About the Contributors
Introduction (Chapter 1)
Ms. Eun-Joo Min is Director of the WIPO Judicial Institute. Prior to her current position, she headed the policy and international cooperation work of the WIPO Building Respect for IP Division, and the legal development section of the WIPO Arbitration and Mediation Center. Ms. Min was a member of the Expert Advisory Group of the Medicines Patent Pool from 2011 to 2018, and is the author of a number of publications on IP enforcement and dispute resolution, including a chapter on cross-border intellectual property enforcement in The Oxford Handbook of Intellectual Property Law (Oxford University Press, 2018). Ms. Min holds a Ph.D. in law from Yonsei University in the Republic of Korea, and was a Fulbright Scholar at the University of Michigan Law School, USA. She taught law at Yonsei University prior to joining WIPO, and was an Adjunct Professor at Sogang Law School in 2013 and 2014.
Australia (Chapter 2)
Justice Annabelle Bennett studied science at the University of Sydney, where she completed a PhD in cell biology, before studying law at the University of New South Wales. Justice Bennett went on to practice as a barrister, later specializing in intellectual property. Between 2003 and 2016, Justice Bennett served as a Judge of the Federal Court of Australia, sitting on many intellectual property cases at first instance and on appeal. She has also served as President of the Copyright Tribunal of Australia. Justice Bennett chaired the WIPO’s Advisory Board of Judges from 2018 to 2022. Justice Bennett has returned to the Bar and practices as a barrister (advisory only), a mediator, and an arbitrator. Justice Bennett is a Fellow of both the Australian Academy of Science and the Australian Academy of Law.
Justice Stephen Burley was appointed to the Federal Court of Australia in 2016. As a Judge in the Intellectual Property National Practice Area, he hears many intellectual property cases at first instance and on appeal. Justice Burley practiced at the Bar from 5 Wentworth Chambers, Sydney, from 1993 until 2016. He was appointed Senior Counsel in 2007. While at the Bar, Justice Burley practiced commercial law, specializing in patent, copyright, trademark, design, and confidential information cases. Many of Justice Burley’s patent cases involved pharmaceutical, telecommunications, or other high-tech subject matter. Justice Burley regularly contributes to publications and events hosted by WIPO and frequently presents and publishes on intellectual property subjects in Australia and abroad.
Mr. Robert Clark’s broad practice from 5 Wentworth Chambers spans intellectual property, general commercial litigation, tax, and administrative law. He has appeared in the Federal Court and High Court and Courts and Tribunals in New South Wales, South Australia and Western Australia. Mr. Clark has been recognized in Best Lawyers in Australia for his expertise in both litigation and IP law. Mr. Clark completed a Bachelor of Civil Law at the University of Oxford, graduating with a distinction average, and he received the Law Faculty Prize for International Intellectual Property. Prior to this, he completed a Bachelor of Arts and Bachelor of Laws (LLB) from the University of Sydney with first-class honors and received the Minter Ellison Prize for IP. Mr. Clark previously worked as a solicitor in the intellectual property teams at Allens Linklaters and as an associate to Honorable Justice Cowdroy AO on the Federal Court of Australia.
Ms. Cynthia Cochrane specializes in patent cases at 5 Wentworth Chambers, with expertise in vaccines and biological medicines, and commercial cases, including competition law. Ms. Cochrane appears regularly in the Federal Court, at trial and on appeal, and at the Patent Office. Her High Court experience spans over 15 years, and she recently addressed a six-member bench in relation to the patentability of computer-implemented inventions. She appears in the New South Wales Supreme Court and conducts examinations for the competition regulator regarding potential cartel conduct. Ms. Cochrane is recognized in Chambers Asia-Pacific, Best Lawyers, Doyles, and Legal 500. She was a solicitor at Allens Linklaters, articled to Prof. Bob Baxt AO in competition law, and, prior to her law career, was an investment banker at Macquarie Bank.
