Masahiro NANJO

Patent Attorney (also qualified to act with representation in specific IP litigation)

 

EDUCATION

Faculty of Engineering, The University of Tokyo

Faculty of Pharmaceutical Sciences, The University of Tokyo

 

MEMBERSHIP

JPAA (JAPAN PATENT ATTORNEYS ASSOCIATION)

ASSOCIATION OF INDUSTRIAL PROPERTY LAW

AIPPI (International Association for the Protection of Intellectual Property)

APAA (The Asian Patent Attorneys Association)

Pharma & Biotech Patent Cases Research Center (as a chair)

JCA (JAPANESE CANCER ASSOCIATION)

 

QUALIFICATIONS

Qualified to act with representaion in specific IP litigations (2004)

Registered as Patent Attorney (1999, Passed exam in 1998)

TOEIC (Test Of English for International Communication) 975 (out of 990) (2005)

 

EXPERTISE

new chemical entities, pharmaceuticals, method of treatments, medical devices, dosage forms, DNAs, proteins, antibodies, biologicals, tissue engeneering, cosmetics, softwares, business methods, semiconductors, LEDs and LDs, patent litigations

CAREERS

 

2008 - TOKYO ACTi International Patent & Trademark Office, Managing Partner
2008 – 2008 TMI Associates, Partner
2007 – 2008 Tokyo EIWA Attorneys at Law, Partner
Tokyo EIWA Patent Attorneys, Managing Partner
2005 – 2008 Tokyo Medical and Dental University, Visiting Lecturer
2002 – 2007 Pfizer Japan Inc., Intellectual Property Division, Patent Department, Director of Patent
1998 – 2002 Tani & Abe Patent Attorneys, Chemical/Biotech group, and Litigation group

 

EXTERNAL ACTIVITY

2011 - Committee Member of Patent Attorneys Examining and Disciplinary Subcommittee, Industrial Property Council of Japan Patent Office
2008 - Researcher, Working Group on Various Issues Involving Specification, Central Research Institute of Intellectual Property, Japan Patent Attorneys Association
2009 – 2010 Committee Member of the Patentability Investigation Committee 2009, Appeals Division of Japan Patent Office
2008 – 2010 Researcher, Working Group on Various Issues Involving Amendment & Correction, Central Research Institute of Intellectual Property, Japan Patent Attorneys Association
2006 – 2008 Researcher, Working Group on Various Issues Involving Claim Interpretation & Correction, Central Research Institute of Intellectual Property, Japan Patent Attorneys Association
2006 – 2007 Committee Member, Biotechnology and Life Science Committee, Japan Patent Attorneys Association
2004 – 2006 Researcher, Working Group on Various Issues Involving Damages arising from Intellectual Property Infringement, Central Research Institute of Intellectual Property, Japan Patent Attorneys Association
2003 – 2004 Committee Member, Biotechnology Committee, Japan Intellectual Property Association
2002 – 2003 Committee Member, Biotechnology Committee, Japan Patent Attorneys Association
1999 – 2001 Committee Member, Business Patent Research Committee, Software Information Center

 

LECTURES & SEMINARS

Please see the link for Lectures & Seminars by Masahiro Nanjo.

PUBLICATIONS

Please see the link for Publications by Masahiro Nanjo.

COURT & JPO INVALIDATION TRIAL/OPOSITION CASES

Invalidation Trial Case (Trial Number: Invalidation 2013-800011) [“2nd Invalidation Trial”]

Invalidation Trial Case (Trial Number: Invalidation 2011-800221) [“1st Invalidation Trial”]

Our firm filed for our client Invalidation Trials asserting that all the claims of the JP Patent No. 4565715 owned by Company P which are directed to cosmetic/pharmaceutical formulation are invalid.  Mainly due to the fact that the claims contain two distinctive portions, we decided to strategically file two invalidation trials separately.  As its result, in the 1st Invalidation Trial, the portion in the claim of which we asserted Lack of Novelty was completely deleted by the amendment (a.k.a. correction) the patentee was forced to file.  In the 2nd Invalidation Trial, we asserted Lack of Inventive Step of the remaining portion over prior art our firm identified by our extensive search.   On August 1st, 2014, we successfully obtained the trial decision to invalidate all the claims.  The trial decision became final and binding on September 25th, 2014.

