Shoichi SATAKE (Mr.)

Partner
Section: Legal

Profile Summary

Shoichi Satake (Mr.) is an attorney at law and patent attorney in our Legal Section with a specialty in intellectual property law, corporate legal affairs, and international transaction law. After graduating from both the Faculty of Law at Waseda University (LL.B.) and the Legal Training Institute in Japan, he joined Nakamura & Partners. He further earned an LL.M. from the UCLA School of Law and worked at Finnegan, Henderson, Farabow, Garrett & Dunner, LLP in Washington D.C. He is admitted to practice law in both Japan and in New York. Additionally, he is an active member of many organizations including the Japan Patent Attorneys Association Copyright Committee and Daini Tokyo Bar Association Disciplinary Enforcement Committee. Mr. Satake has written extensively on international IP issues, patent claims interpretation, and infringement of patent rights. Further, he has participated in lectures, workshops, and courses on various IP topics at the Daini Tokyo Bar Association, the Japan Patent Attorneys Association, and the AIPPI among others.

Membership and Activities:

Daini Tokyo Bar Association (2003-)
  International Committee (2004-2006)
  A member of an Assembly at Daini Tokyo Bar Association (2007-2008)
  ADR Center Operation Committee (2015-2018)
  Disciplinary Enforcement Committee (2016-)
The Japan Federation of Bar Associations (2003-)
Japan Patent Attorneys Association (2009-)
  Intellectual Property Litigation Committee (2013, 2015-2017)
  ADR Promotion Committee (2019-2020)
  Copyright Committee (2019-)
Japan Trademark Association Design Committee (2008-2010)
Intellectual Property Lawyers Network (2014-)

Main Articles:

"Hanrei-Taikei Intellectual Property Law" (joint authorship), Hanrei-Taikei by Dai-ichi Hoki (2006)
"Yokenjijitsu-Taikei Intellectual Property" (joint authorship), Yokenjijitsu-Taikei by Dai-ichi Hoki (2007)
"Corporate Legal Affair-Intellectual Property Right", Business Law by CHUOKEIZAI-SHA.INC. (2007)
"Judgement of the European Court of Justice, ruled on 11 June, 2009, regarding the Interpretation of Article 51(1) (b) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community Trademark", Journal of Japan Trademark Association by JAPAN TRADEMARK ASSOCIATION (2010)
" 'Capsule Vending Machine Patent' Case" (joint authorship), Present Intellectual Property Litigation by Yuhikaku (2014)
"Problems regarding Border Measures against Patent-Infringing Articles (Focusing on Chemical Products)" (joint authorship), Intellectual Property Management, Vol. 65 No. 3 by JIPA (2015)
"A Case in Which the Court Judges That So-Called Product Identity Theory Should Be Adopted When Interpreting the Technical Scope of the Product-By-Process Claim And the Product-By-Process Claim Meets the Clarity Requirement Only When There Are Impossible or Impractical Circumstances (Supreme Court, Date of the Judgement: June 5, Case Number: 2012 (Ju) 1204)", AIPPI Journal, Vol. 60 No.12 by AIPPI (2015)
"Product-By-Process Claim - A Comparison Between Japan and the United States", Patent, Vol.69 No.10 by JPAA (2016)
"Trademark Legal Consultation Basics" (joint authorship) by Dai-ichi Hoki (2019)

Main Lectures:

"Suggestion as to International Framework for Grant of Patents focusing on the Needs of Companies in ASEAN", Institute of Intellectual Property (2014)
"Compensation for Damages -Giving Cases of IP Litigation-", Japan Attorneys Association (2014)
"Advanced Course on Patent and Trademark Litigation", Graduate Program in Systems for Intellectual Creation, K.I.T. Toranomon Graduate School (2014-2015)
"Ability Guarantee Workshop", Japan Attorneys Association (2015-2017)
"A Case in Which the Court Judges That So-Called Product Identity Theory Should Be Adopted When Interpreting the Technical Scope of the Product-By-Process Claim And the Product-By-Process Claim Meets the Clarity Requirement Only When There Are Impossible or Impractical Circumstances (Supreme Court, Date of the Judgement: June 5, Case Number: 2012 (Ju) 1204)", AIPPI (2015)
"Advanced Course on Patent and Trademark Litigation", Graduate Program of Innovation Management, K.I.T. Toranomon Graduate School (2016-)
"FEATURES AND REFORMS OF PATENT INFRINGEMENT LITIGATION IN JAPAN", IIPLA (2016)
"Product-By-Process Claim~About the Contents of the Supreme Court Decision and Practice After the Decision~", Daini Tokyo Bar Association Intellectual Property Rights Committee (2017)
"Recent Japanese IP High Court Decision, on the Oxaliplatin case ~the scope of extended patent right~", Pharma Patent Extensions Forum (2017)
"Problems for Procedures of Collection of Evidence and Procedures of Collection of Evidence in Various Countries ", Japan Attorneys Association (2017)