PROFESSIONALS弁護士/弁理士

弁護士/弁理士PROFESSIONALS

LAWYERPatent AttorneyM.Eng. (Chemistry)

Hirotaka Nonaka

Location:TOKYO

Belonging to:DAI-ICH TOKYO BAR ASSOCIATION

Main fields of business

Intellectual property in general, disputes, contracts, IP strategies, prosecution, various patent searches, technology trend searches, IP consulting, competition and antitrust law, corporate legal affairs, international transactions

MESSAGE

Completed the Graduate School of Science. As a researcher at a chemical manufacturer, he was engaged in basic research and development related to semiconductors, fuel cells, and optical waveguides, and obtained many patents as an inventor. After qualifying as a patent attorney, he worked in the Intellectual Property Department and mastered all aspects of intellectual property practice at a manufacturer.

From 2015, I studied at an IP law school in Germany to learn European and US intellectual property and competition law (antitrust law), and the following year, I trained at IP law firms in Germany and the United States. My specialty is particularly IP consulting for technology companies.

Background

Mar. 1994

Graduated from Hyogo Prefectural Ono Senior High School (Science and Mathematics Course)

Mar. 1998

Graduated from Department of Industrial Chemistry, Faculty of Engineering, Kyoto University

March. 2000

Completed Polymer Chemistry Major at Graduate School of Engineering, Kyoto University

Apr. 2000

Sumitomo Bakelite Co., Ltd./Research Department, Institute of Fundamental Research

November. 2003

Passed Patent Attorney Examination

Apr. 2004

Registered as Patent Attorney / Intellectual Property Department

Mar. 2006

Retired from the company

Mar. 2009

Completed Graduate School of Law, Kyoto University

Sep. 2009

Passed the new bar examination

December. 2010

Completion of Legal Training (new 63rd term)/Registered as an attorney (Osaka Bar Association)/ Joined Yodoyabashi &Yamagami Legal Professional Corporation

October. 2011

Registered as Patent Attorney (Re-registered)

Jan. 2015

Appointed Outside Director of GF Co., Ltd. (formerly Fujisaki Electric Co., Ltd) (retired in December 2021)

From July. 2015

Studied in Germany/Munich Intellectual Property Law Center (MIPLC)

From September. 2016

Training in Europe and U.S. Office

Jul. 2017

Changed attorney registration (Dai-ichi Tokyo Bar Association)

October. 2020

Establishment of Preventive Legal Research Society as a general incorporated association (Representative Director)

July. 2022

Established IP Law Firm Lexceed Tech (Representative Partner), Joined Lexceed Legal Professional Corporation (Representative Partner)

Books, Articles and Other Publications

“Preventive Legal Handbook for Small and Medium Enterprises",  CHUOKEIZAI-SHA, INC. (co-author), August 2021 “A case in which a technical document cited as conventional technology in the published patent gazette, which was the main reference, was submitted and adopted for the first time in a suit for revocation of trial decision.”,  Property Management May 2021 (Vol. 71 No. 5), Publisher: Japan Intellectual Property Association (co-author) “Explanation of Points to Consider Specific to Numerically Limited Inventions: From the Time of Drafting the Specification to the Time of Patent Litigation,”  Japan Economic and Industrial Research Institute, April 2021 “Japanese Patent Law Cases and Comments”  Wolters Kluwer (co-author), August 2019 “Legal Counseling for Patents and Utility Models I & II (Latest Seirin Legal Counseling)”,  SEIRIN SHOIN(co-author), May 2019 (joint authorship) “FTO (Freedom to Operate) in the Pharmaceutical Industry”,  Nomos Publishing, August 2018 “Comment on‘Maxacalcitol II': Equivalent Infringement and File Wrapper Estoppel in Japan”  IIC - International Review of Intellectual Property and Competition Law, Vol. 49, No. 5, p. 621, June 2018 “The Impact of the UK's Exit from the EU (Brexit) on European Patent with Unitary Effect System,”  Patent, February 2017 (Vol. 70, No. 2, p. 96) “Comment on the Japanese IP High Court Decision ‘Maxacalcitol'”  IIC - International Review of Intellectual Property and Competition Law, Vol. 47, No. 8, p. 994, December 2016 “Legal Counseling on Unfair Competition I & II (Latest Seirin Legal Counseling)”,  SEIRIN SHOIN(co-author), April 2015(joint authorship) “Trends in Patent Strategies in Key Technology Areas (Renewable Energy)/Japanese Firms Should Promote International Applications for Core Technologies. Investment in basic research is also important.”,  The Lawyers Monthly, June 2015 “Analysis of Patent Trial Decision Cancellation Judgment -Practice of Intellectual Property High Court from the Viewpoint of Practice-”  Shoji Homu, Separate Volume NBL No.148, 2015 (co-author) “MALDI-TOF-MS Analysis of Ruthenium(II)-Mediated Living Radical Polymerizations of Methyl Methacrylate, Methyl Acrylate, and Styrene”,  Macromolecules, 2001, 34 (7), pp 2083-2088

