Yasufumi Shiroyama
Partner- 81-3-6888-1060
- 81-3-6888-3060
- Practice Areas
Patent and Intellectual Property Infringement Litigation, Licensing and other Intellectual Property Rights Agreements, Judgment and Advice on Infringement/Utility, and Litigation Against Decisions by the Patent Office.
- Practice
Yasufumi Shiroyama is a partner who has participated in all aspects of the firm's intellectual property group practice, including:
・Drafting and arguing complaints, motions, answers and other pleadings for patent, trademark, copyright and know-how infringement litigation in district and appellate courts in Japan, on behalf of both Japanese and foreign companies;
・Drafting and arguing complaints, motions, answers and other pleadings for litigation arising in relation to technology transfer agreements, compensation for employee's invention, and allegedly defective products, etc. in district and appellate courts in Japan, on behalf of both Japanese and foreign companies;
・Drafting and negotiating various technology transfer agreements on behalf of both Japanese and foreign companies;
・Managing written discovery in cooperation with U.S. counsel for a Japanese client in patent license related litigation in U.S. federal court;
・Managing appellate litigation matters seeking nullification of decisions of the Japanese Patent Office;
・Assisting patent agents (Benrishi) in invalidation trial and opposition procedures before the Japanese Patent Office; and
・Advising on regulatory matters for pharmaceutical products, medical devices, chemical products, and personal data etc.
・Drafting and arguing complaints, motions, answers and other pleadings for patent, trademark, copyright and know-how infringement litigation in district and appellate courts in Japan, on behalf of both Japanese and foreign companies;
・Drafting and arguing complaints, motions, answers and other pleadings for litigation arising in relation to technology transfer agreements, compensation for employee's invention, and allegedly defective products, etc. in district and appellate courts in Japan, on behalf of both Japanese and foreign companies;
・Drafting and negotiating various technology transfer agreements on behalf of both Japanese and foreign companies;
・Managing written discovery in cooperation with U.S. counsel for a Japanese client in patent license related litigation in U.S. federal court;
・Managing appellate litigation matters seeking nullification of decisions of the Japanese Patent Office;
・Assisting patent agents (Benrishi) in invalidation trial and opposition procedures before the Japanese Patent Office; and
・Advising on regulatory matters for pharmaceutical products, medical devices, chemical products, and personal data etc.
- Practice Groups
・Intellectual Property Law
- Publications/Lectures
Books and Articles Authored in English:
| ・ | Dispute Resolution 2003, 2004, 2005, 2006 and 2008 (Law Business Research) |
| ・ | Trademark 2005, 2006 and 2007 (Law Business Research) |
| ・ | Patents 2005 and 2006 (Law Business Research) |
| ・ | Copyright 2006 and 2007(Getting the Deal Through, Law Business Research) |
| Books and Articles Authored in Japanese: |
| ・ | "Exploitation of images and names of articles," " Injunction based on statutes and that based on contracts," in "Soft law and intellectual property," (Yuhikaku 2010) |
| ・ | "Work Made for Hire (4) - As a Matter of Duty [Appeal Court Decision of the National Space Development Agency of Japan Program Case]," Jurist Additional Volume, No. 198 (December 2009) |
| ・ | "Amendment to add a limitation to a claim and its effect on an obligation under a license agreement," Commentaries to the Supreme Court's Precedents regarding Intellectual Property Law I (Seirin Shoin, 2009) |
| ・ | "Canon Employee Invention Case," Hanrei Times Additional Volume 25 (September 2009) |
| ・ | Procedure of Intellectual Property Lawsuit (Seirin Shoin, 2009) |
| ・ | "Bioactive Protein Case - Biotechnology Based Medicine and Prior User's Right (Tokyo District Court Judgment issued on March 22, 2006)," Hanrei Times Additional Volume 22 (September 2008) |
| ・ | "Smilarity in Service - Career-Japan Case," Jurist Additional Volume, No. 188 (November 2007) |
