Makoto Onda
- Gifu Tokyo
- President, Managing Partner JP Patent Attorney IP Infringement/Litigation Available
PROFESSIONAL SUMMARY
Makoto’s experience includes the preparation and prosecution of electrical and mechanical patent applications. Representative technical matters he has handled include semiconductor, image processing and software-related inventions. He holds an IP Litigation Qualification.
REPRESENTATIVE LEGAL SKILLS
Representing domestic and foreign clients in patent, trademark and design prosecution and litigation.
PROJECT/PROCESS MANAGEMENT SKILLS
PUBLICATIONS
ONDA TECHNO Intl. Patent Attys. Gifu City, Japan
President, Managing Partner 2003-Present
Vice president 2001-2003
Japanese patent attorney 1994-Present
Makoto Onda & Associates Tokyo, Japan
President/Japanese patent attorney 1999-2001
EDUCATION
Chuo University (L.B. Law) Tokyo, Japan 1988-1992
University of Central Florida (B.S. Electrical Engineering) Florida, U.S.A. 2000-2006
ADMISSIONS & MEMBERSHIPS
Playing base guitar/double bass in various bands, running marathons
Makoto’s experience includes the preparation and prosecution of electrical and mechanical patent applications. Representative technical matters he has handled include semiconductor, image processing and software-related inventions. He holds an IP Litigation Qualification.
REPRESENTATIVE LEGAL SKILLS
Representing domestic and foreign clients in patent, trademark and design prosecution and litigation.
PROJECT/PROCESS MANAGEMENT SKILLS
- Managing ONDA TECHNO, solving issues, recommending solutions to staff, and advising on the development of effective procedures between clients and the JPO or foreign agents
- Established/managed the Shanghai office and the Taiwan office
- Conducted numerous seminars for foreign and domestic clients/agents
- Visiting foreign and domestic clients and agents
- Supervising and advising the Quality Control activities in the company
- Contract drafting that has led to successful agreements
- "Intellectual Property and its Importance" - a vocational/academic experience program (social/international) at the Academic Seminar on Intellectual Property, hosted by Gifu High School (2016)
- "Current Status of Intellectual Property in ASEAN Countries and Status and Direction of ASEAN Unified Intellectual Property" Japan Intellectual Property Association, Kansai Electric Equipment and Metal Machinery Joint Committee, Organized by Japan Intellectual Property Association (Nov. 2015)
- "Strategic Use of Design Rights" Japan Intellectual Property Association, Tokai B Elementary Course, Organized by Japan Intellectual Property Association (Oct.-Nov., 2015)
- "Strategic utilization of design rights / Acquisition and management of trademark rights" Japan Intellectual Property Association Training Course B: Elementary Course, Organized by Japan Intellectual Property Association (Oct. 2014)
- "Struggles of QC Activities in the Office, Sales, and Service Industries: Thoughts after 30 Years of Introduction" special lecture organized by Gifu Employers' Association (Jul. 2014)
- "Focusing on Indonesia, Thailand, Singapore and Malaysia" ASEAN Patent Seminar hosted by ONDA TECHNO (Jul. 2014)
- "Aggressive Trademark Management to Maximize the Value of Your Assets" hosted by ONDA TECHNO (Jun. 2014)
- "A Comparative Study of Patent Examination Standards in China, Europe, Japan & Korea" Panel Discussion Speaker at Annual Intellectual Property Law Conference, Washington, DC, USA organized by American Bar Association (ABA) (Apr. 2014)
- "Patent Specification Drafting Know-How - Specification Drafting Method for Protecting the Targeted Rights in the Targeted Form without Leaks” organized by the Construction Division of the Japan Intellectual Property Association (Dec. 2013)
- "Strategic utilization of design rights / Acquisition and management of trademark rights" Japan Intellectual Property Association Training Course B: Elementary Course (Organizer: Japan Intellectual Property Association) (Oct. 2013)
- "Recommendation of the TOP-DOWN Style of Specification Writing" hosted by ONDA TECHNO (Sep. 2013)
- "Appropriate Use and Management of Registered Trademarks in Other Countries” Basic Seminar on Foreign Trademarks hosted by ONDA TECHNO (Nov. 2012)
