THE TRANSNATIONAL IMPACT OF U. S. PATENT LAW:
HOW U.S. PATENT LAWS AFFECT COMPANIES IN JAPAN
AND OTHER CURRENT ISSUES IN U.S. AND JAPANESE IP LAW
Keynote Address by Professor Donald S. Chisum
June 4, 2004
ウェスティン大阪 花梨の間 4階
The Westin Osaka, Karin Room 4F
June 7, 2004
東京會舘 ローズルーム ９階
Tokyo Kaikan, Rose Room 9F
June 9, 2004
The Grand Hyatt
June 11, 2004
Kerry Centre Hotel Beijing
Dear Clients and Friends:
We are pleased to invite you to an afternoon seminar sponsored by our firm on Friday, June 4 in Osaka, and Monday, June 7 in Tokyo. The seminar will focus on current issues under U.S. and Japanese law affecting many companies' most important asset: their intellectual property. At this year’s patent seminar, “The Transnational Impact of U.S. Patent Law: How U.S. Patent Laws Affect Companies in Japan, and Other Current Issues in U.S. and Japanese IP Law," lawyers from throughout the firm will address topics that will assist a company in maximizing the value of their intellectual property assets and in avoiding potential patent disputes.
The keynote speaker at the seminar will be Professor Donald Chisum, Of Counsel to Morrison & Foerster, and Professor of Law at Santa Clara University in Santa Clara, California. Professor Chisum is known to many of you as the author of the authoritative treatise on U.S. patent law, Chisum on Patents. He will speak on how the United States patent law can affect company operations outside U.S. borders. Professor Chisum will also discuss recent major developments in U.S. patent law, including recent Federal Circuit cases, that relate to this topic.
While it is essential for a company to understand core patent law issues like patent invalidity, claim construction and infringement, to maximize the value of its investment in intellectual property the company must also have a thorough understanding of strategic issues that come into play in developing and strengthening its patent portfolio and in taking licenses under the portfolios of others. Our patent seminar will emphasize practical advice relating to maximizing the value of a patent portfolio and to protecting intellectual property in the context of business alliances, strategic partnerships, and litigation. Finally, we will turn to the Japanese legal scene and discuss the recent cases determining what constitutes "reasonable compensation" for inventors in Japan and the proposed amendment to the patent law.
There is no charge to attend the seminar and simultaneous translation between English and Japanese will be provided. A question and answer session will follow the speeches, and there will be a reception following the seminar. To make a reservation to attend the seminar, please send us an e-mail by May 31 at email@example.com. If you believe that someone else in your company might wish to attend the seminar, please pass this invitation along to that person. Space is limited, so please reserve your space early.
We look forward to seeing you at the seminar next month.
Morrison & Foerster LLP/Ito & Mitomi (Registered Associated Offices)
拝啓 初夏の候 益々ご清祥のこととお慶び申し上げます。平素は格別のご高配を賜り、厚く御礼申し上げます。
基調講演は、当事務所のオブ・カウンセルでもあるサンタクララ大学（カリフォルニア州サンタクララ）法学教授のドナルド・チザム氏が行ないます。チザム教授は米国特許法の第一人者であり、米国特許法の権威ある体系書「Chisum on Patents」の著者としてご存知の方も多いことと思います。米国特許法が米国外の企業活動に与える影響について、最近の米国特許法に関する動向を、連邦巡回区裁判所の最近の判決を含めて解説いたします。
We place strict control on the use of your personal information. We will only use such personal information internally (including our overseas offices) and we will not disclose such personal information to third parties unless we obtain your prior consent or we are required to do so under exceptional circumstances, such as in accordance with applicable law.
< Program プログラム >
June 4, 2004, Osaka/2004年6月4日 大阪
June 7, 2004, Tokyo/2004年6月7日 東京
1:30 - 1:40 p.m.
Welcome and Introduction
Alan Cope Johnston, Partner, Morrison & Foerster (Tokyo)
アラン・コープ・ジョンストン 東京オフィス パートナー
1:40 - 2:40 p.m.
Transnational Impact of United States Patent Law: How the U. S. Patent Laws Affect You Even If you Are Minding Your Own Business in Japan!