| ・ | "Parameter Case - Parameter Patent and Support Requirement," Hanrei Times, No. 1245 (September 2007) |
| ・ | "Licensing Agreement and Soft Law," "Cross License Agreement," in Legal Counseling for IP Licensing Agreement (Seirin Shoin, 2007) |
| ・ | "Considerations Concerning Open Source and Disclosure of Source Code - Activities of Open Source Communities, Embedded Linux Product and GPL Ver.3," Intellectual Property Management, No. 675 (March 2007) (co-author) |
| ・ | "Comprehension of Technology for Patent Infringement Litigation," The University of Tokyo Law Review, Vol. 1 (August 2006) |
| ・ | "Patent Cross License Agreement," in Theory of Intellectual Property Law and Modern Issues Thereof, the Collection of Papers Celebrating Nobuhiro Nakayama Esq.'s Sixtieth Birthday (Kobundo, 2005) |
| ・ | "Exploitation of images and names of articles," Soft-law studies No.3, the University of Tokyo Press (September 2005) |
| ・ | "Injunction based on statutes and that based on contracts," Jurist No. 1280 (December 2004) |
| ・ | "The case where a district court, examining a patent infringement claim, found that an amendment to the claim made following examined publication constituted an 'amendment which substantially modifies the scope of a claim'," Patent Studies No. 38 (September 2004) |
| ・ | "IP infringement in China and action therefor," Compliance Letter, Vol. 4 (July 2004) |
| ・ | "100 cases on patent," Bessatsu Jurist No. 170 (February 2004) |
| ・ | "Decision of the Supreme Court of Japan which Denied Copyright Infringement with Respect to Sale of Secondhand Video Game Software," AIPPI, Vol. 48, No.6 (June 2003) |
| ・ | "Arbitration of IP Disputes," NBL, No. 757 (March 2003) |
| ・ | "Handling of Patent Infringement in China and Legal Procedure," Japan Institute of Overseas Investment (January 2003) |
| ・ | "Decision in Aimster Case," The Record (December 2002) |
| ・ | "Stream of Patent Infringement Litigation," Japan Institute of Invention and Innovation (December 2002) |
| ・ | Handling of Patent Infringement Claims and Defense (Tokyo Horei, Publishers, April 2003) |
| ・ | "License of Inventions Covered by Pending Patent Applications," Patent (December 2000) |
| ・ | "Measure and Defense against Claim for Violation of Patents," in Practice of Defense Focused on Case Study Series 5 - Anti-Monopoly, Intellectual Properties, Foreign Affairs (Tokyo Horei, Publishers, 2000) |
| ・ | "License Agreement for Invention while Patent is Pending," Patent (December 2002) |
| Translation: |
| ・ | "Wrongful Patent Enforcement -Threats and Post-Infringement Invalidity in Comparative Perspective-," Intellectual Property Law and Policy Journal, Vol. 20 (March 2008) |
| ・ | "Patent Enforcement and Calculation of Damages in Patent Litigation-Germany as Example," Intellectual Property Law and Policy Journal, Vol. 12 (August 2006) |
| ・ | "Speedy Dispute Resolution in China Through Cooperation of Judges and Parties," AIPPI, Vol. 48, No. 6 (May 2003) |
- Education
・Tokyo University (LL.B., 1992)
・University of California, Davis (LL.M., 1998)
・Beijing Language and Cultural University (Language Training, 1997)
・University of California, Davis (LL.M., 1998)
・Beijing Language and Cultural University (Language Training, 1997)
- Professional Admissions
・Japan (1994)
- Professional and Academic Associations
・First Tokyo Bar Association
・Member of Editorial Committee, AIPPI Japan (International Association for the Protection of Intellectual Property)
・Visiting Assistant Professor (Intellectual Property),The University of Tokyo School of Law (April 2004 - March 2007)
・Adjunct Lecturer (Computer Law), The University of Tokyo School of Law (April 2007 - March 2010)
・Visiting Assistant Professor (Intellectual Property), The University of Tokyo School of Law (April 2010 - present)
・Member of Editorial Committee, AIPPI Japan (International Association for the Protection of Intellectual Property)
・Visiting Assistant Professor (Intellectual Property),The University of Tokyo School of Law (April 2004 - March 2007)
・Adjunct Lecturer (Computer Law), The University of Tokyo School of Law (April 2007 - March 2010)
・Visiting Assistant Professor (Intellectual Property), The University of Tokyo School of Law (April 2010 - present)
- Languages
・Japanese (first language)
・English
・English