- "Strategic Utilization of Design Rights / Acquisition and Management of Trademark Rights" Japan Intellectual Property Association Training Course B: Elementary Course organized by Japan Intellectual Property Association (Oct. 2012)
- "Recommendations for TOP-DOWN style specification drafting" hosted by ONDA TECHNO (Sep. 2012)
- "Use of PCT Applications for BRICs Patents" hosted by ONDA TECHNO (Jun. and Jul. 2012)
- "A Higher-ranked 'Trademark Management' Technique for Participating in Management" Trademark Management Seminar hosted by ONDA TECHNO (Jun. 2012)
- "Strategic Use of Design Rights / Acquisition and Management of Trademark Rights" Japan Intellectual Property Association Training Course B, Elementary Course, hosted by the Japan Intellectual Property Association (Oct. 2011)
- Basic Seminar on Foreign Trademarks, hosted by ONDA TECHNO (Oct. 2011)
- PCT Application Seminar -from Elementary to Advanced Level, hosted by ONDA TECHNO (Jul. 2011)
- "Basics of Trademarks (Domestic) That Are Immediately Useful" hosted by ONDA TECHNO (Jun. 2011)
- "Plant Breeders Laws and Trademark Laws in Agricultural Management – Case Studies and Strategies" Training Seminar for Ornamental plants Breeders hosted by Kochi Prefecture (Nov. 2010)
- "Let's Obtain Design Rights Overseas" Foreign Design Seminar hosted by ONDA TECHNO (Nov. 2010)
- "Strategic Use of Design Rights / Acquisition and Management of Trademark Rights" Japan Intellectual Property Association Training B Elementary Course hosted by the Japan Intellectual Property Association (Oct. 2010)
- "Trademark Strategies and Countermeasures against Counterfeit Goods in Overseas Exports of Food, Agriculture, Forestry and Fisheries Products" JAFBIC Kansai-Kanto Joint Trademark Committee Meeting hosted by JAFBIC (Oct., 2010)
- "Intellectual Property Strategies for Exporting Agricultural, Forestry and Fishery Products and Protecting Brands from Illegal Trademark Registration and Counterfeit Goods," Intellectual Property Training Course, Research Institute of Agriculture, Forestry and Fisheries organized by the Agriculture, Forestry and Fisheries Research Institute (Oct., 2010)
- "Intellectual Property Activities and Intellectual Property Strategies Conducive to Management" Seminar on How to Create Patentable Inventions and Build a Patent Portfolio hosted by ONDA TECHNO (Sep. 2010)
- "Japan's Agricultural and Fishery Brands Are At Risk! -Intellectual Property Strategies for Protecting Brands from Illegal Registration and Counterfeit Goods Overseas" Seminar on Countermeasures against Counterfeit Goods in Overseas (East Asia) organized by Hokkaido, IP Protection Consortium of the Ministry of Agriculture, Forestry and Fisheries, and Hokkaido Intellectual Property Strategy Headquarters (Sep. 2010)
- "Improving the Efficiency of IP Operations and Management" IP Seminar hosted by ONDA TECHNO (Jun. 2010)
- "Basic Knowledge of Trademarks for Immediate Use (Domestic)" IP Seminar hosted by ONDA TECHNO (Jun. 2010)
- "Patentable Subject Matter in Japan" Whistler Intellectual Property Conference in Hokkaido (Mar. 2010)
- "Japan's Agricultural Brands are in Danger! - IP Strategies for Protecting Brands from Illegal Registration and Counterfeit Goods Abroad" A keynote speech at the Agricultural Cooperation Forum in Nagoya, hosted by Tokai Agricultural Administration Bureau and Chubu Bureau of Economy, Trade and Industry (Feb. 2010)
- "On Variety Registration and Trademark Registration" Intellectual Property Training Seminar in the Agricultural Field, organized by Nagano Prefectural Agricultural Experiment Station, Agricultural, Forestry and Fisheries Intellectual Property Protection Consortium (Feb. 2010)
- "Regional Brand Strategies and Intellectual Property Rights" Workshop on Regional Brand Strategy and Intellectual Property Rights, hosted by the Agricultural Development and Extension Center in Hokkaido (Nov. 2009)
- "Importance of and Measures for Trademark Registration, etc., in Overseas Exports: Learning from the Example of China and Measures in Neighboring Asian Countries" Seminar on Export Promotion of Agriculture, Forestry and Fisheries Products in the Hokuriku Region, organized by Hokuriku Agricultural Administration Bureau, The Ministry of Agriculture, Forestry and Fisheries, Fukui Prefecture (Oct. 2009)
- "Intellectual Property Strategies for Advancing Your Business to the Next Level and Becoming a Winner" SAM (Society for the Modernization of Management in Japan) monthly meeting in Nagoya (Aug. 2009)
