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Programm Brochure CPPC 2010

November 16/ 17, 2010, Tokyo, Japan
ACADEMY HILLS • アカデミーヒルズ
The global economic crisis provides a difficult environment for
many businesses and IP departments. Financial constraints have
led to new views on IP strategy and value around the globe.
While this has changed many long-accepted ideas in the IP world,
there is more to come. IP offices are re-shaping the framework of
prosecution. Pressure on applicants to get it right from the get-go
is increasing and penalties are becoming more severe. At the same
time, IP has increasingly become the focus of competition and
antitrust law so that many traditional views on IP are now being
scrutinized from a new perspective. IP is thus facing challenging
times and IP decision makers will have to adopt new ways and
strategies to ensure optimum protection. This is not easy, but
knowing what lies ahead is key to future success.
The Comparative Patent Practice Conference (CPPC) was established to discuss current patent law issues from a European and
US perspective with comments from Japanese experts.
Simultaneous interpretation into Japanese will be provided for the
whole seminar.
conference venue
Academy Hills
Roppongi Hills Mori Tower 49F
6-10-1 Roppongi, Minato-ku, Tokyo
Tel: +81 (0)3-6406-6220
Roppongi Station – Hibiya Line Exit 1C (0 min)
六本木ヒルズ森タワー49階 • アカデミーヒルズ
〒106-6108 東京都港区六本木6-10-1
Tel: (03) 6406-6220
Azabu-Juban Station – Nanboku Line Exit 4 (8 min)
Roppongi Station – O-Edo Line Exit 3 (4 min)
Azabu-Juban Station – O-Edo Line Exit 7 (5 min)
day 1 – november 16 (tue)
8:30 – 9:30 Registration / 受付
9:30 – 9:40 Welcome / 開会のご挨拶
9:40 – 11:00
Claim Drafting: Strategies for Optimum Claim Scope,
Tricky Formats, Fees and Features クレーム作成: 請求の範囲の最適化と書式・手数料・構成要件に
The recent changes in the EPC and EPO proceedings have a strong
impact on practical claim drafting. Today’s claim drafting is not
only about protective scope. It is also about search strategies,
saving money and avoiding EPO objections right from the start.
At the same time U.S. claim drafting must be attentive to obviousness concerns (KSR), written description issues (Ariad) and
effective enforcement (single entity infringer, clear claim terms,
broad scope). We will look at the options and explain strategies.
11:00 – 11:30 Coffee Break / 休憩
11:30 – 12:25
Non-obviousness Post-KSR and the Importance of
Secondary Considerations; Inventive Step at the EPO KSR事件後の非自明性と二次的考察の重要性、EPOにおける
KSR said TSM test not the only standard. Now it is harder to
overcome obviousness rejections. Practitioners need to have in
mind arguments to overcome obviousness based on deficiencies
in the prior art, and secondary considerations tending to show
non-obviousness, such as unmet need, skepticism of experts in
the field, failure of others, and so forth. Be prepared to overcome “obvious to try,” especially in the chemical context. Rebut
reliance on “impermissible hindsight.” On the other side of the
Atlantic: What does the EPO expect? The general problem-solution approach and the shift to a stricter examination of inventive
step create new challenges. Special emphasis is placed on the
new requirements for presenting data in support of inventive
step. We take a fresh look at this key requirement of paentability
in the U.S. and the EPC.
12:25 – 12:45
Expedite Prosecution 迅速な審査
How to deal with direct EP and regional EP-PCT applications before and/or after issue of the (international) search report. We will
share first-hand experience in light of the first 6 months of practice under the recently changed EPO rules. What to do in the U.S.?
Strategies for expediting prosecution and for taking advantage of
the change in the point count system for examiners. Practical
steps to expedite prosecution include consideration of the patent
prosecution highway, petition to make special, accelerated examination and the proposed three-track system. Personal examiner interviews provide a key practice method for facilitating prosecution and negotiating optimum claim scope.
