Kei IIDA (Mr.)

Partner
Section: Legal

Profile Summary

Kei IIDA (Mr.), attorney at law and patent attorney, is a partner in the Legal Section where he specializes in IP law, strategy and management including litigation, ADR, negotiation, contract and opinion, entertainment, international transaction, and antitrust. He graduated from the Faculty of Law at The University of Tokyo and obtained LL.M. in IP at the Franklin Pierce Law Center in the USA. He is an active member of several international IP organizations such as APAA, AIPPI and LES, and several IP academic societies in Japan. He also teaches IP law as adjunct lecturer at the Graduate School of Business Sciences, University of Tsukuba. Further, he has been a member of several research and study committees for reform of IP system for the Japan Patent Office and the Institute of Intellectual Property. Further, he is appointed as IP Expert Advisor for Japan Customs and Advisory for Unfair Competition Prevention Law for Ministry of Economy, Trade and Industry of Japan. In Chambers Asia Pacific 2017, he is described as “a walking dictionary of IP law.”

Membership and Activities:

Daini Tokyo Bar Association (1995-)
  Law Practice Task Force (1996-1997)
  Disciplinary Enforcement Committee (2012-2018)
The Japan Federation of Bar Associations (1995-)
Japan Trademark Association (1995-)
  International Activity Committee (1995-2001)
Japan Patent Attorneys Association (1997-)
  Border Enforcement Committee (2005-2006)
    Vice-Chairman (2005-2006)
  IP Enforcement Facilitation Committee (Former Industrial Competitiveness Promotion Committee) (2006-2018)
    Vice-Chairman (2006-2007)
    Chairman (2007-2008)
  Copyright Business Working Group (2008-2011)
  IP Strategy Headquarters Working Group (2010-2017)
  Economic Partnership Working Group (Former TPP Working Group) (2011-2013)
  Unfair Competition Prevention Law Committee (2014-2020)
    Vice-Chairman (2016-2020)
  Support Working Group for Industrial Structural Council for Trade Secret Protection and Utilization Subcommittee of IP Sectional Committee (2014-2016)
  IP System Study Committee (2016-2017)
  TPP Working Group (2016-2017)
  Trade Secret Protection Study Working Group (2016-2017) 
  Time Stamp Working Group (2016-2018)
  Central Research Institute of Intellectual Property, Damages Study Group (2016-2017)
  Fourth Industrial Revolution Working Group (2017-2019)
  Technology Protection Text Committee (2017-2019)
    Chairman (2017-2019)
  Working Group for Reviewing Training Curriculums for Amendment of Patent Attorney Act (2017-2019)
  IP System Working Group (2018-2020)
  IP Strategy Promotion Working Group (2020-)
APAA (1997-)
  APAA・JAPAN(1997-)
    Copyright Committee (1997-)
      Chairman (2007-2012)
    Officer (2007-)
    Vice-President (2016-2020)
    President (2020-)
  APAA(1997-)
    Copyright Committee (2006-2015)
    Officer (2009-)
    Advisory Committee (2018-)
Anti Counterfeit Adviser appointed by Japan Institute of Invention and Innovation (1999-2001)
The Copyright Law Association of Japan (2003-)
Entertainment Lawyers Network (2004-2016)
Licensing Executives Society Japan (2004-)
  Trade Secret Working Group (2004-)
AIPPI·JAPAN (2005-)
  Foreign Association Interchange Committee (2005-)
  Research and Study Committee of Protection of True Owner against Usurped Application or Patent (2009-2010)
  Public Comment Response Committee (2012-)
  Research and Study Committee of FTA・EPA Negotiation Strategy (2012-2013)
Japan Association of Industrial Property Law (2005-)
Ministry of Economy, Trade and Industry
  Advisory Councillor (Former Researcher) for Unfair Competition Prevention Law (2006-2009) (2012-)
  Researcher for Legal Issues on Enforcement of IPRs against Counterfeits and Pirates (2013-2014)
  Temporary Member of Industrial Structural Council for Trade Secret Protection and Utilization Subcommittee of IP Sectional Committee (2014‐2016) 
Intellectual Property Association of Japan (2006-)
International Literary and Artistic Association (2006-)
Japan Law Foundation (2006-)
Expert Advisor for Customs of Ministry of Treasury (2008-)
Institute of Intellectual Property (IIP)
  Research and Study Committee of Measures against Enforcement of Rights which may Disturb Development of Industries (2008-2009)
  Research and Study Committee of Practices of Utilization of Industrial Property Rights in light of New Company Activities etc. (2009-2010)
  Research and Study Committee of Laid-Open Publication System (2014-2015)
  Research and Study Committee of Utilization of Prior User's Right (2015-2016)
Japan Patent Office
  Temporary Member of Industrial Property Council for Patent Attorney Review Sectional Committee (2009-2015)
  Research and Study Committee of IP Protection and Private International law (2014-2015)
Association of Copyright for Computer Software (2009-)
  Legal and General Affairs Committee (2009-)
Software Information Center (2010-)
  Study Group concerning Judicial Patent Protection of Software Related Invention (2010-)
Tokyo IP Inn (2013-)

