. Nishimoto will focus on differences between the Japanese and Indonesian systems from both legal and practical points of view, and provide attendees with tips for using the Non-use Cancellation System in Japan.

12:30 - 14:00 Lunch

14:00 - 15:00 Session T-7Regional Phase of International Registration of MarksMURAI, Koji; NOMURA, AkiyoThis session will focus on the territorial procedures and examination for international registration of marks. MURAI Koji will present an analysis of the various aspects of regional phases of the Madrid System from a statistical viewpoint, while NOMURA Akiyo will present practical tips for successful registration in Japan through Madrid System.

15:00 - 15:30 Coffee Break

15:30 - 16:15 Session T-8Recent Judgments in JapanFUJITA, MasahikoFUJITA Masahiko will introduce recent and notable Japanese court decisions concerning trademarks, including decisions concerning distinctiveness of the name of musician as a trademark for musical goods and services and concerning liability for trademark infringe-ment of goods sold through an online shopping mall.

16:15 - 17:00 Session T-9Bad FaithHIROSE,FumihikoHow to attack a registration or application filed under bad will and recover a stolen trademark; invalidation and opposition systems, and what evidence is effective for establishing intent introduced through example cases.

2015 JPAA IP Practitioners Seminar

Tuesday, March 3Patent Track(Sasono Mulyo 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-7

Training of Claim Drafting ①KOSHIKAWA TakaoIn 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-8

Training of Claim Drafting ②KOSHIKAWA TakaoThe 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(La Brasserie)

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-9

INOUE,SeiichiParticipants will review the office action and prepare draft response in a group.

15:00 - 15:30 Coffee Break

15:30 - 17:00 Session P-10

INOUE,SeiichiThe 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.

2015 JPAA IP Practitioners Seminar

photo by Kenichi Morita

Page 4: 2015 JPAA IP Practitioners Seminar · Experienced members from the JPAA will lead interactive group discussions. I believe that this seminar will be of particular benefit to those

2015 JPAA IP Practitioners Seminar 2015 JPAA IP Practitioners Seminar

ProgramDuring the two-day seminar, intellectual property practitioners and creators 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 tracks, 1) Patent (Electrics and Mechanics Group), 2) Patent (Chemistry Group) or 3) Trademark Group, starting from Monday afternoon.1) Patent (Electrics and Mechanics Group) and 2) Patent (Chemistry Group) will be held in same room.3) Trademark Group will be simultaneously held in different room.

Furthermore, a portion of these three track 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 while enjoying performances, entertainment, and an abundant supply of food and drinks.

Monday, March 2All Participants(Sasono Mulyo 1&2)

08:00 - 09:00 Registration

09:00 - 09:20 Welcoming Remarks

09:20 - 09:40 Session M-1

Role and Activities of JPAAFURUYA, Fumio President, Japan Patent Attorneys Association (JPAA)We would like to review the role and activities of the JPAA as a patent attorney profession, focusing on the amended Patent Attorney Act in 2014.

09:40 - 10:30 Session M-2

Recent Developments of Intellectual Property Matters in IndonesiaNAGAHASHI,YoshihiroChief Advisor, Project for Strengthening IPR ProtectionJapan International Cooperation Agency (JICA)This session will overview the recent developments and future prospects in the IP fields of Indonesia, especially based on the JICA Project for IPR Protection in Indonesia.

10:30 - 11:00 Coffee Break

11:00 - 12:30 Session M-3

Measures Against Counterfeit Products in Asian CountriesSpeaker : KAWASAKI, ShinjiModerator : OHNISHI,ShogoPanelists : TBA ,Indonesia TBA, Thailand TBA, VietnamAt first, a Patent Attorney of a Japanese company introduces themeasures taken by the Japanese company. Then the ways as wellas the laws and rules against counterfeit products in Indonesia,Thailand, Vietnam and Japan are explained and discussed by thepanelists.

12:30-14:00 Lunch (La Brasserie)

Patent Track(Sasono Mulyo 2)

14:00 - 14:30 Session P-1How to Draft Claims for a Patent Application ?ARAI,TamotsuIn this session, the main regulations in Japan and some tips for drafting claims will be explained, and you will experience each step for drafting claims using an example, further you will obtain some information about Japanese unique claims.