Invalidation Trial Case (Trial Number: Invalidation 2010-800110)

Our firm filed for our client an Invalidation Trial asserting that the claim 1 of the JP Patent No. 4109165 owned by Company A which is directed to a process to produce a chemical gas (chlorine dioxide) to is invalid.  As its result, on April 25th, 2011, we successfully obtained the trial decision to invalidate the claim (publication date of the trial decision: July 29th, 2011).  The trial decision became final and binding on June 10th, 2011.

# Individual v. HIRO Enterprise, Opposition, 2008-900292

This is a Opposition case filed by an individual against a trademark registration of our client.  On April 14th, the opposition decision was rendered to maintain the trademark registration.  The opposition decision became final and binding on May 11th, 2011.

# Kotobuki v. Japan Post Services, Hei 19 (wa) 17762

This is an Infringement Litigation.  The decision was rendered to deny infringement and affirmed invalidity of the utility model registration, which was a favorable decision for the client.

# Asse v. Microsoft Corp., Supreme Court, Hei 14 (gyo-hi) 243
# Asse v. Microsoft Corp., Supreme Court, Hei 14 (gyo-hi) 296
# Asse v. Microsoft Corp., Tokyo High Court, Hei 14 (gyo-ke) 393
# Asse v. Microsoft Corp., Tokyo High Court, Hei 13 (gyo-ke) 392
# Asse v. Microsoft, Tokyo High Court, Hei 12 (ne) 4200
# Asse v. Microsoft, Tokyo District Court, Hei 11 (wa) 1346
These cases are the first cases which have reached decision in Japan regarding the enforcement of Computer Software related invention. The dispute between the parties was first initiated by patent infringement lawsuit brought by Asse, the owner of three patents, against Microsoft. Masahiro Nanjo involved in assisting Microsoft to argue for non-infringement and brought an invalidation action against patents. As to the infringement, the Tokyo District Court found non-infringement of all three patents of Asse, and the Tokyo High Court supported this judgment. As to the validity of these three patents, The Tokyo High Court found that two of them are invalid. The appeal was filed but rejected. Thus, the client achieved full victory.

# Nichia Corporation v. Sumitomo Corporation, the Tokyo High Court, Hei 14 (ne) 668
# Nichia Corporation v. Sumitomo Corporation, the Tokyo District Court, Hei 11 (wa) 28963
# Nichia Corporation v. Sumitomo Corporation, the Tokyo High Court, Hei 13 (ne) 3047
# Nichia Corporation v. Sumitomo Corporation, the Tokyo District Court, Hei 12 (yo) 22054
# Nichia Corporation v. Sumitomo Corporation, the Tokyo District Court, Hei 12 (wa) 7193
# Nichia Corporation v. Sumitomo Corporation, the Tokyo District Court, Hei 11 (yo) 22170
# Rohm Corporation v. Nichia Corporation, the Tokyo District Court, Hei 13 (wa) 14321
These are the cases in which Nichia, the world’s top blue LED manufacturer, sought an injunction against Sumitomo Corporation, based on the two patents of blue LED invented by Shuji Nakamura, which were believed as unbreakable patents at that time. Masahiro Nanjo involved in assisting Cree Inc., which sold accused products to Sumitomo Corporation, to argue for non-infringement. The Tokyo District Court found non-infringement of both patens. Thus, the client achieved full victory.

# Casio Computer Co. v. SOTEC Co., Tokyo District Court, Hei 13 (wa) 15719
This is the case in which Casio asserted infringement of its patent by Operating System installed in computors sold by SOTEC. Masahiro Nanjo involved in assisting SOTEC to argue for invalidity of the patent. The Tokyo District Court found validity of the patent. Thus, the client achieved full victory.