Professor Donald S. Chisum, Morrison & Foerster (Palo Alto)
2:40 - 3:25 p.m.
How To Get Your Money's Worth Out of Your IP Portfolio
Brett Alten , Morrison & Foerster (Tokyo)
ブレット・アルテン 東京オフィス アソシエート
3:25 - 3:40 p.m. Break 休憩
3:40 - 4:25 p.m.
Don't Leave Your Partners Out in the Cold: Thinking Seriously about Third Parties in Patent Licensing Negotiations
Paul E. Jahn, Morrison & Foerster (San Francisco)
ポール E. ヤーン サンフランシスコ・オフィス パートナー
4:25 - 5:10 p.m.
Joint Defense Agreements in Patent Cases: Key Issues and Traps for the Unwary
Peter Stern, Morrison & Foerster (Tokyo)
ピーター・スターン 東京オフィス パートナー
5:10 - 5:40 p.m.
Japanese Inventors Are Cashing In! What's Happening and What Can Be Done About It
Ryugo Yoshimura, Ito & Mitomi (Tokyo)
吉村 龍吾 東京オフィス（伊藤 見富法律事務所） パートナー
5:40 - 5:55 p.m. Questions & Answers 質疑応答
5:55 - 7:30 p.m. Reception レセプション
Morrison & Foerster LLP (provider # 2183) certifies that this activity has been approved for MCLE credit by the State Bar of California in the amount of 3.75 hours.
Morrison and Foerster LLP has been certified by the New York State Continuing Legal Education Board as an Accredited Provider of continuing legal education in the State of New York [8/20/2001 - 8/19/2004].
This continuing legal education program has been approved in accordance with the requirements of the Continuing Legal Education Board for a maximum of 4.5 credit hours, of which 4.5 credit hours can be applied toward the Areas of Professional Practice requirement.
- Speakers -
Alan Cope Johnston, Partner, Tokyo
Mr. Johnston is the head of the firm's Asia Litigation and Dispute Resolution Group. His litigation practice focuses on complex disputes involving patents, trade secrets, and technology licenses. He has litigated technology disputes for companies in the computer, medical device, semiconductor processing, semiconductor equipment manufacturing, laser, software development, and biotechnology industries. He also regularly lectures and writes about U.S. IP litigation and alternative dispute resolution procedures. Before joining the Tokyo office, Mr. Johnston was one of the founders of the firm's Palo Alto, California office and was recognized as one of the top litigators in Silicon Valley. Mr. Johnston graduated with a B.A. cum laude from Yale University in 1968 and with a J.D. cum laude from Harvard Law School in 1975. He is a Gaikokuho Jimu Bengoshi in Japan and a member of Dai-ni Tokyo Bar Association.
Donald S. Chisum, Of Counsel, Palo Alto
Professor Chisum is Of Counsel to Morrison & Foerster and Professor of Law at Santa Clara University in Santa Clara, California. In 2001, Professor Chisum was appointed the Inez Mabie of Law at Santa Clara University. He received his A.B. degree in 1966 and his law degree in 1968, both from Stanford University. He was Professor of Law at the University of Washington from 1969 to 1996. Professor Chisum is a leading authority in the increasingly important area of patent law and intellectual property rights in technology. He is the author of the nineteen-volume reference text on patent law, Chisum on Patents, published by Matthew Bender, a part of Lexis Publishing. In 1989, he received the Jefferson Medal Award from the New Jersey Patent Law Association, for outstanding contribution to the constitutional goals of the patent and copyright systems.
Brett Alten, Associate, Tokyo
Brett Alten is an associate in the Litigation Department. His practice has focused on intellectual property prosecution and counseling, including particularly patent portfolio creation, strategy, and management. Also Dr. Alten has experience in a variety of technologies, including optical, electrical, and medical devices, semiconductor processing, software design, telecommunication hardware and software, and various display technologies (including LCDs). Dr. Alten received his B.A. degree in physics from Clark University, cum laude, and Phi Beta Kappa, in 1985 and his M.A. in 1989 and his Ph.D. in 1994, both in physics, from The Johns Hopkins University. He received his J.D. from the Fordham University School of Law in 1998. Dr. Alten is admitted to practice at the state and federal levels in New York, admitted to practice in Washington, D.C., and is registered to practice before the U.S. Patent and Trademark Office.