Main Articles:

"Border Enforcement on Infringing Goods", Jiyu to Seigi Vol.56 No.8 by The Japan Federation of Bar Associations (2005)
"Recent Trend of Case Law re Doctrine of Equivalents", Theory and Practice of Intellectual Property Laws, Vol. 1 by Shinnippon-Hoki Publishing (2007)
"Enforcement of Trademark Rights and Grounds for Invalidation or Cancellation", Theory and Practice of Intellectual Property laws, Vol. 3 by Shinnippon-Hoki Publishing (2007)
"Massage Chair Case, IP High Court Decision", Journal of the Japanese Group of AIPPI, Vol. 52 No.7 by AIPPI·JAPAN (2007)
"Modification of Goods with a Registered Trademark [Nintendo Case]", Jurist Separate Vol. 188, 100 Selected Decisions of Trademark, Design and Unfair Competition by Yuhikaku (2007)
"Maneki TV Provisional Injunction Procedure", Hanrei Times Vol. 22, Commentary on Heisei 19 Civil Leading Case by Hanrei Times (2008)
"Protection of Sound Mark and Relationship with Copyrights and Neighbouring Rights", Copyright, Vol.49 No.582 by CRIC (2009)
"Determination of Author (2) - Interview Article - [SMAP Study Case]", Jurist Separate Vol. 198, 100 Selected Decisions of Copyright by Yuhikaku (2009)
"Issues re Moral Rights", Theory and Practice of Copyright Business by Seibundoh (2010)
"Article 33 [Right to Obtain Patent]", The New Commentary on Patent Act by Seirin Shoin (2011)
"Article 34 [Right to Obtain Patent]", The New Commentary on Patent Act by Seirin Shoin (2011)
"Article 102 [Calculation of Amount of Damages]", The New Commentary on Patent Act by Seirin Shoin (2011)
"Case of access control and monitor system of Internet server", Investigation Research Report concerning Software Patent by Software Information Center (2011)
"Introduction of Automatic Perfection of License", Jurist Vol. 1436 by Yuhikaku (2012)
"Remedies for True Owner against Usurped Application and Patent", Professional Litigation Course No. 6, Patent Litigation by Minjihokenkyukai (2012)
"Calculation of Amount of Damages for Shared Patent", Jurist Separate Vol. 209, 100 Selected Decisions of Patent by Yuhikaku (2012)
"Usurpation - Focusing on Violation of Joint Application", Jurist Vol. 1441 by Yuhikaku (2012)
"Case of car-mounted navigation system", Investigation Research Report concerning Software Patent by Software Information Center (2012)
"Appeal Court Decision of Case of Solid Golf Ball", Journal of the Japanese Group of AIPPI, Vol. 58 No.2 by AIPPI・JAPAN (2013)
"Moral Rights - Right to Maintain Integrity", Jurist Vol. 1452 by Yuhikaku (2013)
"PATENTS AND UTILITY MODELS", 3 DOING BUSINESS IN JAPAN by LexisNexis (2013)
"Defence for Parallel Import", Jurist Extra Number, Selected IP Precedents for Practices by Yuhikaku (2014)
"Right to Maintain Integrity", Jurist Vol. 09 by Yuhikaku (2014)