Mr. Julian Cooke specializes in intellectual property law, including trade practices, from 5 Wentworth Chambers. His expertise spans patents, trademarks, copyright, designs, confidential information and consumer protection. Mr. Cooke frequently represents clients in the pharmaceutical, chemical, telecommunications, mining, media, and consumer goods industries. He has appeared in a number of leading intellectual property cases in the High Court and the Federal Court of Australia.
Ms. Anna Elizabeth’s broad commercial practice from 5 Wentworth Chambers has considerable experience in complex commercial disputes and her clients include the mining and energy industries. In addition to Commerce and Law degrees, Ms. Elizabeth holds a Master of Energy and Resource Law from the University of Western Australia, where she finished with the highest mark in her course and received the Johnson Winter and Slattery Prize in Law and the Clayton Utz Postgraduate Award for Energy and Resources Law. She is a member of the Energy & Resources Law Association and a reporter for the Australian Resources Law Reports. Prior to commencing at the Bar, Ms. Elizabeth was a litigator in the commercial disputes team at Arnold Bloch Leibler and served as an Associate to Foster J in the Federal Court of Australia for 18 months.
Mr. Joseph Elks has a broad practice from 5 Wentworth Chambers and specializes in all areas of intellectual property, complex commercial disputes, sports law, defamation and competition law. Mr. Elks appears in the Federal Court as well as in the New South Wales Supreme Court and lower courts and tribunals. He is recognized in Doyle’s Guide as a “recommended” junior counsel in intellectual property litigation. Prior to being called to the Bar, Mr. Elks was a Senior Associate at Herbert Smith Freehills in Sydney and a Senior Associate at a leading firm in New York. He obtained his Bachelor of Laws (Hons I) and Bachelor of Commerce from UQ, receiving the Freehills Prize in. He also has a Master of Laws from New York University (NYU), where he attended as a Hauser Global Scholar, graduating first in NYU’s Competition Law and IP program.
Mr. Andrew Fox’s practice from 5 Wentworth Chambers focuses on intellectual property and commercial litigation. His intellectual property experience spans the full spectrum, including patents, trademarks, copyright, designs, confidential information and consumer protection. His court appearances include a number of leading cases in the High Court, and the Federal Court of Australia, and in patent and trademark oppositions held at IP Australia. Mr. Fox’s patent experience spans a range of technology fields and his general commercial litigation practice has brought him before the Supreme Court of New South Wales, the District Court of New South Wales, and interstate courts. Mr. Fox is recognized in Chambers and Partners Asia Pacific as a leading barrister in IP; Doyle’s Guide to Australian Leading Lawyers; Best Lawyers in Australia; The World’s Leading Trademark Professionals; and The Legal 500 – Australian Bar – IP. He is also admitted to practice as a barrister in New Zealand.
Ms. Sue Gilchrist is the leader of the Herbert Smith Freehills IP group in Australia, a member of the HSF Global board, and chair of the HSF Global Pro Bono & Responsible Business Council. Ms. Gilchrist is a senior IP litigation partner, ranked one of the top practitioners by the leading legal directories, including Chambers & Partners, Legal 500, Benchmark Litigation, IAM Patent 1000, and Managing IP: IP STARS. She is one of only six practitioners in Australia to be recognized in the Top 100 Women in Litigation (2021 and 2022) Benchmark Litigation Asia-Pacific. Ms. Gilchrist has a particular focus on representing clients in high-tech patent litigation and leads HSF’s global High Tech Patent focus group. Sue is also a member and previous chair of the IP Committee of the Law Council of Australia, a body that engages with the government on intellectual property policy issues.
Mr. Timothy Gollan is a solicitor in the Intellectual Property Disputes team at Herbert Smith Freehills. He has been involved in working on a range of intellectual property disputes involving patents, trademarks and copyright across a range of fields, including pharmaceuticals, telecommunications, mining, and mechanical devices. Previously, Mr. Gollan worked as an Associate to Justice Stephen Burley in the Federal Court of Australia. He has a Bachelor of Law and a Bachelor of Engineering from the University of Sydney.
