Attorney Profiles
Patent Attorney
Shimako Kato
Partner
Career

1988
Bachelor of Material Engineering, Waseda University, Faculty of Science and Engineering

 

1988-2006
Japan Patent Office (Examiner, Appeal Examiner)

 

1998
Scholarship by the National Personnel Authority to European Patent Office and German Patent Office

 

2002-2005
Seconded to the Tokyo District Court (Judicial Research Official)

 

2006
Joined Abe, Ikubo & Katayama Registered as Patent Attorney

 

2008
Qualified as patent attorney admitted to practice intellectual property infringement litigation

 

2014
Higher Regional Court of Düsseldorf (Training)

 

2018.4-
Adjunct professor at Waseda University for LL.M. in Intellectual Property Law

About

Shimako Kato worked for the Japan Patent Office as a patent examiner and a member of the board of Appeal in the field of metal processing and polymer processing. She was also engaged in the amendment of the examination standards at the JPO. In the IP division at the Tokyo District Court, she provided, as a Judicial Research Official, expert advice on the technical aspects of patent properties to judges when they make judicial decisions on patent infringement cases in the chemical field and other intellectual property cases.

 

Shimako mainly represents companies in patent infringement cases, lawsuits seeking cancelation of JPO decisions, invalidation trials as well as opposition cases, using her experience and expertise at the JPO and the Tokyo District Court. She also advises clients in connection with contentious issues in Germany using her experience in the Higher Regional Court of Dusseldorf and European Patent Office.

 

Shimako has also taught “prosecution practice and exercise of patent rights” at the Waseda University LL.M. program in Intellectual Property Law since 2018. She frequently gives lectures for the JPO, IP organizations, EPO, and client companies.

Memberships

Japan Patent Attorneys Association

AIPPI

Asian Patent Attorneys Association

German-Japanese Association of Jurists

VPP (Vereinigung von Fachleuten des Gewerblichen Rechtsschutzes)

Publications and Articles

・Damages in patent infringement lawsuits in Germany”, Patent, Special Edition No.18, ‘Study on Damages – Further Study-‘ (December 2017)

・”Proof of satisfaction of the numerically limited requirement where measuring method is at issue –Mainly in light of Maltitol crystal case-” The circle for studying intellectual property-Liber Amicorum for Pro. Tatsuki Shibuya, compiled by the committee for the Liber Amicorum, Japan Institute for Promoting Invention and Innovation (September, 2016)

・”Inventive step- its reasonable and reliable evaluation ” Practice and challenges of modern intellectual property law, Festschrift in honor of Judge Toshiaki Iimura, compiled by Ryuich Shitara et al. , Japan Institute for Promoting Invention and Innovation (July, 2015)

・”Recent developments on claim construction and doctrine of equivalents in Germany” Patent Vol.68 No.1 (January 2015) (Co-author)

・”Can Japan be an attractive jurisdiction for patent litigation? -Discussion based on comparison with German system-” AIPPI Vol.60 No.1 (January 2015)

・”New Commentary on Patent Law (Shin Chukai Tokkyo-ho) Vol.1, Articles 39″ Seirin Shoin(April 2011)

・”Enforcement of Patents in the Field of Life Science” Patent Studies, No.48 (September 2009) (Co-author)

・”Theory of Inventiveness in the Chemical Field -From a View of Foreseeability of the Effects of Inventions” Patent, Vol.61 (October 2008)

・”Enablement Requirements for Product Inventions Defined by Parameters -Biaxial Stretched Film Made of Aliphatic Polyester Case-” AIPPI Vol.52 No.9 (September 2007)

・”The Binding Effect of the Decision in the First Lawsuit Seeking Cancelation of the BOA Decision on the Second Decision” Theories and Practice of Intellectual Property Law Vol. 1 [Patent Act [2]] compiled by Toshiaki Makino et al. Shin-Nihon-Houki (2007) (Co-author)

Lectures / Presentations

2019

・”Protection of use patents for food”, January 27 and February 4, 2019, the 16th open forum of Central Research Institute of Intellectual Property at the Japan Patent Attorney Association

2018

・”Doctrine of Patent Exhaustion in Japan” Fordham IP Conference (New York), April 5-6, 2018

・”The latest developments on inventive step in the lawsuits and tips for the practice”, for a client company, February 7, 2018

2017

・”Latest Developments in Inventive Step in Japan and Case Law” The European Patent Office (Munich and The Hague), June 13 and 15, 2017