Seminar

March 2022 "Prior Use Defense against Numerically Limited Invention Patents - Analysis of Past Court Decisions and Trends" hosted by our office

Feb 2022 "Practice of Joint Research and Development Agreement" hosted by Research Institute of Economy, Trade and Industry

December 2021 "Basic Knowledge of ‘Copyright Law’ and Essentials of Copyright Contracts", hosted by Mizuho Research & Technologies, Inc.

October 2021 "Explanation of Points to Consider Specific to Numerically Limited Inventions ", hosted by Kinki Branch of Research Institute of Economy, Trade and Industry

September 2021 "How to proceed with joint research and development between multiple companies and between universities and companies and contract practice", hosted by TECHNICAL INFORMATION INSTITUTE CO., LTD

July 2021 "Explanation of Points to Consider Specific to Numerically Limited Inventions", hosted by Kansai Patent Attorneys Study Group

Feb 2021 "Explanation of Points to Consider Specific to Numerically Limited Inventions (Part 2)", hosted by Research Institute of Economy, Trade and Industry

Jan 2021 "Explanation of Points to Consider Specific to Numerically Limited Inventions (Part I)" hosted by Research Institute of Economy, Trade and Industry

Feb 2020 "Explanation of Points to Consider Specific to Numerically Limited Inventions - From the Time of Drafting the Specification to the Time of Patent Litigation”, hosted by Research Institute of Economy, Trade and Industry

December 2019 "Basic Knowledge of 'Copyright Law' and Essentials of Copyright Contracts," hosted by Mizuho Research Institute

October 2019: "Explanation of Points to Consider Specific to Numerically Limited Inventions - From the Time of Drafting the Specification to the Time of Patent Litigation," hosted by Research Institute of Economy, Trade and Industry

Aug. 2019 "Explanation of Points to Keep in Mind Specific to Numerically Limited Inventions - From the Time of Drafting the Specification to the Time of Patent Litigation," hosted by Research Institute of Economy, Trade and Industry

March 2019 "Explanation of Points to Consider Specific to Numerically Limited Inventions - From the Time of Drafting the Specification to the Time of Patent Litigation", hosted by Research Institute of Economy, Trade and Industry

December 2018 "Basic Knowledge of Copyright Law and Essentials of Copyright Contracts," hosted by Mizuho Research Institute

October, 2018 "Explanation of Points to Consider Specific to Numerically Limited Inventions - From the Time of Drafting the Specification to the Time of Patent Litigation", hosted by Research Institute of Economy, Trade and Industry

July 2014 "Introduction of Recent Judgments of the Intellectual Property High Court and Feedback to Practice" organized by Kansai Patent Attorneys Study Group (Japan Patent Attorneys Association Continuing Training Course)

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Online consultations are also
available via ZOOM or Teams.

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