- "The Current Status of Trademark Registration and Procedures in China" China Trademark Registration Seminar organized by Kagoshima Prefecture, Kagoshima Specialty Products Association, and Kagoshima Trade Association (Aug. 2009)
- "Seminar on How to Create Patentable Inventions and Build Barriers to Entry" hosted by ONDA TECHNO (Jul. 2009)
- "Seminar on Introduction to Trademarks (Domestic)" hosted by ONDA TECHNO (Jun. 2009)
- Panel Discussion Speaker: "Prosecuting for Enforcement Success in Europe, China, Japan and Australia" American Bar Association (ABA) Annual Intellectual Property Law Conference, Washington DC, USA (Apr. 2009)
- "Protection of Plant Breeder's Rights and Trademark Rights" at the Yamanashi Prefecture Flower and Horticulture Research Conference, hosted by Yamanashi Prefecture, Yamanashi Flower and Horticulture Association, and the Japanese Patent Office (Mar. 2009)
- "On the utilization of intellectual property rights and regional brand strategies" Workshop on Utilization of Intellectual Property Rights, hosted by the Shizuoka Prefecture Flower and Plant Breeding Association (Jan. 2009)
- Trademark seminar (OA responses) hosted by ONDA TECHNO (Nov. 2008)
- "Technology Strategies for Successful New Business Development" Strategies and practices for new business development to create a new growth curve for managers, development managers, IP managers and IP staff hosted by ONDA TECHNO (Oct. 2008)
- "How to Create Patentable Inventions for the IP Department and IP Staff" hosted by ONDA TECHNO (Jul. 2008)
- "IP Strategy Planning Methods for Increasing Market Share" New Business Development Seminar hosted by Funai Consulting Incorporated (Mar. 2008)
- "Problems Related to Trademark Rights in China and Countermeasures" China Intellectual Property Rights Seminar, hosted by Japan External Trade Organization (JETRO) and Gifu Trade Information Center (Nov. 2007)
- "How to Utilize Technical and Patent Information Analysis for New Business Development" New Business Development Seminar where "Intellectual Property", "Development" and "Sales" are combined, hosted by Funai Consulting Incorporated. (Aug. 2007)
- "China's Trademark Strategy and the Latest Trends" 2nd Guangdong IPG in Guangzhou, China, hosted by JETRO Guangzhou (Dec. 2005)
- "Foreign Legal Systems and Countermeasures" Chuo University Intellectual Property Practice Seminar, hosted by Chuo University (Jul. 2004)
- "Patenting the Development of Systems" Patent Seminar hosted by the Research Organization for Biotechnology and Life Science (Apr. 2003)
- "Effective Use of Design Registration in Japan," at Whistler Intellectual Property Conference in Vancouver, Canada (Mar. 2003)
- "Protection and Management of Intellectual Property Rights of Japanese Companies" Japan Patent Seminar at Tsinghua University, China (Nov. 2002)
- "Introduction to WTO and TRIPs" at the 6th Basic Training Course on Intellectual Property Rights organized by JETRO Shanghai in Shanghai, China (Sep. 2002)
- "Current Status of Protection of Business Models and Software-Related Inventions in Japan" Japanese Patent Seminar in Shanghai, China hosted by ONDA TECHNO (Apr. 2002)
- "Problems with the Current Patent Law Concerning Protection of Software-Related Inventions" at a presentation of a Committee of the Japan Patent Attorneys Association, hosted by the Software Committee of the Japan Patent Attorneys Association (Mar. 2002)
- "Protection and Issues of Software, Business Method and E-commerce Related Inventions in Japan" Seminar at the Canadian Embassy in Tokyo (Nov. 2001)
- "Current Status of Protection of Business Models and Software-Related Inventions in Japan" Japanese Patent Seminar at Beijing University of Aeronautics and Astronautics, China (Nov. 2001)
- "The Protection of the Inventions Related to Computer Software in Japan" Seminar in Hanoi, Vietnam, organized by Japan Institute of Invention and Innovation (Nov. 2001)
- "The Latest Patent Issues" Seminar hosted by Optoelectronics Industry and Technology Development Association (Nov. 2001)
- "Business Method Patents in Japan and Revision of Examination Guidelines Relating to Software-related Inventions" Nanko Patent Attorneys Club Training Course Seminar in Taipei, Taiwan (Jun. 2001)