Paul E. Jahn, Partner, San Francisco
Paul E. Jahn is a partner in the San Francisco office of Morrison & Foerster LLP and co-chair of the firm’s Technology Transactions Group. His practice is focused on counseling high technology companies with respect to intellectual property matters, particularly with respect to the development, licensing, acquisition, and sale of intellectual property and technology; strategic alliances and joint ventures; distribution arrangements; the outsourcing of information technology operations; branding agreements; and the settlement of related disputes. Mr. Jahn has also represented clients in trial and appellate litigation, focusing on cases involving unfair competition, copyright, trademark, trade secret, and licensing disputes. Additionally, he has represented clients in efforts to shape intellectual property law through legislative advocacy. Presently based in the firm's San Francisco office, he has previously been resident in the firm's Tokyo and Brussels offices. Mr. Jahn was a clerk to the Honorable Claudia Wilken of the United States District Court for the Northern District of California. He received his law degree from Hastings College of the Law in San Francisco, California, in 1993. Mr. Jahn received his A.B. in Rhetoric from the University of California at Berkeley in 1986.
Peter Stern, Partner, Tokyo
Peter J. Stern is a partner in the Tokyo office of Morrison & Foerster. Mr. Stern has a general litigation practice with an emphasis on intellectual property litigation and counseling, particularly in the areas of patent and copyright. Mr. Stern received his B.A., Phi Beta Kappa and summa cum laude, from Amherst College in 1985, and his M.A. in history from the University of California, Berkeley, in 1988. He received his J.D. from the University of California, Berkeley, Boalt Hall School of Law, in 1992. Following graduation, he served as law clerk to Judge John T. Noonan, Jr. of the United States Court of Appeals for the Ninth Circuit in San Francisco. In 1992-93 he studied at the Inter-University Center for Japanese Language Studies in Yokohama.
Ryugo Yoshimura, Partner, Tokyo
Ryugo Yoshimura is a partner of Ito & Mitomi. Mr. Yoshimura has experience in a broad range of business transactions, particularly in the fields of M&A, private equity, restructuring and acquisition-related financing. Mr. Yoshimura also advises Japanese and foreign corporations in high-tech, life science and internet sectors on IPO, intellectual property and venture capital transactions. Mr. Yoshimura received his LL.B. from Tokyo University in 1988, graduated from the Legal Research and Training Institute of the Supreme Court of Japan in 1990 and received his LL.M. from Harvard Law School in 1994. Prior to joining Ito & Mitomi, Mr. Yoshimura was a partner at Anderson Mori. Mr. Yoshimura is a Bengoshi admitted to practice in Japan.
東京会場 平成16年6月7日 東京會舘 ローズルーム（9階）
Tokyo June 7, 2004 Tokyo Kaikan, Rose Room (9F)
ＪＲ： JR東京駅 丸の内南口より徒歩10分
地下鉄： 営団千代田線 二重橋前駅
Tokyo Kaikan, Rose Room (9F)
3-2-1 Marunouchi, Chiyoda-ku, Tokyo 100-0005
From JR Tokyo Station:
take the Marunouchi South Exit
Subways: Chiyoda Line - Nijubashimae or Hibiya Station
Mita Line - Hibiya Station
Yurakucho Line - Yurakucho Station
Exit B4 is the most convenient exit for all subways.
大阪会場 平成16年6月4日 ウェスティンホテル大阪 花梨の間（４階）
Osaka June 4, 2004 Westin Hotel Osaka, Karin Room (4F)
Westin Hotel Osaka, Karin (4F)
1-1-20 Oyodo-naka, Kita-ku, Osaka 531-0076 JAPAN
9 minutes from the North Central Exit of JR Osaka Station.
9 minutes from the Chayamachi-guchi Exit of Hankyu Umeda Station.
9 minutes from #5 Exit of Midousuji Subway Umeda Station
15 minutes from Shin-Osaka Station
25 minutes from Itami Airport
10 minutes from the Fukushima Ramp of Hanshin Highway
5 minutes from the Umeda Ramp of Hanshin Highway 11
3 minutes from the akasu Crossing of Route 176