Mr. Samuel Hallahan practices commercial litigation from 5 Wentworth Chambers, with particular expertise in intellectual property. Before coming to the Bar, he practiced as a solicitor for seven years in intellectual property and general commercial litigation, where his work included matters for large pharmaceutical and commercial clients. At the Bar, Mr. Hallahan has appeared in first instance and appeal proceedings in the Federal Court of Australia, and in the Federal Circuit Court, the Supreme Court of New South Wales, the Local Court of New South Wales, the New South Wales Civil and Administrative Tribunal (NCAT), and in opposition proceedings at IP Australia. In 2020, 2021, and 2022, Mr. Hallahan was listed in Doyle’s Guide “Leading Intellectual Property Law Junior Counsel – New South Wales.” In 2021, he was listed in Doyle’s Guide “Leading Intellectual Property Law Junior Counsel – Australia.”
Ms. Irini Lantis is a senior lawyer in Gilbert + Tobin’s Tech and IP practice. She has extensive experience in patent litigation proceedings before the Federal Court and the High Court of Australia. Ms. Lantis has litigated patents across a range of industries, including mining and resources, gaming, ecommerce, and life sciences. She also has extensive experience in the commercialization and transactional aspects of intellectual property.
Mr. David Larish received his LLB from the University of New South Wales (UNSW) (Hons Class I, University Medal) and his LLM from New York University (Frank T. Diersen prize). His practice from 5 Wentworth Chambers focuses primarily on intellectual property and commercial disputes. He has been briefed in a number of the leading intellectual property cases in the High Court and the Federal Court. He regularly appears in the Federal Court, Supreme Court and at IP Australia. Mr. Larish is recognized in Doyle’s Guide as a ‘pre-eminent’ junior counsel in intellectual property in Australia and a ‘leading’ junior counsel in Technology, Media & Telecommunications. He is also recognized in Chambers and Partners Asia Pacific, Best Lawyers in Australia and The Legal 500. Before coming to the Bar, Mr. Larish was a Judge’s Associate at the Federal Court and a solicitor at King & Wood Mallesons.
Mr. John Lee is a partner in Gilbert + Tobin’s Tech + IP group and leads the firm’s Patent practice. He has both legal and technical qualifications and has many years’ experience dealing with all aspects of intellectual property law. Mr. Lee has a particular focus on patent litigation and trade secrets across a range of industries, including life sciences, resources and digital technologies.
Ms. Angela McDonald practices from 5 Wentworth Chambers, in all aspects of intellectual property, including patents, trademarks, copyright, designs and consumer protection. She has been featured in Doyle’s Intellectual Property List since 2021. Ms. McDonald regularly appears in the Federal Court of Australia, including the Full Court, various state Supreme Courts, the Patent Office, and the Trade Mark Office. Prior to coming to Bar, she was a solicitor in two specialist intellectual property firms. She was also an Associate to Justice Nicholas of the Federal Court of Australia. Ms. McDonald graduated with first-class honors in law from the University of New South Wales. She is also on the Editorial Panel for the Australian Intellectual Property Law Bulletin, a co-author of the LexisNexis Australia Copyright & Designs chapter on International Copyright, and the author of a number of publications on intellectual property law.
Mr. Benjamin Mee specializes in intellectual property law from 5 Wentworth Chambers, and holds a BSc (Biochemistry)-LLB (Hons I, University Medal) and an LLM in Commercial Law (Hons I) from Cambridge University. Prior to being called to the Bar in 2014, he practiced as a solicitor with Allens in intellectual property and competition and consumer law, and was an Associate to former Chief Justice RS French AC of the High Court. At the Bar, Mr. Mee has developed a busy trial and appellate practice, with particular strength in patent matters in the pharmaceutical, biotechnology, and information technology/software sectors, as well as appellate work. He regularly appears led and unled in the Federal Court, Patent Office, and Trade Marks Office. He is recognized in Chambers and Partners, Doyle’s Guide, and Best Lawyers Australia.
