Masaki Ito | ONDA TECHNO Intl. Patent Attys.[Japan Patent Firm] | Gifu City

Masaki Ito | ONDA TECHNO Intl. Patent Attys.[Japan Patent Firm] | Gifu City

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Masaki Ito

  • Gifu
  • General Director JP Patent Attorney IP Infringement/Litigation Available
PROFESSIONAL SUMMARY
Mr. Ito has extensive experience in intellectual property affairs including domestic and foreign patent prosecution, portfolio strategy, search, licensing, litigation, strategic IP planning, corporate IP management, and human resource development. He is well-versed in the fields of electrical, mechanical, and software. He has previous experience as the IP General Manager of Toyota Industries Corporation, a major Japanese international mechanical and automotive manufacturer, and held the position of President at the Japan Intellectual Property Association. Additionally, he gained experience as an IP Manager and Patent Agent at a New York-based law firm.

REPRESENTATIVE LEGAL SKILLS
  • Exemplary Technology Areas
    • Electrical: Electrical circuits (Analog and Digital), Electrical equipment, Power management, Electrical motors, Batteries, Semiconductors (power devices, integrated circuits, and manufacturing processes), Fuel cells, Communications, Control.
    • Mechanical: Automotive, Powertrain, Hybrid systems, Internal combustion engine, General machinery (Precision, Industrial, and Textile), Mechatronics.
    • Computer: Hardware, Software.
  • Client counseling on extensive intellectual property matters, especially structuring domestic and international IP portfolios, IP strategy, and management in view of business strategy.
  • Researching and drafting patentability and non-infringement opinions.
  • Drafting, preparing, and filing patent specifications and applications.
  • Engaging in all stages of prosecution and litigation, including appeals against decisions of rejection, opposition, invalidation trials, and appeal proceedings to reverse a final JPO decision, as well as filing and preparation procedures for infringement cases in civil cases.
  • Engaging in negotiation and drafting contracts for licensing, joint development, non-disclosure, sale, and purchase.
  • Lecturing at seminars on Japanese patent laws and cases, IP practices, and management.

PROJECT/PROCESS MANAGEMENT SKILLS
  • Worked with the Business and R&D departments to identify their core technology and planned and managed the establishment of a robust patent portfolio to protect the technology and solidify the company's position in the market.
  • Collaborated with counterparts from foreign groups and affiliate companies to implement a global IP communication and management system.
  • Established an internal information analyst group to conduct thorough searches and analyses of patents and other documents related to target technologies and business development.
  • Strategically planned and managed multinational patent disputes and litigation cases as an IP Manager, aiming to maximize prospective remedies while minimizing litigation and negotiation costs.
  • Conducted numerous seminars on Patent systems and practices for junior IP members and engineers to guide their work.

SEMINARS
  • "Practical Method for Intellectual and Intangible Asset Governance Given Revised Japanese Corporate Governance Code" Keynote Lecture at the Nagoya Legal and Intellectual Property Exhibition (Feb. 2023)
  • "Foreign Patent Application Strategy, Terms of Judgement for Filing or Not, and Selecting the Filing Country" Seminar at the Technical Information Institute (2023)
  • "Powering the Future: Robust Patent Strategies Amid Challenges" Business of IP Asia Forum Plenary Session in Hong Kong (2022)
  • "How to Design and Proceed with the Strategy of Intellectual Property Given ESG and SDGs" Seminar at the Technical Information Institute (2022)
  • "Patent Inventory Valuation and Prosecution Strategy" Seminar at the Technical Information Institute (2021)
  • "Recent Patent Development in Japan" Forum at the Taiwan Innotech Expo (2018)
  • "Origin Corporation and Intellectual Property for Supporting the Local Region" Commemorative Lecture for the Founding of the Tokai Region Branch of the Japan Patent Attorney Association (2018)
  • "Most Excellent Intellectual Property Strategy" Symposium of the Japan Intellectual Property Arbitration Center (2017)

PUBLICATIONS
  • "Method of Selecting Foreign Countries for Patent Filing at Toyota Industries Corporation" - The Technical Information Institute (2022)
  • "Evaluation of Intellectual Property Values and Judgement for Patent Filing or Keeping Trade Secret at Toyota Industries Corporation" - The Technical Information Institute (2021)

EMPLOYMENT HISTORY

ONDA TECHNO Intl. Patent Attys.  Gifu, Japan
 General director/ Japanese patent attorney  2023-Present
Toyota Industries Corporation   Aichi, Japan
 General Manager of Intellectual Department   2016-2023
 General Manager of Patent Promotion Office   2011-2015
 Division President of IP Affiliated Company  2008-2010
 Representative of New York Office (c/o Morgan & Finnegan LLP)  2000-2002
 Manager of Intellectual Department Dept.  2000-2007

EDUCATION
Ritsumeikan University (B.S. of Electrical Engineering)  Kyoto, Japan
1982-1986

ADMISSIONS & MEMBERSHIPS
  • Admitted to the Japan Patent Attorneys Association in 2003.
  • Admitted patent practice before the U.S. Patent and Trademark Office (Limited Recognition: 2001-2003)
  • Japan Intellectual Property Association (JIPA) (2019-present)
    • Counselor (2023-present)
    • President (2022-2023)
    • Vice- President (2019-2022)
    • Director (2018-2019)
    • Vice-Chair of the International Committee (2006-2007)
  • Ministry of Economy, Trade, and Industry
    • Member of the Intellectual Property Committee of the Industrial Structure Council
    • Patent Attorney System Sub-Committee (2020-Present)
    • Patent System Subcommittee (2022- Present)
  • Japan Patent Office
    • Member of the Policy Propulsion Council (2022-Present)
    • Member of the Study Group for the Industrial Property Issues (2019)
  • Japan Business Federation (Keidanren)
    • Member of Committee on Intellectual Property (2022-2023)
  • Japan Textile Machinery Association
    • Chare of Committee on Intellectual Property (2015)
  • Japan Auto Parts Industries Association
    • Member of Intellectual Property Rights Subcommittee(2016-2023)
  • Graduate School of Law, Meijo University
    • Member of Study Group for Intellectual Property Laws (2015-2019)

INTERESTS
Golf, Jogging, Painting