14:30 - 15:00 Session P-2How to Respond to an Official Action?TASAKA, KazuakiHow to respond to an Official Action (OA) is generally discussed. Namely, how to overcome a reason for rejection in an OA to obtain a patent right is discussed based on the procedures of OA, JPO Examination Guidelines, typical reasons for rejection, etc.

15:00 - 15:30 Session P-3Explanation for Claim Drafting Practice:(Electrics and Mechanics)INOUE,TomoyaThe object of this session is to provide how to find out a feature of an invention, which is not disclosed and suggested by prior art. Explanation of the subject invention and the prior art of the assignment is included. Some tips for claim drafting are also included.

15:30 - 15:50 Coffee Break

15:50 - 16:20 Session P-4Explanation for Claim Drafting Practice: (Chemistry)KATAYAMA,Ken-ichiThis session will address how to draft claims for a patent application to be filed before the Japan Patent Office. Before claim drafting, an order letter from your client will be explained. In this letter, your client described bioactive glasses suitable for uses as bioactive materials. Basic approaches to drafting claims for the bioactive glasses are briefly introduced in this session.

16:20 - 16:50 Session P-5Explanation for Practice of Responding to an Office Action:(Electrics and Mechanics)ONUKI, ToshifumiIn this session, the textbook and related information necessary for the next day’s group discussion (Sessions P-9 & P-10) will be explained, the textbook including a mock office action, an application, and the cited references). This session will provide you with a quick review of the application and cited references and assist you to better understand how to respond to the office action, so that the next day’s discussion can become fruitful.

16:50 - 17:20 Session P-6Explanation for Practice of Responding to an Office Action:(Chemistry)YOKOTA,NobutakaIn this session, the materials and information necessary for the next day’s group discussion (Sessions P-9 & P-10) will be explained. This session will help you in understanding the claimed invention as well as the contents of the Office Action and the cited prior art references.

18:00 - 21:00 Welcome Reception for all participants

(La Brasserie)

Trademark Track(Sasono Mulyo 1)

14:00 - 15:30 Session T-1

Group Discussion - Distinctiveness and Similarity of Trade-marksASHIHARA,Emi; TSURU,KurumiThis session will consist of two parts:1. How to determine if a mark is distinctive or descriptive2. How to determine if one mark is similar to anotherAppeal decisions related to each question will be introduced, and attendees will then break into groups to discuss and share experi-ences across jurisdictions.

15:30 - 16:00 Coffee Break

16:00 - 17:00 Session T-2

Design Law and Practice in JapanKUROKAWA,TomoyaKUROKAWA Tomoya will introduce the Japan Design Law and design practice in Japan, including protectable subject matter, procedures for obtaining design registration, and the partial and related design registration systems. Mr. Kurokawa will then discuss how design protection can be used to complement patent protection, and conclude with a group discussion of filing strategies using an actual product as an example.

18:00 - 21:00 Welcome Reception for all participants

(La Brasserie)

Page 5: 2015 JPAA IP Practitioners Seminar · Experienced members from the JPAA will lead interactive group discussions. I believe that this seminar will be of particular benefit to those

2015 JPAA IP Practitioners Seminar 2015 JPAA IP Practitioners Seminar

ProgramDuring the two-day seminar, intellectual property practitioners and creators 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 tracks, 1) Patent (Electrics and Mechanics Group), 2) Patent (Chemistry Group) or 3) Trademark Group, starting from Monday afternoon.1) Patent (Electrics and Mechanics Group) and 2) Patent (Chemistry Group) will be held in same room.3) Trademark Group will be simultaneously held in different room.

Furthermore, a portion of these three track 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 while enjoying performances, entertainment, and an abundant supply of food and drinks.

Monday, March 2All Participants(Sasono Mulyo 1&2)

08:00 - 09:00 Registration

09:00 - 09:20 Welcoming Remarks

09:20 - 09:40 Session M-1

Role and Activities of JPAAFURUYA, Fumio President, Japan Patent Attorneys Association (JPAA)We would like to review the role and activities of the JPAA as a patent attorney profession, focusing on the amended Patent Attorney Act in 2014.