Ms. Anna Spies’ practice from 5 Wentworth Chambers includes consumer law, confidential information, restraints of trade, media and defamation, commissions and inquiries, and a focus on intellectual property litigation. Her experience in complex cases spans copyright, patent and trademark law at the Bar and as a solicitor. Before coming to the Bar in 2016, Ms. Spies was a Senior Associate in King & Wood Mallesons’ IP litigation team and an Associate to Justice Annabelle Bennett at the Federal Court of Australia. Doyle’s Guide lists Ms. Spies as ‘Recommended’ junior counsel in New South Wales for intellectual property and for Technology, Media & Telecommunications. She received the Christopher Gee QC Memorial Prize for evidence and advocacy for the August 2016 Bar Practice Course. Ms. Spies received her LLM in Media and Technology (with excellence) and LLB (with first class honors) from the University of New South Wales.
Mr. Edward Thompson practices from 5 Wentworth Chambers, principally in intellectual property matters but has experience in a broad range of commercial disputes. He has degrees in law and arts from the University of Melbourne (2008) and a Master of Laws from University College London (2011), graduating as the top student in the LLM program. Before commencing at the Bar, Mr. Thompson was an Associate to Justice John Nicholas at the Federal Court of Australia, and a solicitor for over seven years in the intellectual property department of a national law firm. He was also a lecturer in corporation law at the University of Melbourne.
Mr. Byron Turner is a solicitor in the Intellectual Property Disputes team at Herbert Smith Freehills (HSF) and advises clients on trademark, patent and copyright disputes in the Federal Court. He has further experience advising clients on consumer law issues, as well as legal issues arising from new technologies, including digital assets. Mr. Turner has a Bachelor of Mathematics Advanced degree from the University of Wollongong, majoring in applied statistics and risk management & insurance. He is Byron is a member of HSF’s High Tech Patent focus group, and of HSF’s Digital Law Group, and was a recipient of the HSF Digital Scholar Fellowship (2021), reflecting his interest and skills in the high tech field.
Brazil (Chapter 3)
Judge Regis de Castilho Barbosa Filho sits on the 41st Civil Court of the Central Forum of the Capital of São Paulo. He graduated in law from the University of São Paulo.
Judge Luís Felipe Bedendi serves as the Assistant Judge of the 1st and 2nd Business and Arbitration Courts of São Paulo. He received his Master’s Degree in Commercial Law from the University of São Paulo and graduated in law from the University of São Paulo.
Judge Maria Rita Rebello Pinho Dias sits on the 3rd Bankruptcy and Judicial Recovery Court of the Capital of São Paulo State Court. She received her Master in Constitutional Law from the Pontifical Catholic University of São Paulo and PhD in Civil Procedure from the University of São Paulo. She graduated in law from the University of São Paulo.
Judge Eduardo Azuma Nishi sits on the São Paulo State Court, and is a member of the First Specialized Business Law Chamber. Judge Azuma Nishi received his Master in Business Law from the Pontifical Catholic University of São Paulo. He also graduated in law from the University of São Paulo and in Business Administration from the Getúlio Vargas Foundation in São Paulo, Brazil.
Judge João de Oliveira Rodrigues Filho sits on the 1st Court of Bankruptcy and Judicial Reorganizations of the Capital of São Paulo. He received his specialization in Business Law from the Paulista School of Magistrates (Escola Paulista da Magistratura (EPM)) and is a professor of the postgraduate course in Bankruptcy and Judicial Recovery at the Faculdade Autônoma de Direito (FADISP).
Judge Leandro Galluzzi dos Santos sits on the Criminal Court of Jaboticabal in the state of São Paulo. He graduated in law from the University of São Paulo.