- "Business Method Patents in Japan and Revision of Examination Guidelines Relating to Software-related Inventions" Guest speech at the China National Intellectual Property Administration, as a member of the Software Committee of the Japan Patent Attorneys Association (Jun. 2001)
- "Current Status and Future Trends of Business Method Patents" Seminar hosted by Atsugi Area IT Business Exchange Plaza (Apr. 2001)
- "Business Method Patents in Japan and Revision of Examination Guidelines Relating to Software-related Inventions" Whistler Intellectual Property Conference Seminar in Vancouver, Canada (Mar. 2001)
- "Recent Trends in Business Method Patents and their Impacts on Management" Seminar hosted by Ricoh Techno Systems Co., Ltd. (Mar. 2001)
- "Business Method Patents in Japan and Revision of Examination Guidelines Relating to Software-related Inventions" Speaker at Mid-Winter Institute in Florida, U.S.A., hosted by American Intellectual Property Law Association (AIPLA), as a representative of the International Activities Committee of Japan Patent Attorneys Association (Feb. 2001)
- "Business Model Patent Strategies for Manufacturers" Seminar at/for E06B Patent Round-table Committee (Feb. 2001)
- "Strategies for Business Model Patents for Companies" Seminar hosted by the Japanese Regional Banks Association (Dec. 2000)
- "Tips for Business Method Patents" Seminar hosted by Nikkei Computer, Nikkei Business Publications, Inc. (Oct. 2000)
- "Current Status of Business Method Patents and the Corporate Responses" Seminar hosted by the Japan Planning Institute (Sep. 2000)
- "The duty of Disclosure and Semiconductor energy Laboratory Co. v. Samsung Electronics Co.” Seminar interpreter, lectured by Charles E. Bergere, hosted by Nanko Patent Attorneys Club (Aug. 2000)
- "Current Status and Future Trends of Business Model Patents" Seminar hosted by Marketing Research Association (Jul. 2000)
- "Current Status and Future Trends of Business Model Patents" Seminar hosted by Fujitsu Business Systems (Jul. 2000)
- "Current Status and Future Trend of Business Model Patents" Seminar hosted by New Technology Development Center (May 2000)
- "The Web and Business Model Patents" Seminar hosted by Bit Society (May 2000)
- "Practical Approaches to Business Model Patents" Nikkei Computer Seminar hosed by Nikkei Business Publications, Inc. (Apr. 2000)
- "Current Status and Future Trends of Business Model Patents" Seminar hosted by Makoto Onda & Associates and ONDA TECHNO (Mar. 2000)
- "Current Status and Future Trends of Business Model Patents" Seminar hosted by the Nanko Patent Attorneys Club (Oct. 1999)
- "General Information Concerning Filing Japanese Patent Applications from Foreign Countries" Speaker at the AUTM Annual Meeting in Texas, USA (Mar. 1998)
PUBLICATIONS
- “The Process of Design Searches in Japan and Points to Keep in Mind - Considering the Vertical and Horizontal Axes of Design Searches” Intellectual Property Management Vol. 69 No. 3, 2019 published by Japan Intellectual Property Association/co-author (2019)
- “Survey and Research Report on the Expression of Designs in Various Countries” (co-author, in charge of Turkey and South Africa) published by AIPPI, Japan (Mar. 2013)
- "Corporate Management and Practical Intellectual Property Strategy - What is Intellectual Property Strategy in the Global Age?” Japan Monthly Management Magazine "Progress Special Feature” published by Federation of Chubu Industries (Oct. 2011)
- "Collection of Case Studies on the Use of Trademarks and Regional Group Trademarks by Extension Organizations" (co-author, Report on the 2009 Ministry of Agriculture, Forestry and Fisheries Comprehensive Project for Fostering Intellectual Property Human Resources in the Field of Agriculture, Forestry and Fisheries) published by National Association for Agricultural Extension Support (Mar. 2010)
- "Corporate Management and Practical Intellectual Property Strategy - What is Intellectual Property Strategy in the Global Age?” Federation of Chubu Industries, Japanese Monthly Management Magazine "Progress”, Special Feature (Oct. 2011)
- "Intellectual Property Strategies for Advancing Your Business and Becoming a Winner” Federation of Chubu Industries, Japanese Monthly Management Magazine "Progress”, Special Feature (Sep. 2009)
- “Report on Patent, Design and Trademark Law in Singapore” (co-author) Asian Patent Attorneys Association, Japan Section, Asia Committee (May 2009)