"INTERNET NUMBER Case" (joint authorship) , Present Intellectual Property Litigation by Yuhikaku (2014)
"Waste Storage Device Case by Grand Panel of IP High Court", Jurist Vol.1475 by Yuhikaku (2015)
"Issues of Border Enforcement against Patent Infringing Products such as Chemicals"(joint authorship), IP Management Vol. 65, No.3 by JIPA (2015)
"Trends and Issues of Recent Court Cases on Doctrine of Equivalents", Japan Association of Industrial Property Law Annual Report Vol.38 by Yuhikaku (2015)
“Akamai Case”, Investigation Research Report concerning Software Patent by Software Information Center (2016)
"Parallel Import of Patented Products and Trademark Goods", Patent Vol. 69 by JPAA (2016)
"Legislative Issues on Damages for Patent Infringement", Jurist Vol. 1499 by Yuhikaku (2016)
"Determination of Author (2) - Interview Article - [SMAP Study Case]", Jurist Separate Vol. 231, 100 Selected Decisions of Copyright by Yuhikaku (2016)
"Brand Strategy and IPR Border Enforcement", Jurist Vol. 1504 by Yuhikaku (2017)
"Japanese Companies' IP Management", IPR Management Manual by Daiichi Hoki (2017)
"Article 33 [Right to Obtain Patent]", The New Commentary on Patent Act 2nd Edition by Seirin Shoin (2017)
"Article 34 [Right to Obtain Patent]", The New Commentary on Patent Act 2nd Edition by Seirin Shoin (2017)
"Article 102 [Calculation of Amount of Damages]", The New Commentary on Patent Act 2nd Edition by Seirin Shoin (2017)
"Strong Mark and Weak Mark", Legal Consultation on Trademark I by Seirin Shoin (2017)
"IP High Court Grand Panel Judgement on Waste Storage Device Case and Scope of Application of Article 102II of Patent Act", Patent Separate Vol. 18 by JPAA (2017)"
"Standardization and IP strategy", Patent Vol. 71 by JPAA (2018)
“Points of IP Management” by Seibunsha (2018)
"Calculation of Damages (2)", Jurist Separate Vol. 242, 100 Selected Decisions of Copyright by Yuhikaku (2019)
"Contribution Rate", Jurist Separate Vol. 244, 100 Selected Decisions of Patent by Yuhikaku (2019)
"SPREADER FOR OSTEOTOMY Case - As to Interpretation and Application of 5th Requirement of Doctrine of Equivalents", Patent Studies by INPIT (2019)
"Infringer's Profit and Overturn of Presumption, and Calculation Formula of Reasonable Royalty and Factors to Consider", Jurist Vol. 1538 by Yuhikaku (2019)
"For Effective Damages - Amendment of Patent Act in 2019", Jurist Vol. 1541 by Yuhikaku (2020)
"Unification of Judicial Precedents under Article 102, Paragraph 1 by IP High Court Grand Panel Decision", Jurist Vol. 1547 by Yuhikaku (2020)
"Partial Design and Calculation of Damages under Article 39II of Design Act", Jurist Separate Vol. 248, 100 Selected Decisions of Trademark, Design and Unfair Competition by Yuhikaku (2020)

Main Lectures:

"Selection of Dispute Resolution re Patent Infringement Case in Japan", AIPPI·JAPAN (2004)
"Customs Tariff Law and Border Enforcement", Intellectual Property Law Workshop No.3 of The Japan Federation of Bar Associations (2004)
"Recent Legal Situation re Employee Invention", Japan Foods Intellectual Property Center (Currently Japan Foods & Biotechnology Intellectual Property Rights Center) (2004)
"Basic Knowledge re Intellectual Property Law", Shojihomu (2004-2011)
"Joint Workshop re Intellectual Property Law", Daini Tokyo Bar Association and Japan Patent Attorneys Association (2005)
"Ability Guarantee Workshop", Japan Patent Attorneys Association (2005-2012)
"Special Study re Practice of Intellectual Property Law", Japan Law Foundation (2006)
"Enforcement of Trademark Rights and Grounds for Invalidation or Cancellation", Intellectual Property Law Study Group of Tokyo Bar Association (2006)
"Seminar on SME's Measures for Counterfeit Goods - Import Prohibition System by Customs", Tokyo Metropolitan Government Intellectual Property Center (2007)
"Import Business and Intellectual Property ", Manufactured Imports and Investment Promotion Organization (2007)
"Parallel Import in Japan, EU and USA", Manufactured Imports and Investment Promotion Organization (2007)
"Parallel Import and Trademark Right in Japan", TIPO Taipei Symposium on Trademark Infringement (2007)
"Patent Licensing in Japan in light of Lear and Medlmmune", AIPLA Annual Meeting (2007)
"Standardization Activities, Patent Pools, and Hold UP Problem under JP Laws", AIPLA MWI Meeting (2008)
"Intellectual Property Rights and Parallel Import", Graduate School of Business Sciences, University of Tsukuba (2008)
"Special Lecture of Intellectual Property Law", Graduate School of Business Sciences, University of Tsukuba (2008)
"Intellectual Property Law", Graduate School of Business Sciences, University of Tsukuba (2008-)
"Damages under Article 102(1) of Patent Act", Licensing Executives Society Japan (2008)
"Company's Practical Measures against Counterfeits and Pirates based on Intellectual Properties", Shojihomu (2009)
"The 104th Copyright Precedent Seminar", The Copyright Law Association of Japan (2009)
"Copyright Law Study (2)", Graduate School of Law, Waseda University (2009-2010)
"Special Lecture of Copyright Law", Graduate School of Law, Waseda University (2009-)
"Software Intellectual Property Right Introductory Course", Software Information Center (2011-)
"Amendment of Patent Act and its Effects on Practices", Software Information Center (2011)
"Dispute Resolution re Intellectual Property Rights -Warning and Response-", Japan Patent Attorneys Association (2011)
"Heisei 19 The revised Copyright Law seminar", The Association of Copyright for Computer Software (2012)
"Perfection of License under Copyrights", Graduate School of Law, Waseda University (2013)
"Counter-Measures under Trademark Rights against Counterfeits in China", Thomson Brandy (2013)
"Issue and Solution for Protection of Trade Secret in Japan", The 4th Int'l IP & Industrial Security Conference (2014)
"Case of Apparatus for Automatic Production of Telephone Number Information", Software Information Center (2014)
"Doctrine of Equivalence", Japan Association of Industrial Property Law (2014)
"Damages", JPAA, Central Research Institute of Intellectual Property (2017)
US Supreme Court's Design Patent Infringement Case between Apple and Samsung, Software Information Center (2017)
Supreme Court Case on Maxacalcitol, Software Information Center (2017)
"Interpretation and Application of 1st and 5th Elements for Doctrine of Equivalents in Patent Infringement Cases", Hokkaido University Summer Seminar 2018 (2018)
"Judicial Practices on Damages in Patent Infringement Cases", Hokkaido University Summer Seminar 2018 (2018)
"Trends of IP Management for Business" , INPIT Global IP Strategy Forum 2019 (2019)
"Points of IP Management", No. 426 of Monthly Seminars Osaka of LES Japan (2019)
"Resolving SEPs Disputes", Workshop of LESI 2019 Annual Conference in Yokohama, Japan (2019)