09:40 - 10:30 Session M-2

Recent Developments of Intellectual Property Matters in IndonesiaNAGAHASHI,YoshihiroChief Advisor, Project for Strengthening IPR ProtectionJapan International Cooperation Agency (JICA)This session will overview the recent developments and future prospects in the IP fields of Indonesia, especially based on the JICA Project for IPR Protection in Indonesia.

10:30 - 11:00 Coffee Break

11:00 - 12:30 Session M-3

Measures Against Counterfeit Products in Asian CountriesSpeaker : KAWASAKI, ShinjiModerator : OHNISHI,ShogoPanelists : TBA ,Indonesia TBA, Thailand TBA, VietnamAt first, a Patent Attorney of a Japanese company introduces themeasures taken by the Japanese company. Then the ways as wellas the laws and rules against counterfeit products in Indonesia,Thailand, Vietnam and Japan are explained and discussed by thepanelists.

12:30-14:00 Lunch (La Brasserie)

Patent Track(Sasono Mulyo 2)

14:00 - 14:30 Session P-1How to Draft Claims for a Patent Application ?ARAI,TamotsuIn this session, the main regulations in Japan and some tips for drafting claims will be explained, and you will experience each step for drafting claims using an example, further you will obtain some information about Japanese unique claims.

14:30 - 15:00 Session P-2How to Respond to an Official Action?TASAKA, KazuakiHow to respond to an Official Action (OA) is generally discussed. Namely, how to overcome a reason for rejection in an OA to obtain a patent right is discussed based on the procedures of OA, JPO Examination Guidelines, typical reasons for rejection, etc.

15:00 - 15:30 Session P-3Explanation for Claim Drafting Practice:(Electrics and Mechanics)INOUE,TomoyaThe object of this session is to provide how to find out a feature of an invention, which is not disclosed and suggested by prior art. Explanation of the subject invention and the prior art of the assignment is included. Some tips for claim drafting are also included.

15:30 - 15:50 Coffee Break

15:50 - 16:20 Session P-4Explanation for Claim Drafting Practice: (Chemistry)KATAYAMA,Ken-ichiThis session will address how to draft claims for a patent application to be filed before the Japan Patent Office. Before claim drafting, an order letter from your client will be explained. In this letter, your client described bioactive glasses suitable for uses as bioactive materials. Basic approaches to drafting claims for the bioactive glasses are briefly introduced in this session.

16:20 - 16:50 Session P-5Explanation for Practice of Responding to an Office Action:(Electrics and Mechanics)ONUKI, ToshifumiIn this session, the textbook and related information necessary for the next day’s group discussion (Sessions P-9 & P-10) will be explained, the textbook including a mock office action, an application, and the cited references). This session will provide you with a quick review of the application and cited references and assist you to better understand how to respond to the office action, so that the next day’s discussion can become fruitful.

16:50 - 17:20 Session P-6Explanation for Practice of Responding to an Office Action:(Chemistry)YOKOTA,NobutakaIn this session, the materials and information necessary for the next day’s group discussion (Sessions P-9 & P-10) will be explained. This session will help you in understanding the claimed invention as well as the contents of the Office Action and the cited prior art references.

18:00 - 21:00 Welcome Reception for all participants

(La Brasserie)

Trademark Track(Sasono Mulyo 1)

14:00 - 15:30 Session T-1

Group Discussion - Distinctiveness and Similarity of Trade-marksASHIHARA,Emi; TSURU,KurumiThis session will consist of two parts:1. How to determine if a mark is distinctive or descriptive2. How to determine if one mark is similar to anotherAppeal decisions related to each question will be introduced, and attendees will then break into groups to discuss and share experi-ences across jurisdictions.

15:30 - 16:00 Coffee Break

16:00 - 17:00 Session T-2

Design Law and Practice in JapanKUROKAWA,TomoyaKUROKAWA Tomoya will introduce the Japan Design Law and design practice in Japan, including protectable subject matter, procedures for obtaining design registration, and the partial and related design registration systems. Mr. Kurokawa will then discuss how design protection can be used to complement patent protection, and conclude with a group discussion of filing strategies using an actual product as an example.