12:45 – 14:00 Lunch/ 昼食 (Roppongi Hills Club)
14:00 – 14:30
Isolated Gene Sequences and Related Diagnostic
Methods 遺伝子配列特許と診断方法に関わる問題
Is U.S. law changing? Impact of Myriad case on gene patenting.
Will there be patents on genes in the future and what will they
look like? An outlook for the U.S. and Europe.
14:30 – 15:30
Computer-implemented Inventions: Bilski and G3/08,
Software, Methods, Business Methods, Diagnostic
Medical Techniques, and More コンピューター利用発明: Bilski事件とEPOのG3/08事件、
Although Art. 52 & 53 EPC exclude from patentability pure software, business methods and diagnostic medical techniques, the
EPO allows them under certain conditions. The lecture will explain
the patentability requirements for such inventions with many
illustratve examples and will also focus on the question of novelty
and inventive step of such inventions. In the U.S., computer software-related inventions, business methods and diagnostic medicine techniques may each be patent-eligible, provided the invention meets the machine or transformation test, or, after Bilski,
another test suitable for the technology, as yet unspecified.
15:30 – 16:00 Coffee Break / 休憩
16:00 – 16:15
The Unified European Patent Litigation System:
What is the Present Status? 欧州及びEU特許に関する統一訴訟制度の現状
There are concrete plans for the establishment of a unified “European and EU Patent Court (EEUPC)”. The Court of Justice of the EU
will decide shortly whether the draft agreement between the EU,
its Member States and the non-EU Member States of the EPO is
compatible with EU law. What happens if it is – what if it is not?
We will briefly explain the concept and the present status.
16:15 – 16:55
Intersection of IP Law and Antitrust Law 知的財産法と独占禁止法の交差点
Many products must comply with a standard that is covered and
protected by IP-rights. These IP-rights provide its owner(s) a monopoly. How does the antitrust law deal with such state-granted
monopolies, and what happens when a company produces a
product which complies with the standard, but this company
does not have a licence to use the intellectual property?
16:55 – 17:30
Patent Trolls パテント・トロール
Patent trolls represent a growing threat to companies doing business in the U.S.. The biggest incentive for trolls is the potential to
obtain huge amounts as damages from infringers or even to secure lopsided out-of-court settlements from accused infringers
intent on avoiding costly and time-consuming litigation. Is this
also the case in the EU?
17:30 – 20:00 Reception / レセプション (Roppongi Hills Club)
day 2 – november 17 (wed)
8:30 – 9:00 Registration / 受付
9:00 – 9:20
Inventorship, Ownership & Assignment Laws 発明者適格・所有権・譲渡
The U.S. still goes its own way on inventorship. Incorrect inventorship can render a patent invalid. What is the situation in Europe?
9:20 – 9:50
No Claims without Register? 非登録者の原告適格
According to recent case law of HRC Düsseldorf, only the registered owner of a patent is entitled to assert it. What happens
to the patentee who is not yet registered after a transfer? An exclusive license might help! In the U.S., exclusive licensees with
“incidents of ownership” and provable assignees have standing to
sue. How to prove status?
9:50 – 10:15
Infringement of Your European Patent: Who Can You Sue? 欧州特許の侵害: 誰を被告として提訴できるか?
In Germany you can sue the infringer and the “disturber” (妨害者).
Even the “disturber” may be an infringer. You are probably not
aware of all the infringers you can sue under German law. We will
let you know on the basis of new case law.
10:15 – 10:40
Potential Obstacles to Enforcing Your Patent in the U.S. 米国における特許権行使の際の問題点
In the U.S., to sue an infringer you must have a reasonable basis
for suit and jurisdiction over the defendant. Obstacles include inequitable conduct defense (Therasense case), patent misuse defense (Princo case), reexamination gambit plus stay of litigation.