China (Chapter 4)
Judge Du Weike is a Senior Judge and has served on the Intellectual Property Rights Division of the Supreme People’s Court of China since 2010. Prior to his appointment, he worked as a patent examiner at the Board of Reexamination of the State Intellectual Property Office of China from 2004 to 2009, handling over 150 patent administrative cases. Judge Du has rendered a number of landmark intellectual property cases in China and has published more than twenty articles on intellectual property law. Judge Du holds a BA in Electric Engineering and Law from Huazhong University of Science and Technology, a Juris Master Degree from Xiamen University, and an LLM Degree from Temple University, which he attended as a DuPont Scholar.
Judge He Juan was appointed as a Senior Judge of the Intellectual Property Court of the Supreme People’s Court of China in 2020. Judge He conducted her postdoctoral research at Tsinghua University and the University of Turku, Finland. From 2013 to 2020, she served in the following roles at Tsinghua University: lecturer, associate professor, and Deputy Director of Social Science and Management at the Shenzhen International Graduate School, and Deputy Director of the Office of Technology Licensing. She has also led a number of research projects in the area of intellectual property, and authored numerous publications on intellectual property topics, including monographs, books (as editor-in-chief or co-translator) and journal articles. Judge He holds a Bachelor of Engineering degree from the Hefei University of Technology, and degrees in law from Tsinghua University (Bachelor and Master of Law) and Peking University (PhD).
Germany (Chapter 5)
Dr. Thorsten Bausch is a German and European patent attorney. He is a partner in HOFFMAN EITLE’s Chemistry and Biotech practice group and focuses on European Patent Office Opposition and Appeal Proceedings, as well as German revocation and infringement proceedings. Dr. Bausch represents clients through all strata, from startups to Fortune 500 companies, as well as some of the most prestigious universities and research institutions in the world. He has particular expertise in the fields of pharmaceuticals, immunology, and polymers. Many pharmaceutical patents of major commercial value have been entrusted to him and his team at HOFFMANN EITLE. In addition to his client service, Dr. Bausch has edited the book series “Nichtigkeitsrecht-sprechung in Patentsachen,” a collection of decisions in patent nullity matters from the German Federal Patent Court and Federal Court of Justice. In his personal time, Dr. Bausch regularly blogs on www.kluwerpatentblog.com on patent policy issues and interesting decisions.
Justice Klaus Grabinski was appointed President of the Court of Appeal of the Unified Patent Court in 2022, and serves as the chairperson of the Presidium. Prior to this role, he served on the German Federal Court of Justice’s 10th Civil Division, including as the Deputy Presiding Justice of the Division. Before joining the German Federal Court of Justice, he held a number of judicial roles, including as a judge at the Düsseldorf Higher Regional Court, and Presiding Judge of a patent litigation division at the Düsseldorf District Court. Justice Grabinski studied law at the Universities of Trier, Geneva, and Cologne and was a university assistant in Trier. He co-authored a commentary on the European Patent Convention (Benkard, Europäisches Patentübereinkommen, 3rd ed., 2019) and a commentary on the German Patent Law (Benkard, Patentgesetz, 10th ed., 2015). He has authored many articles concerning patent law, civil procedure, and international private law.
Dr. Marcus Grosch is the managing partner of Quinn Emanuel Urquhart & Sullivan, LLP, in Germany. Dr. Grosch has more than 20 years of experience in patent litigation, in which he has represented clients from various technical fields before all major German courts, the German Patent and Trademark Office, as well as the European Patent Office. He holds degrees from the University of Mannheim (PhD in Law and JD equivalent) and Yale University School of Law (LLM). Dr. Grosch has authored books, treatises, and articles on patent law and civil procedure.