18:00 - 21:00 Welcome Reception for all participants

(La Brasserie)

Page 6: 2015 JPAA IP Practitioners Seminar · Experienced members from the JPAA will lead interactive group discussions. I believe that this seminar will be of particular benefit to those

It is a great pleasure to announce that the 2015 Japan Patent Attorneys Asso-ciation (JPAA) IP Practitioners Seminar will be held in cooperation with the Intel-lectual Property Consultants Association of Indonesia (AKHKI) in arranging the 2015 JPAA IP Practitioners in Jakarta, Indonesia on March 2 and 3, 2015. As President of Intellectual Property Consultants Association of Indonesia (AKHKI), on behalf of AKHKI, it is with great pleasure to extend a warm Indone-sian welcome to all participants attending the 2015 Japan Patent Attorneys Associa-tion IP Practitioners Seminar in Jakarta. We are most honored that Jakarta was chosen for this event and are grateful to Mr. Hideki Tanaka, Chairman of the JPAA Committee for his interest and dedication to the organization of this most worth-while seminar. I would like to extend a particular welcome to Mr. Hideki Tanaka,

his Committee, JPAA and all of our friends and learned colleagues from Japan. I am certain that all participants will benefit from their in-depth knowledge of intellectual property-which they so generously impart to us. On behalf of the Intellectual Property Consultants Association of Indonesia, it is with great pleasure that I welcome you to the 2015 JPAA IP Practitioners Seminar in Jakarta. I sincerely hope that you find this event to be beneficial to your practice. Dr. Cita Citrawinda Noerhadi President Indonesian Intellectual Property Consultants Association (AKHKI)

Trademark Track(Sasono Mulyo 1)

9:00 - 9:45 Session T-3New Types of Trademarks in JapanSUZUKI,YasuhitoSUZUKI Yasuhito introduces new types of trademarks (sound, motion, color itself, position and hologram) which will become protectable in Japan on or before May 14, 2015. Mr. Suzuki will introduce how the new types of trademarks should be identified and how distinctiveness and similarity of the marks is determined, concluding with guided discussion using questions to the attendees.

9:45 - 10:30 Session T-4Multiple Protection Approach Using Trademark, Copyright, Design, and Unfair Competition Prevention LawsTSUTSUI,ShokoThis session focuses on what types of protection could be considered for protecting a creative work using multiple Japanese IP laws. We will study conditions for protection, limitations of plural rights protec-tions, and illustrative Japanese court decisions.

10:30 - 11:00 Coffee Break

11:00 - 11:45 Session T-5Parallel Import of Genuine GoodsOGURA,KeishichiOGURA Keishichi introduces the parallel import of genuine goods into Japan. In particular, Mr. Ogura will introduce requirements for legal parallel importation of genuine goods as defined in Japanese Supreme Court precedents.

11:45 - 12:30 Session T-6Non-use Cancellation System for Registered TrademarksNISHIMOTO,TaizoMr. NISHIMOTO explains the system for cancelling a Japanese registered trademark based on non-use. Mr. Nishimoto will focus on differences between the Japanese and Indonesian systems from both legal and practical points of view, and provide attendees with tips for using the Non-use Cancellation System in Japan.

12:30 - 14:00 Lunch

14:00 - 15:00 Session T-7Regional Phase of International Registration of MarksMURAI, Koji; NOMURA, AkiyoThis session will focus on the territorial procedures and examination for international registration of marks. MURAI Koji will present an analysis of the various aspects of regional phases of the Madrid System from a statistical viewpoint, while NOMURA Akiyo will present practical tips for successful registration in Japan through Madrid System.

15:00 - 15:30 Coffee Break

15:30 - 16:15 Session T-8Recent Judgments in JapanFUJITA, MasahikoFUJITA Masahiko will introduce recent and notable Japanese court decisions concerning trademarks, including decisions concerning distinctiveness of the name of musician as a trademark for musical goods and services and concerning liability for trademark infringe-ment of goods sold through an online shopping mall.

16:15 - 17:00 Session T-9Bad FaithHIROSE,FumihikoHow to attack a registration or application filed under bad will and recover a stolen trademark; invalidation and opposition systems, and what evidence is effective for establishing intent introduced through example cases.

