PROFESSIONAL SUMMARY

Mr. Okada has represented mainly domestic clients in patent applications, oppositions, invalidation procedures, appeal proceedings to reverse a final JPO decision, invalidation opinions, and infringement opinions. He is well-versed in the fields of software, electrical, and mechanical technologies, and has specialized knowledge and experience in cases related to IoT technologies. As a patent attorney belonging to the Japan Patent Attorneys Association, he has lectured on legal amendments for patent attorneys and served as a manager of a team for law case studies. He also has participated in the Trial and Appeal Practitioner Study Group organized by the JPO, which conducts research on appeal decisions and judgments. Currently, he is also an adjunct professor at a Japanese national university.

REPRESENTATIVE LEGAL SKILLS

• Technology Areas
  Mechanical
  Nano technology
  Electric (circuits, semiconductors, communication, power transmission)
  Software (IoT, control)
  Control
  Consumer electronics
  Computers (hardware)
• Typical legal skills
  ・TInvolvement in examination and litigation at all stages of Japanese patent applications, including post-grant prosecution, interview, appeal against decision of rejection, opposition, invalidation trial, and appeal proceedings to reverse a final JPO decision.
  ・Preparation of opinions on patentability and non-infringement.
  ・Lecturing at seminars on Japanese patent laws and examination standards

PROJECT/PROCESS MANAGEMENT SKILLS

• Developed and implemented an internal system to streamline the workflow of the firm, including a software solution for practitioners to go paperless.
• As a team leader consisting of attorneys and patent attorneys outside the firm, compiled infringement arguments and tips for specifications based on court decisions.

SEMINARS

- Japan Patent Attorneys Association Member Training Course "Briefing Session on Patent Law Amendments in 2008 (Nagoya)" (2019)
- FY2017 Japan Patent Committee Open Forum: "Tips for Specifications in Light of Recent Court Decisions; In Terms of Patent Requirements and Sufficiency Theory" (2018)
- Patent Committee Outcome Report Seminar (Hokkaido Branch) "Trends in court decisions and comparison with JPO examination standards, etc. (2017)
- FY2016 Japan Patent Committee Open Forum "Trends in Judgments and Comparison with JPO Examination Standards, etc." (in charge of new matters) (2017)
- The 4th Training Festival in Nagoya "Overview of Remedies under the 2014 Amendment Act and Practical Considerations in Patent Opposition". (2015)
- Japan Patent Attorneys Association Member Training Course "Briefing Session on 2015 Patent Law Amendments" in Nagoya (2015)
- Japan Patent Attorneys Association Member Training Course "Briefing Session on 2014 Patent Law Amendments" in Nagoya (2014)

PUBLICATIONS

- Trends and Considerations in Sufficiency Theory Learned from Reversed Judgements (JPAA Monthly Magazine “Patent (2020)" Vol.73, No. 5)
- Tips for Specifications in Light of Recent Court Decisions; In Terms of Patent Requirements and Sufficiency Theory (JPAA Monthly Magazine "Patent (2019)" Vol.72, No. 2)
- Comparative Study Between Trends in Inventive Step and Description Requirements from the Ruling on Appeal Proceedings to Reverse a Final JPO Decision, and Trends and Revised Examination Guidelines -Inventive Step 1 and 2 Categories (JPAA Monthly Magazine "Patent (2017)" Vol. 70, No. 1)
- Legal Amendments to the Employee Invention System that Patent Attorneys Should Understand (JPAA Monthly Magazine "Patent (2016)" Vol. 69, No. 6)
- Outline of Remedies under the 2014 Amendment Act and Practical Considerations for Patent Opposition (JPAA Monthly Magazine "Patent (2015)" Vol. 68, No. 7)

Case Study:
- Intellectual Property High Court, Second Division, Judgment handed down on September 10, 2012
Case No. 10315 (Gyo-Ke) 2011, Request for Revocation of JPO Decision (Jan. 28, 2013)

Essay:
- "Possibility of Sub-combination Inventions" – ONDA TECHNO "Patent Media" (September 1, 2019)
- "Easy + Easy = Non-easy? " – ONDA TECHNO "Patent Media" (May 1, 2018)
- "Seeking for Ways to Use Patent Applications by Insisting Referring to An Earlier Patent Application" – ONDA TECHNO "Patent Media" (Jan. 1, 2016)


EMPLOYMENT HISTORY

ONDA TECHNO Intl. Patent Attys.       Gifu City, Japan
   Partner            2021-Present
   Japanese patent attorney       2011-Present

Gifu University      Gifu City, Japan
   Adjunct professor       2017-Present

AIGI Intellectual Property Law Firm      Nagoya, Japan
   Japanese patent attorney      2009-2011
   Patent engineer      2008-2009

SHARP CORPORATION      Nara, Japan
   Basic research      2006-2007


EDUCATION

Nagoya University (M.S./B.S. Department of Crystalline Materials Science) Nagoya, Japan
Research on crystal growth of semiconductors 2000-2006


ADMISSIONS & MEMBERSHIPS

- Admitted to the Japan Patent Attorneys Association in 2009.
- Member of UR-10 Committee of the Japan Patent Attorneys Association in 2011.
- Member of Patent Committee of the Japan Patent Attorneys Association (2014-2018).
- Vice Chairman of Patent Committee of the Japan Patent Attorneys Association (2017-2018).
- Review member of the JPO’s Study Group for Appeal Practitioners (2017-2018).

INTERESTS

Aikido, Walking