10:40 – 11:10 Coffee Break / 休憩
11:10 – 11:35
New Chances to Obtain Evidence of Patent
Infringement in Europe 欧州における特許侵害での証拠入手のための新たな手法
New procedures, rules and practices have been established in the
European Union to enhance the possibilities for effective enforcement of IP rights. With Germany as the most relevant jurisdiction
for patent litigation in Europe, several recent decisions of the
German courts setting out the legal framework for obtaining
evidence of infringement by way of a surprise inspection at the
premises of the presumed infringer are of particular interest.
12:00 – 12:40
Attorney-client privilege, Work-product Doctrine,
Electronic Records Complications. 弁護士・依頼者間の秘匿特権、職務活動の成果の法理、電子記
In the U.S., attorney-client privilege can apply to both outside
counsel and in-house counsel. The work-product doctrine protects attorney work product prepared for litigation. But under
wide-open U.S. discovery, opposing counsel may obtain private
data not falling within these two privileges, usually subject to a
protective order. What steps should Japanese counsel take when
corresponding with U.S. counsel to preserve privilege? In Europe,
only communications between a client and independent counsel
can be covered by attorney-client privilege.
12:40 – 14:00 Lunch/ 昼食 (Roppongi Hills Club)
14:00 – 14:30
Strategic Use of Utility Models with a Focus
on Germany and China 実用新案を利用した戦略: ドイツと中国に焦点を当てた考察
In Germany and China, utility models are full-fledged IP rights.
They can be obtained through a quick registration procedure, and
are as quickly enforceable. They do not collide with a parallel
patent and offer the same relief as a full patent, but at higher flexibility. This makes them an extremely valuable part of a litigation
14:30 – 15:15
Comparative Mock Trial 模擬裁判 I
Parallel litigation in Europe and the U.S. holds many traps. To be
successful on both continents, one needs to know the perils and
pitfalls and work in close cooperation. In this mock trial, we will
look into an example case, provide an insight into the different
court situations in Europe and the U.S. and highlight how they
15:15 – 15:45 Coffee Break / 休憩
15:45 – 16:30
Comparative Mock Trial (continued) 模擬裁判 II
16:30 – 17:10 Q&A Roundtable / 質疑応答
17:10 – 17:15 Closing Remarks / 閉会のご挨拶
11:35 – 12:00
Evidence is Discoverable in U.S. 米国における証拠発見の方法
U.S. permits broad scope of discovery from the defendant-accused
infringer. Interrogatories, document requests, depositions, etc.
are available as of right. Electronic records have added expenses
and complications. To discover evidence outside the U.S., resort
must be had to The Hague Convention. Conversely, counsel litigating patents in Europe or Asia may use U.S. rules to obtain
documents and testimony located in the U.S.
simultaneous translation 同時通訳
Nobuko Sasae, 佐々江信子
Keiko Mihara, 三原恵子
Yumiko Hayashi, 林由美子
Dr. Thorsten Bausch
Dr. トーステン・バウシュ
Partner & Co-head of Chemical Dept.,
Hoffmann · Eitle, Munich
Dr. rer. nat. (Chemistry), Dipl.-Chem., European
and German Patent Attorney
Specialized in chemical, pharmaceutical and biotech patents,
in particular litigation, both cross-border and national
Frequently involved in cases before the EPO, the German
Federal Patent Court, the German Supreme Court and the
European Court of Justice
Publications include the series „Nichtigkeitsrechtsprechung in
Patentsachen“ which reports on decisions of the German
Supreme Court in patent nullity matters
Lee C. Bromberg
Partner, IP Litigation, McCarter & English LLP
(Boston, MA & New York, NY)
Lead counsel in 50 + patent litigation cases
J.D., Harvard Law School; M.A. Cornell, cum laude;
B.A. Michigan, magna cum laude
Former President of Boston Patent Law Association