2015 JPAA IP Practitioners Seminar

Tuesday, March 3Patent Track(Sasono Mulyo 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-7

Training of Claim Drafting ①KOSHIKAWA TakaoIn 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-8

Training of Claim Drafting ②KOSHIKAWA TakaoThe 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(La Brasserie)

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-9

INOUE,SeiichiParticipants will review the office action and prepare draft response in a group.

15:00 - 15:30 Coffee Break

15:30 - 17:00 Session P-10

INOUE,SeiichiThe 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.

2015 JPAA IP Practitioners Seminar

photo by Kenichi Morita

Page 7: 2015 JPAA IP Practitioners Seminar · Experienced members from the JPAA will lead interactive group discussions. I believe that this seminar will be of particular benefit to those

As President of the Japan Patent Attorneys Association, I would like to express our great pleasure to be holding the JPAA IP Practitioners Seminar in Jakarta, Indo-nesia, on March 2 and 3, 2015. This Seminar is the so-called “Asian Seminar,” aimed at providing IP information to Asian practitioners. The Seminars have been held once every two years since 2005, and the next coming Seminar will be the sixth. We are very proud to have been holding the Seminars continuously and successfully. Although the particular methods for and rules on obtaining and protecting IP rights are slightly different in each country, the major parts are universal. In the Seminar, we put particular focus on teaching universal ways to obtain and protect IP rights particularly regarding patents and trademarks. We believe that the Seminar is beneficial for IP practitioners regardless of their level of experience. Beginners as well as professionals in IP practices in Asian countries are welcome to attend. As

Location Le Méridien Jakarta Hotel Jalan Jenderal Sudirman, Kav 18 – 20, Jakarta 10220, Indonesia Phone : +62 21 251 3131  Fax : ++62 21 571 1633 URL: http://www.lemeridienjakarta.com/

Dates March 2 and 3, 2015

Language English only

Registration and Seminar FeesApplications and payment of the registration fee of USD170 - per person will be accepted online only, on a first come, first served basis and will be closed on February 13, 2015. Applications after the deadline can be made on the availabil-ity basis. However, any attendee information received after the deadline might not be included on the List of Attendees. Links to the online registration form and additional information can be found on the JPAA website:

http://www.jpaa.or.jp/?cat=546

The registration fee includes all seminar materials, coffee breaks, lunches, andthe 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 in Le Méridien Jakarta Hotel with following URL.(FYI: As an example, a superior room is available at 124US$++ per night with URL as of November 19th, 2014. This fare requires a 14-day advance purchase. Please note that the fare could be changed, room fare and reserva-tion request will depend on the hotel availability.

Organizing Committee

Director General, JPAA International Activities Center NAGAOKA, Shigeyuki, KONISHI & NAGAOKA IP FIRM

Chair, Organizing Committee TANAKA, Hideki, IBUKI IP-Law Partners

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

Advisory Members FUJITA, Masahiko, KOHHARA & FUJITA HIROSE, Fumihiko, HIROSE Int'l Patent & Trademark KOSHIKAWA, Takao, KOSHIKAWA &Co. MATSUI, Takao, Okabe International Patent Office OHNISHI, Shogo, S.OHNISHI & ASSOCIATES TANI, Yoshikazu, TANI & ABE, p.c. USHIKI, Mamoru, Ushiki & Associates

Moderator OHNISHI, Shogo, S.OHNISHI & ASSOCIATES

 Le Méridien Jakarta Hotel Jalan Jenderal Sudirman, Kav 18 – 20, Jakarta 10220, Indonesia Phone: +62 21 2513131 http://www.starwoodhotels.com/lemeridien/property/overview/index.html ?propertyID=1837&language=en_US&localeCode=en_US

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

Immigration and Visa InformationA foreign visitor who wishes to enter the Indonesia is required to hold a passport with at least 6 month validity from the arrival date. Certain countries’ nationals are required to obtain a visa when entering the Indonesia, and some countries’ nationals can get visa at certain airports in Indonesia. Please check the Indonesian embassy HP in your countries to get more information. For your convenience, please visit the following URL.http://www.imigrasi.go.id/index.php/en/public-services/visa-for-visitorhttp://www.learn4good.com/travel/indonesia_visa.htmhttp://en.wikipedia.org/wiki/Visa_policy_of_Indonesia

