Yoshio KUMAKURA (Mr.)

Section: Legal

Profile Summary

Yoshio Kumakura (Mr.) is an attorney at law in the Legal Section as well as a patent attorney. His main areas of focus include intellectual property law, antimonopoly law, unfair competition prevention law, litigation, arbitration, dispute resolution, and international transaction law. Upon graduating from The University of Tokyo Faculty of Law, he passed the Japanese Bar Examination, but initially began his career in the financial sector at Sumitomo Bank LTD. After his time there he joined Nakamura & Partners. He later studied at Harvard University receiving his LL.M. through an exchange scholarship program sponsored by the Legal Training Institute of the Supreme Court. Most notably, however, is that Mr. Kumakura has won many IP litigations including four successful appeal cases before the Japanese Supreme Court. He has also written and lectured extensively on a number of topics such as Japanese IP law, IP litigation, trademark issues and developments, and a host of specific case judgements made by the Japanese high courts. He received the Award of Minister of Economy and Industry on Intellectual Properties, the AIPPI Member of Honour, and the APAA Enduring Award.


Japanese and English

Membership and Activities:

Daini Tokyo Bar Association (1969-)
The Japan Federation of Bar Associations (1969-)
Japan Patent Attorneys Association (1977-)
  Executive Director (1994-2000), Vice-president (2001-2011),
  President, Director General (2011-2012)
  Councilor Member (1988-2001), (2007-)
Japan Lawasia Friendship Association
  Executive Director (2000-)
International Law Association, Japan Branch
  Executive Director (2000-)
Japan Association of Industrial Property Law
  Councilor (2006-2012)
Japanese American Society for Legal Studies
  Councilor (2006-2019)
Foundation for Intellectual Property
  Councilor (2006-2010), Director (2010-)
Japan Patent Information Organization
  Councilor (2006-)
Software Information Center
  Councilor (2003-2008), Director (2009-2010)
Licensing Executives Society Japan
  Councilor (1989-1996)
Japan Trademark Association
  Councilor (1993-1996), Executive Councilor (1996-2005)
Intellectual Property Policy Office of Ministry of Economy, Trade and Industry
Member of Study Group on Industrial Competitiveness and Intellectual Property (2001-2003)
Member of Japan International Chamber of Commerce (2015-)

Main Articles:

(written in English)
"The Employee Inventor", AIPPI Journal by AIPPI (1985)
"Pre-Trial Procedure in Patent Infringement in Japan", "Patent Infringement in Japan", Patent Litigation by Butterworth (1995)
"Legal Action against Intellectual Property Infringement in Japan -Development of Patent Enforcement-", Legal Action against IP Infringement in Asia by The Korea Industrial Property Law Association (2004)
(written in Japanese)
"Patent" [joint authorship] by Dai-ichi Hoki (1972)
"Restriction on Withdrawal of Trial before the Patent Office under the Japanese Patent Act Art. 155 and the Settlement during the Appeal before Tokyo High Court", Annual of Japan Association of Industrial Property Law by Yuhikaku (1986)
"Intellectual Property Right and Arbitration(1)~(5)", JCA Journal by the Japan Commercial Arbitration Association (1989)
"Damage Theories in the U.S. patent Litigation", JURIST by Yuhikaku (1992)
"Legal Risk Management in Foreign Trade Transaction", Management Manual for Intellectual Property Rights by Dai-ichi Hoki (1993)
"Whether an Exclusive Licensee can Prevent the Parallel Imports of the Genuine Patented Products?", PATENT by Japan Patent Attorneys Association (1996)
"Conciliations and Settlements of Intellectual Property Right Litigations", Annual of Japan Association of Industrial Property Law by Yuhikaku (1997)
"Patent and Parallel Import", Practical Litigation Law Series Vol. 26 by Shinnippon-Hoki (1997)
"Settlements of Intellectual Property Right Litigations", "Non-right holder's Arguments against Contradistinction", Defense in Civil Case and Judicial Practice by Gyosei (1998)
"Revision of Article 102 of the Japanese Patent Act and the Litigation Practice in Patent Damage Suits", PATENT by Japan Patent Attorneys Association (1998)
"Consideration of Publicly Known Invention", Intellectual Property Law and Modern Society by Shinzansha (1999)
"Domestic Exhaustion of Utility Model Rights and Indication of Intention to Reserve the Right to Obtain Utility Model", Trend of Patent Infringement Litigations by Japan Institution of Invention and Innovation (2002)
"Pollution of Famous Trademarks", Legal Consultation for Unfair Competition (revision) by Seirin-Shoin (2002)
"Doctrine of File Wrapper Estoppel", Legal Consultation for Trademark (revision) by Seirin-Shoin (2002)
"Joint Development Research", "Trademark Strategy", "Product Liability in U.S.A.", NBL by Shojihomu
"Agreement for Boundary Zone of Intellectual Property and Competition Policy - a case of MTA", Fair Trade by Fair Trade Institute (2004)
"Prior User's Right by Agent of Liicensee - Globe-ShapeTransistor Radio Design Case", Patent Hanrei Hyakusen Third Edition (JURIST Separate Volume No. 170) by Yuhikaku (2004)
"Commentary on Tokyo District Court Decision in Coral Sand (U.S. Patent) Case - Tokyo District Court Decision on 16 October, 2003 ", Hanrei Times No. 1184 by Hanrei Times (2005)
"Commentary on Judicial Precedent - Tokyo District Court Decision on May 31, 2004", Hanrei Times No. 1215 by Hanrei Times (2006)
"International Arbitration (ADR) concerning Patent Infringement", Theory and Practice of Intellectual Property Law Vol. 2 by Shinnippon-Hoki (2007)
"Eligibility to Couterfeit Claim on Design [Caddie Bag Case]", Trademark, Design, Unfair Competition Hanrei Hyakusen No. 188 by Yuhikaku
"Trend of Compensation for Damage under the Patent Act of Japan", the Quarterly Review of Corporation Law and Society No. 14 by Global Center of Exellence, Waseda Institute for Corporation Law and Society (2007)
"Doctrine of File Wrapper Estoppel inTrademark Case", New Seirin Legal Consultation for Trademark23 by Seirin-Shoin (2009)
"Prior Use in Design Right - Globe-Shape Transistor Radio Case", Commentaries to the Supreme Court's Precedents regarding Intellectual Property Law II by Seirin-Shoin (2009)
"Ownership of Copyright to Audiovisual work on Unedited Film", Copyright Hanrei Hyakusen Fourth Edition (Jurist No. 198) by Yuhikaku (2009)
"Pollution of Famous Trademarks", Shin-Seirin Legal Consultation for Unfair Competition by Seirin-Shoin (2010)
"Patent Litigation" [joint editorship] by Minji-ho Kenkyu-kai (2012)
"Patent Case Regarding Smoked Roof Tile "Ibushi-Kawara" - Based on The Judgment by Supreme Court of Japan -" Intellectual Property right -Legal Principles and Proposal -(Contributed Articles in Celebration of the 80th Birthday of Doctor Toshiaki MAKINO) by Seirin-Shoin (2012)