Admitted to practice before the U.S. Supreme Court, Court
of Appeals for the Federal, 1st, 2d, and 4th Circuits, the
International Trade Commission, and Courts throughout the
United States
David R. Burns
Partner, IP/IT Group, McCarter & English LLP
(Boston, MA)
B.S.E.E., University of Massachusetts, J.D. Suffolk
Law School, cum laude
Admitted to U.S. Patent and Trademark Office
Manages patent portfolios having over 100 issued U.S. and
international patents
Experienced patent prosecutor in high technology, medical
devices, electronic arts, and software
Scott S. Christie
Partner, IP/IT Group, McCarter & English LLP
(Newark, NJ)
J.D., Harvard Law School, cum laude; B.A. Colgate,
magna cum laude
Lead counsel in numerous patent and high technology litigations
Formerly Assistant U.S. Attorney, New Jersey, Head of Computer
Hacking and IP Section
Lead prosecutor in major investigation of international criminal
ring (approx. 4,000 members) dedicated to computer hacking,
credit card fraud and identity theft
Dr. Christian Holger Folz
Dr. クリスティアン ホルガー・フォルツ
Partner, Legal Department, Hoffmann · Eitle, Munich
Dr. jur., M.A., Attorney at Law since 1993
Specialised in national and cross-border patent,
design, licensing, competition (cartel) and unfair
competition law
Publications and lectures on patent, competition, licensing
and enforcement law
Michael R. Friscia
Partner, IP/IT Group, McCarter & English LLP
(Newark, NJ)
Bachelor of Engineering, Stevens Institute of
Technology; J.D. New York Law School
Specializes in patent prosecution in mechanical and electrical arts
Extensive IP litigation experience
Adjunct Professor, Seton Hall Law School 1999–2006;
frequent speaker on IP issues
Christopher Furlong
Partner, Mechanical Dept., Hoffmann · Eitle, Munich
B.E., Mech. Eng, Univ. Coll. Dublin
European Patent Attorney (1994), Cert. In IP Law,
Univ. of London (1995), Chartered British Patent
Attorney (2002)
Frequent speaker on issues of European IP law
Specialised in European prosecution and inter partes validy
and infringement proceedings
Mark D. Giarratana
Partner, IP/IT Group, McCarter & English LLP
(Hartford, CT)
Admitted in New York, Connecticut, and to U.S.
Patent and Trademark Office
J.D. University of Connecticut School of Law, with honors;
B.S.M.E. Catholic University
Extensive experience litigating patent and other IP cases
in federal courts
Advises clients on IP issues related to all aspects of patent,
trademark and copyright procurement, litigation, licensing,
and the negotiation of IP transactions
Elizabeth A. Hanley
Partner and Co-Chair of the IP/IT Group,
McCarter & English LLP (Boston, MA)
J.D. Suffolk Law School, B.A. Holy Cross and
Worcester Polytechnic Institute
Former Examiner, U.S. Patent and Trademark Office
(biotechnology and chemistry)
Specialized training at National Institutes of Health
in biotechnology
Represents leading pharmaceutical and biotechnology companies
in all areas of patent law, including prosecution, patentability,
freedom to operate, licensing and due diligence evaluations
Danielle L. Herritt
Partner, IP/IT Group, McCarter & English LLP
(Boston, MA)
J.D., Suffolk Law School, magna cum laude, B.S. Ch.E.,
Univ. of Mass., cum laude
Former chemist, Monsanto and Procter & Gamble
Patent professional experienced in patent prosecution, opinions,
litigation, dispute resolution, licensing, due diligence and strategy
related to regulatory exclusivity
Represents companies ranging from big pharma and medical
device companies to industrial and polymer chemistry companies
in all phases of patent portfolio development and enforcement
Dr. Matthias Kindler
Dr. マティアス・キンドラー
Partner & Co-head of Chemical Dept.,