・”Latest Developments in Patent Litigation in Japan – Important Court Decisions for Exercising Patent Rights in Japan-” Discover IP Conference 2017(Seattle, Washington Palo Alto, California), February 7 and 9,2017

2016

・“Latest Developments in Patent litigation in Japan -with a specific focus on the doctrine of equivalents-“, German-Japanese Associates of Jurists (Munich), Jun. 28, 2016

・“Patent Litigation in Germany –Recent Developments in Doctrine of Equivalents and German Practice from a viewpoint of Practitioner”, Intellectual High Court (Tokyo), May 27, 2016

・“Priority System in Japan -What US applicants should know when claiming priority in Japan?-“, AIPLA Spring Meeting (Minneapolis), May 19, 2016

・“Japanese Patent Litigation Practice and Recent Developments in IP “, Seminar organized by a Law Firm in Korea (Seoul), Mar. 4, 2016

・”Recent Supreme Court Decisions on Product-by-Process Claim”, AIPLA Mid-Winter Meeting (La Quinta), Jan. 26, 2016

2015

・“Tips for Preparing Patent Specifications and Written Arguments in the Field of Pharmaceuticals and Chemicals- Teachings of Court Decisions“, Client Company (Tokyo), Aug. 24, 2015

・“Practice for Litigationeeking Cancelation of the JPO Decisions and Recent IP High Court decisions “, Benrishi Club (Tokyo), Jun. 30, 2015

・”Medical Use Patent in Japan-Tips for Obtaining and Enforcing Patent”, Fordham IP Conference (Cambridge), Apr. 8-9, 2015

・“Practice for Litigationeeking Cancelation of the JPO Decisions and Recent IP High Court decisions”, Japan Intellectual Property Association (Tokyo), Feb. 6, 2015

・”Trends Relating to Patent Infringement Litigation in Japan: Five Good Reasons to File Lawsuits in Japan”, AIPLA Mid-Winter Meeting (Orlando), Jan. 27, 2015

2013

・“Recent Developments in Patent Infringement Lawsuits in Japan”, IIPTI-CIPTC-INPIT Joint Seminar on Intellectual Property (Seoul), Sep. 4, 2013

・“Tips for Preparing Patent Specifications and Written Arguments – Teachings of Court Decisions“, Benrishi Club (Tokyo), Aug. 8, 2013

・“Battles Over Standards for Finding Inventive Step -On Which Points Do the IP High Court and JPO Emphasize?-“, APAA Joint Meeting (Seoul), Aug. 3, 2013

・“FRAND Defense Case in Japan -Comparison with Korean Case-“, CASRIP High Technology Protection Summit (Seattle), Jul. 26-27, 2013

・“Japanese View about Subject Matter Eligibility of Gene Patents -Should the bar be raised?-“, Fordham IP Conference (New York), Apr. 4-5, 2013

2012

・“Case Study of Patent Infringement Lawsuits“, Japan Institute for Promoting Invention and Innovation (Tokyo), Dec. 4, 2012

・”Has Japan become a patentee-friendly forum?”, German-Japanese Associates of Jurists (Munich), Oct. 23, 2012

・”Has Japan become a patentee-friendly forum?”, Fordham IP Conference (New York), Apr. 12-13, 2012

2011

・”IP Prosecution and Enforcement in Japan”, German-Japanese Association of Jurists (Hamburg), May. 4, 2011

・”Recent Developments in Inventiveness in Japan”, Fordham IP Conference (New York), Apr. 28-29, 2011

2010

・”Die Erfinderische Tätigkeit in Japan”, VPP (Rostock-Warnemünde), May 6-7, 2010

・”Development in Description Requirement in Japan”, Fordham IP Conference (New York), Apr. 8-9, 2010

・“Overview of Patent Infringement Lawsuits “, Japan Fair Trade Commission (Tokyo), Jan. 29, 2010

2009

・“Recent Developments in Inventive Step “, Benrishi Club (Tokyo), Sep. 1, 2009

・”Recent Decisions Regarding Pharmaceutical Patents in Japan”, Fordham IP Conference (Cambridge), Apr. 15-16, 2009

・”Discussion over Patentable Subject Matter in Japan”, IP Academy (Singapore), Jan. 9, 2009

2008

・”Patent Exhaustion Doctrine in Japan; In the light of recent supreme court decision”, IP Academy (Singapore) and Fordham IP Conference (New York), Mar. 26, 2008

2007

・”Enablement Requirement for product patents having limitation of parameter”, AIPPI Japan (Tokyo), Jun. 27, 2007