Main Lectures:

"Advice on Industrial Property Law for Developing Countries", Japan Patent Office (1986)
"Civil litigation and Administrative litigation under the Patent Act (Withdrawal of Trial before the Patent Office and Cancellation of Decision of Patent Office at a Court)", Japan Association of Industrial Property Law (1986)
"Patent Disputes between Japan and U.S. (Response of Japanese Companies in U.S. patent Litigations)", Commercial Law Center (1992)
"Intellectual Property Strategy Seminar for Top Management (in order to prevent patent disputes between Japan and U.S. etc. from occurring and to settle the disputes after it occurred)", Japan Institution of Invention and Innovation (1992)
"Guidance for Technology Export (Settlement and Prevention of Disputes in Foreign Countries)", Kanagawa Academy of Science and Technology (1993)
"Study on Trial Decision regarding Patent/Utility Model", Kanto E1 Course of Japan Intellectual Property Association (1993, 1995, 1997, 1998)
"Intellectual Property Right", Seminar for Trainees of Legal Research and Training Institute (1994-1996)
"Study of Intellectual Property Right: Offense and Defense in Patent Infringement Litigation", Japan Institution of Invention and Innovation (1995-2001)
"Recent Developments in Foreign Countries of Settlement of Intellectual Property Right Disputes (Conciliations and Settlements of Intellectual Property Right Litigations)", Japan Association of Industrial Property Law (1996)
"High Technology Protection Summit: Japanese Courts", University of Washington (1997)
"Study of Industrial Property Right: Trademark Infringement - Japanese Case Study", Japan Institution of Invention and Innovation (1997-2001)
"Outline of Unfair Competition Prevention Act", Japan Patent Attorneys Association (2000)
"Lecture on Intellectual Property Right: Business Model Patent", Tokai University (2000)
"Draft of Hague Convention and Japanese Laws", Software Information Center (2001)
"FICPI/APAA Joint Symposium: UDRP in Domain Name", APAA (2002)
"Lecture on Intellectual Property Right: Points to notice when licensing an intellectual property right on an international basis (in case of developed countries such as U.S.A.)", Waseda University (2002)
"Postgraduate Program - Intellectual Property Right Seminar: Copyright Protection in Japan", Swiss Federal Institute of Technology Zurich (2002-)
"Outline of Intellectual Assets: Enforcement of Rights and Dispute Settlement", Intellectual Property Center of Keio University (2002-)
"Symposium: Issue on Governing Law in cases which do not appear in court decision", Private International Law Association of Japan (2003)
"Training for Specially Qualified Attorneys", Japan Patent Attorneys Association (2003)
"AIPPI Forum: Trivial Patents? Japanese Experience in Change of Inventive-Step Evaluation", AIPPI (2005)
"Globalization of Disputes on Intellectual Property", Rikkyo University (2005)
"Lecture on Intellectual Property: Objective of Cultivation of Human Resources to manage Intellectual Property - from the standpoint of a lawyer/patent attorney", Waseda University (2005)
"Interchange of Patent Attorneys of Japan and Germany: Border Measure against IP Infringing Goods in Japan", Japan Patent Attorneys Association (2006)
"Global Seminar: Topics in Patent Enforcement in Japan", Frommer Lawrence & Haug LLP (NY) (2006)
"International Patent Licensing Seminar 2007: Recent Changes in US Patent Laws including Court Decisions and their Effect on Business", National Center for Industrial Property Information and Training (2007)
"RCLIP International Intellectual Property Seminar Series: Civil and Criminal Means of Preventing Intellectual Property Infringement-", Global Center of Exellence, Waseda Institute for Corporation Law and Society (2007)
"FICPI Japan Symposium: Comparative Study of Enforcement of Patents under Different Legal Systems", Federation Internationale des Conseils en Propriete Industriele (FICPI) (2008)
"2009 Seoul Intellectual Property International Conference: IP Protection and Case Law in Japan", AIPPI-KOREA/LES-KOREA(2009)