Hoffmann · Eitle, Munich
Dr. rer. nat. (Chemistry), European and German
Patent Attorney
Specialized in chemical and pharmaceutical patents,
in particular prosecution, opposition and appeal proceedings
before the EPO, invalidation actions and infringement litigations
Numerous cases in SPC matters before the German Federal
Patent Court, the German Supreme Court and the European
Court of Justice
Frequent lecturer on issues of European IP Law
Dr. Guntram Rahn
Dr. グントラム・ラーン
Dr. jur., Hoffmann · Eitle, Munich
Specialised in national and multi-jurisdictional
patent litigation, licensing, competition law,
contract law and arbitration
Fluent in Japanese
Attorney-at-law since 1975
Head of the Japan and East Asia Department at the
Max Planck Institute for Foreign and International Patent,
Copyright and Competition Law (1975–1992)
Dr. Dirk Schuessler-Langeheine
Dr. ディルク・シュスラー=ランゲハイネ
Dr. Peter Klusmann
Dr. ペーター・クルスマン
Partner & Co-head of Chemical Dept.,
Hoffmann · Eitle, Munich
Chemistry Diploma, Rheinisch Westfälische
University, Aachen, doctoral thesis, Max-PlanckInstitut für Kohlenforschung, Mülheim an der Ruhr
German and European Patent Attorney since 1998
Numerous publications on German and European patent law
Member, IP Advisory Council, Akron University, Ohio, USA
Holger Stratmann
Dr. Thomas Koch
Dr. トーマス・コッホ
Partner, Electrical & IT Department,
Hoffmann · Eitle, Munich
PhD of University College London, UK; European
and German Patent Attorney
Work experience at Siemens Research Labs Munich,
Germany & University College London, UK / assistant
professor at King’s College London in Optical communications
& Microwave Technology
Specialized in prosecution, opposition and litigation, in particular
in telecommunications, computer software, semiconductors,
digital communications (e.g. MP3) & business patents
Lecturing activities in IP Law
Ryoichi Mimura
Partner, Nagashima, Ohno & Tsunematsu, Tokyo
Attorney-at-Law (since August 2009),
Judge (1979–2009)
Presiding Judge of Tokyo District Court
(Intellectual Property Division)
Judge of the Intellectual Property High Court, Japan
Publications and lectures on patent law in Japan and Germany
Dr. jur., Partner & Co-head of Legal Dept.,
Hoffmann · Eitle, Munich
Attorney-at-Law (since 2000)
Specialised in national and multi-jurisdictional
patent litigation, licensing, competition law, contract law
and arbitration
Fluent in Japanese, Doctoral thesis on Japanese law
on damages (2004)
Publications and lectures on German, European and
Japanese IP Law
Partner & Co-head of Legal Dept.,
Hoffmann · Eitle, Munich
Postgraduate Diploma in EU Competition Law
from King‘s College London (1996)
Specialised in national and cross-border patent and unfair
competition litigation, licensing and contract law, anticounterfeiting and product piracy, coordination of EU-wide
border seizure proceedings
Publications and lectures on patent law, domain grabbing
and product piracy
Dr. Henrik Vocke
Dr. ヘンリック・フォッケ
Partner, Mechanical Department,
Hoffmann · Eitle, Munich
Dr.-Ing. (Civ. Eng.) of University of Stuttgart,
European and German Patent Attorney
Working experience in Japan (Kajima Technical
Research Institute, Tokyo)
Specialized in prosecution and litigation, in particular
in developing and enforcing combined patent and utility
model strategies
Frequent speaker on issues of European and
German IP law
CPPC Office c/o German Chamber of Commerce and Industry in Japan (Ms. Inui)
Sanbancho KS Bldg. 5F, 2-4 Sanbancho, Chiyocaku, Tokyo 102-0075, Japan
在日ドイツ商工会議所内 CPPC事務局(担当:乾)
〒102-0075 東京都千代田区三番町2-4, 三番町KSビル5F
Tel: +81 (3) 5276-8826 Fax: +81 (3) 5276-8736 Email: [email protected]
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