Smoking Policy Smoking is only permitted in designated smoking areas.

shown in the brochure, the Seminar is held for two days. On the first day, lectures and discussions on general intellec-tual property are given to all participants. Then, the room is divided into two group rooms, a patent room and a trade-mark room, to hold group discussions. Tutors attend each group and help the discussions. 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 eagerly teach about the prosecution system for patents and trademarks. In each of the last five Seminars, we accepted about 150 participants. We are looking forward to accepting a similar number for the next Seminar in 2015. 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 Jakarta. Mr. Fumio Furuya President Japan Patent Attorneys Association (JPAA)

It is our pleasure to invite you to join us at the JPAA IP Practitioners Seminar in Jakarta, Indonesia to be held on March 2 and 3, 2015. This seminar is the sixth in a series of IP Practitioners Seminars that the JPAA started in 2005. The program includes sessions for all participants, as well as paral-lel workshops on patent law and trademark law. The two-day seminar will offer an update on legal developments in the IP systems in Japan, Indonesia and other coun-tries. The workshops will include small group sessions, which will provide you with unique opportunities on drafting patent claims and preparing amendments in response to office actions, and also on learning important issues relating to trade-mark protection. Experienced members from the JPAA will lead interactive group discussions. I believe that this seminar will be of particular benefit to those who have recently entered the profession and also to those who wish to improve their claim drafting skills through discussions with tutors and other participants.

The Japan Patent Attorneys Association has been offering this IP Practitioners Seminar every other year since 2005, with the International Activities Center being the responsible body for this seminar. The International Activities Center is an affiliated organization of the JPAA, and about 40 patent attorneys are involved in the preparation of this Jakarta seminar. I hope you will find the JPAA IP Practitioners Seminar rewarding in terms of education, networking, and the foster-ing and enjoyment of mutual friendships. I look forward to seeing you in Jakarta in March 2015.

Mr. Shigeyuki Nagaoka Director General International Activities Center, JPAA

2015 JPAA IP Practitioners Seminar

General Information

2015 JPAA IP Practitioners Seminar

Speakers ARAI, Tamotsu, Fuji Patent Law Firm ASHIHARA, Emi, YKI Patent Attorneys FUJITA, Masahiko, KOHHARA & FUJITA HIROSE, Fumihiko, HIROSE Int'l Patent & Trademark INOUE, Seiichi, Urban International Patent Firm INOUE, Tomoya, Haruka Patent & Tradamark Attorneys and Hubbs, Enatsky, Inoue PLLC KATAYAMA Ken-ichi, OHNO & PARTNERS KAWASAKI, Shinji KOSHIKAWA, Takao, KOSHIKAWA &Co. KUROKAWA, Tomoya, SOEI Patent & Law Firm MURAI, Koji, Shinjyu GLOBAL IP NISHIMOTO, Taizo, Nishimoto IP Firm NOMURA, Akiyo, EGRET IP FIRM OGURA, Keishichi, Patent corporate body Global Intellectual Property ONUKI, Toshifumi, TMI Associates SUZUKI, Yasuhito, ABE, IKUBO & KATAYAMA TASAKA, Kazuaki, Nagasawa Patent Firm/The Tokyo-Marunouchi Law Offices TSURU, Kurumi, KT IP TSUTSUI, Shoko, TSUTSUI & ASSOCIATES YOKOTA, Nobutaka, FIELDS IP Attorneys

Tutors HIROKAWA, Koji, SOYO International IP Attorneys IWAKIRI, Atsushi, Corporate IP Professional SUZUKI, Yasuhiro

Welcome Message

Page 8: 2015 JPAA IP Practitioners Seminar · Experienced members from the JPAA will lead interactive group discussions. I believe that this seminar will be of particular benefit to those

2015 JPAA IP Practitioners Seminar2015 JPAA IP Practitioners Seminar

March 2 – 3, 2015Jakarta, Indonesia

Organized by The Japan Patent Attorneys Association (JPAA)

In cooperation with The Japan Patent Office(JPO) The Intellectual Property Consultants Association of Indonesia(AKHKI)

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/Miyajima, Hiroshima, JAPAN