Kazuhiko YOSHIDA (Mr.)

Representative Partner
Section: Legal

Profile Summary

Kazuhiko Yoshida (Mr.), who goes by Kaz, is an attorney at law and patent attorney in the legal department and a representative/managing partner of Nakamura & Partners. He handles many of our major client cases in matters related to intellectual property litigation, opinion and negotiation, licensing, international transaction, sports and entertainment, and antitrust. After graduating both The University of Tokyo Faculty of Law and the Legal Training and Research Institute in Japan, he joined the firm, and after gaining six years’ experience, he studied at Harvard Law School obtaining his LL.M. degree and thereafter worked for Hughes Hubbard & Reed (New York) in the U.S. He has been a visiting professor at Tohoku University and has lectured on computer laws as an adjunct lecturer for The University of Tokyo School of Law. Mr. Yoshida has also written numerous articles in both Japanese and English regarding specific court judgements and their influence on current IP law and trending practices and procedures in Japan covering a wide range of IP issues. He is a member of various organizations such as AIPPI-JAPAN, The Law Association for Asia and the Pacific, and the Japan Association of Industrial Property Law. He was an Assistant to the Reporter General of AIPPI International from 2010 to 2014 and has been the chief editor of the AIPPI Journal (both the Japanese and English versions) published by AIPPI Japan.

Membership and Activities:

Daini Tokyo Bar Association (1990-)
 Auditor (2018-)
The Japan Federation of Bar Associations (1990-)
The Copyright Law Association of Japan (1992-)
Japan Patent Attorneys Association (1993-)
APAA
 Copyright Committee (1994-1996)
AIPPI·JAPAN
 Group for Case Study (1994-1996)
Group for Case Study of Transaction Law, NBL (1995-2004)
Japan Association of Industrial Property Law (2000-)
Temporary committee member of the Industrial Property Council in the Patent Office (2003-2006)
AIPPI·JAPAN
 Director (2005-2006)
 Editor (2009-2015)
 Chief Editor (2015-)
AIPPI
 Assistant Reporter General (2010-2014)
The Law Association for Asia and the Pacific, Japan Group
 Director (2012-) 

Main Articles:

(written in English)
"Trademark Transfer", IP Asia No.5 by Asia Law & Practiced Ltd. (1994)
"Configuration of Goods", Journal of the Japanese Group of AIPPI, Vol. 20 No.5 by The Japanese Group of AIPPI (1995)
"Protection of a Very Famous Mark", Journal of the Japanese Group of AIPPI, Vol. 21 No.3 by The Japanese Group of AIPPI (1995)
"Did 'Pepper Keibu' ("Detective Inspector Pepper") catch the 'Wanted' Man? Supreme Court Judgment That Recognized the Right of Publicity for the First Time under Japanese Law But Denied Infringement (Pink Lady Case)”, Journal of the Japanese Group of AIPPI, Vol. 37 No.5 by The Japanese Group of AIPPI (2012)
“The Judgment of the Grand Panel of the Intellectual Property High Court on the Effect of Extended Patent Right Terms for Medicines”, Journal of the Japanese Group of AIPPI, Vol.42 No.5 by The Japanese Group of AIPPI (2017)
(written in Japanese)
"Claim of Compensation under Article 65 of the Patent Law", Vol.8 of Civil Litigation and Court Practice of Intellectual Property Right by Gyosei (1998)
"Supreme Court Case recognizing Doctrine of Equivalents", NBL 676 by Commercial Law Center (1999)
"Business Method Patents", Wa by TEISHIN Association (2000)
"International Jurisdiction(1)(2)", Journal of JIPA by Japan Intellectual Property Association (2001)
"Preliminary Injunction in IP Cases & Necessity of Preservation", Hanrei Times by Hanrei Times (2001)
"IP Management in a highly information-oriented society", Law and Practice related to Information by Minjiho Kenkyukai (2003)
"Supreme Court IP cases", Transaction-related Law in Transition by Shojihomu (2004)
"Criminal Sanctions for Intellectual Property Infringement in Japan", Journal of the Japanese Group of AIPPI, Vol. 5 No.12 by AIPPI·JAPAN (2005)
"The Succession to the Right to Obtain a Patent and the Calculation of the Amount of a Reasonable Remuneration", Theory and Practice of Intellectual Property Laws, Vol. 1 by Shinnippon-Hoki (2007)
"Case of a claim for remuneration where a right to obtain a foreign patent for an employee invention was granted to the employer in which Article 35, Paragraph 3 and 4 of Patent Law was deemed to be applicable by analogical reasoning" Rule of Law (Ho no Shihai) No.146 by the Japan Bar Association (2007)
"Infringement of Intellectual Property Right", Point System, Precedents on Civil Code (Vol.8), Tortious Acts (No.2) by Daiichihoki (2009)
"Occurrence of the right to obtain a patent and original jurisdiction belonging", The New Commentary on Patent Law (Vol.1) by Seirin Shoin (2011)
"The Practice of Employee Invention Litigation", Professional Litigation Course No.6, Patent Litigation by Minjiho Kenkyukai (2012)
"Compensation for Damage", Modern Intellectual Property Laws Course No.2, Practical Development of Intellectual Property Laws by Nippon Hyoron Sha (2012)
“International jurisdiction, Governing law”, Jurist Extra Number, Selected IP Precedents for Practices by Yuhikaku (2014)
“Infringement of right of distribution in the case of sale/distribution of video products” , Copyright Study No. 39 by Yuhikaku (2014)
“LED module and LED light source Case regarding correction of patent claims” , Present Intellectual Property Litigation by Yuhikaku (2014)
“Consideration of Contribution Ratio” , Today's Intellectual Property Laws, Practice and Agenda (Contributed Articles in Celebration of the Retirement of Judge Toshiaki IIMURA) by Hatsumei Suishin Kyokai (2015)
“Calculation of Damages”, Jurist Vol.1485 by Yuhikaku (2015)
"Applied Arts and Copyright(from the Japanese law perspective)", Chosakuken Kenkyu No.43 by Yuhikaku (2017)
“Professional sports and merchandising right”, Jurist Vol.1514 by Yuhikaku (2017)
“Supreme Court Decision Which Overturned the Lower Court's Decision Cancelling an Arbitral Award Based on Violation of Disclosure Obligation by an Arbitrator”, Journal of the Japanese Group of AIPPI, Vol. 63 No.12 by AIPPI・JAPAN (2018)

Main Lectures:

"Drafting of IP related agreements", Tokai University Extension Center (2000-2005)
"Protection of Trade Secret and The Unfair Competition Prevention Law", Association of Copyright for Computer Software (2000-2002)
"Business Method Patents", the Ministry of Public Management, Home Affairs, Posts and Telecommunications (2000)
"International Jurisdiction", Japan Intellectual Property Association (2000)
"Legal Aspects of e-commerce in Japan", LAWASIA (Singapore) (2000)
"Licensing and Antitrust Law", AIPPI JAPAN/JFBA a symposium on AIPLA (2001)
"Copyright Infringement Lawsuit in the U.S.", Tokai University Extension Center (2001)
"The Doctrine of Equivalents in Japan- How does it Impact the Practice in Japan?", Frommer Lawrence & Haug LLP (2002)
"Santoku case", Group for Case Study of AIPPI (2003)
"Recent Developments of Employees' Inventions in Japan", AIPPI JAPAN/JFBA a meeting on AIPLA (2003)
"Criminal Responsibility for Intellectual Property Infringement in Japan", AIPPI JOINT MEETING (2005)
"Required Basic Knowledge of Patent Infringement Suits for Patent Attorneys", JPAA newcomer training 5th Seminar (2011)
“Protection of Trade Secrets in Japan”, AIPPI 13th JAPAN, CHINA, KOREA JOINT MEETING (2015)