- “Report on Patent, Design and Trademark Law in Australia” (co-author, in charge of designs) Asian Patent Attorneys Association, Japan Section, Asia Committee (May 2008)
- “Report on the Status of Administrative, Criminal and Civil Remedies for Design Right Infringement and their Operation in Various Countries” (co-author, in charge of Vietnam)
Japan Association for the Protection of International Intellectual Property (Mar. 2008) - “Report on Taiwanese Patent, Design and Trademark Law” (co-author, in charge of designs)
Asian Patent Attorneys Association, Japan Section, Asia Committee (May 2007) - “Research Report on the Actual Status of Design Protection by Utilization of Rights in Asian Countries” (co-author, in charge of Vietnam, India and Indonesia)
Japan Association for the Protection of International Intellectual Property (Mar. 2007) - “Report on Indian Patent, Design and Trademark Law” (co-author, in charge of designs)
Asian Patent Attorneys Association, Japan Section, Asia Committee (Jun. 2006) - Nikkei Software, October 2003, Special Feature: "Let's Know Copyrights and Patents in Software Development" (co-authored, Nikkei BP, Aug. 2003)
- Nikkei Software, "A 10-minute Story on Intellectual Property Rights” (Jan. - Sep. 2003)
- “Manufacturing and Craftmanship in Japan - 52 points in question” (co-author) Japan Institute of Plant Maintenance (Dec. 2002)
- Commentary on the 2002 Amendment to the Patent Law and Related Matters
Japan Patent Attorneys Association, “Patent” November 2002, Software Committee (co-author) - "Outline of the Revised Patent Law and Trademark Law: Software Itself Becomes a Patent" Nikkei Computer (Aug. 26, 2002 issue)
- "Easy to Understand -The Latest Business Model Patent Basics and Structure" (supervisor) Shuwa System (Oct. 2001)
- "What is a Business Model Patent? " Seishun Publishing Co., Ltd. (Apr. 2001)
- "Questionnaire Results on Computer Software and Business Method Related Inventions"
Japan Patent Attorneys Association, "Patent" International Activities Committee (co-author) (Apr. 2001) - "Examination standards for computer software-related inventions" BIT JAPAN Professionals Review (Mar. 2001)
- "A Look Back at the Year 2000 in Topics" BIT JAPAN Professionals Review (Feb. 2001)
- "A Correct Reading of "Comparative Study on Business Method Related Inventions" by the Trilateral Patent Office Experts' Meeting" BIT JAPAN Professionals Review (Jan./Feb. 2001)
- "Business Model Patent Boom from a Patent Firm's Point of View: Misunderstanding Caused by the Term 'Business Model Patent'" BIT JAPAN Professionals Review (first issue, Jan. 2001)
- "Patents and Laws that IT Professionals Should Know" Nikkei Computer (Jan. 15, 2001 - Mar. 25, 2002)
- "Business Model Patents: Basics and Practice" (co-author, in charge of case studies) Nikkei BP Consulting, Inc. (Apr. 2000)
- "Pitfalls of e-Business" Nikkei Computer (Aug. 14 - Dec. 18, 2000)
- "Reading Sumitomo Bank's Business Model Patents" Nikkei Computer (Apr. 24, 2000)
- "Current Status and Issues of Business Model Patents" Japan Patent Attorneys Association "Patent" co-author, The Software Committee (Feb. 2000)
ONDA TECHNO Intl. Patent Attys. Gifu City, Japan
President, Managing Partner 2003-Present
Vice president 2001-2003
Japanese patent attorney 1994-Present
Makoto Onda & Associates Tokyo, Japan
President/Japanese patent attorney 1999-2001
EDUCATION
Chuo University (L.B. Law) Tokyo, Japan 1988-1992
University of Central Florida (B.S. Electrical Engineering) Florida, U.S.A. 2000-2006
ADMISSIONS & MEMBERSHIPS
- Admitted to the Japan Patent Attorneys Association in 1994
- Obtained the Additional IP Litigation Qualification in 2006
- Member of AIPPI, APAA, INTA and LES
- Member of the board of the Japan branch of APAA (2005-2016)
- Vice-chairman for Committee of Computer Software (2001 and 2002)
- Director of IP International Activity Center (Director in 2005, 2006 and 2007)
- Member of Committee for IP matters in Ministry of Agriculture, Forestry and Fisheries of Japan for Japan Patent Attorneys Association (Vice-chairman in 2008 and 2009, Chairman in 2010)
- Committee member for investigating the circumstances for administrative, criminal and civil remedies for design right infringement in foreign countries for AIPPI JAPAN (2007)
Playing base guitar/double bass in various bands, running marathons