Mr. Klaus Haft As a German qualified attorney (Rechtsanwalt) and physicist (Master’s degree), Mr. Klaus Haft is a trial lawyer in the field of intellectual property law with particular emphasis on patent litigation. In addition, he advises on license agreements, research and development agreements, the law on employee inventions, and trade secrets. Mr. Haft studied in Würzburg and Munich. He wrote his diploma thesis at the European Organization for Nuclear Research (CERN), in Geneva. Mr. Haft has served as a member of the Board of the European Patent Lawyers Association (EPLAW) for seven years, the last two as its President, and currently serves as a member of the advisory board. In addition, he is President of the Licensing Executives Society (LES) Germany and a member of the Executive Board of the Munich IP Dispute Resolution Forum.
Dr. Julia Nobbe is Of Counsel at the Mannheim office of Quinn Emanuel Urquhart & Sullivan, LLP, and has developed an expertise in German patent litigation. She represents clients in patent infringement and nullity proceedings before the courts of first instance and before the courts of appeal. Dr. Nobbe graduated from the University of Konstanz, where she also worked as a research assistant at the Chair of Professor Dr. Karl-Heinz Fezer, before starting her legal clerkship at the Higher Regional Court of Karlsruhe. She obtained her doctorate degree (summa cum laude) from Munich University and has published on the subject of patent litigation in Germany. Dr. Nobbe’s varied practice includes working in international law firms, in a law firm that exclusively represents clients before the German Federal Court of Justice, and as in-house legal counsel in the intellectual property department of an international chemical company.
Judge Peter Tochtermann was appointed in 2022 as Judge of the Court of First Instance (local division Mannheim) of the Unified Patent Court and a member of its Presidium. Prior to this appointment, he served on the Regional Court of Mannheim, including as Presiding Judge of the Patent Chamber, and as a Mediator Judge. He also sat on the Patent Senate of the Higher Regional Court of Karlsruhe and served as a clerk of the German Federal Court of Justice. Judge Tochtermann has worked as a Research Fellow and Visiting Scholar at a number of institutions such as the Program on Negotiation at Harvard Law School. He holds a PhD in law from the University of Heidelberg, where he serves as a lecturer for IP law and is the recipient of several academic achievement awards.
India (Chapter 6)
Justice Madan B. Lokur, a graduate of Delhi University, was enrolled as a lawyer in 1977 and, in 1997, was designated a Senior Advocate. He was appointed Additional Solicitor General of India and a Judge of the Delhi High Court (1999). His judicial appointments include Acting Chief Justice of the Delhi High Court, Chief Justice of the Gauhati and Andhra Pradesh High Courts, the Supreme Court of India (2012–2018) and the Supreme Court of Fiji (2019). Justice Lokur served as: chairperson of the Supreme Court Mediation & Conciliation Project Committee; judge of the Supreme Court E-Committee for the computerization of the Indian courts; a one-man committee to improve the working of homes and organizations under the Juvenile Justice Act and Rules; and Executive Chairman of the Supreme Court Legal Services Committee and National Legal Services Authority. Currently, he has a professional chamber practice and is an independent arbitrator.
Justice Gautam Patel was appointed a judge of the Bombay High Court in 2013. Before taking judicial office, he practiced civil, commercial law and environmental law at the Bombay High Court and in the Supreme Court. In 2015, he was one the three persons from India cited among the 50 most influential persons in IP law by Managing IP. For nearly three years, he handled the bulk of the intellectual property work in the Bombay High Court and has delivered judgments on copyright, trademark, designs and patent law.
Justice Manmohan Singh was the Chairman of the Intellectual Property Appellate Board in New Delhi until his retirement in 2019. He was appointed judge of the High Court of Delhi in 2008 and served until his retirement in 2016. Justice Singh began his career as an advocate in 1980 and practiced trademark, copyright, and patent matters in the Delhi High Court and Supreme Court of India. He has attended many national and international seminars and presented a number of papers on intellectual property issues.
Justice Prathiba M. Singh was elevated as Permanent Judge of the High Court of Delhi in 2017. She joined the Bar in 1991 and appeared before the Supreme Court of India, High Court of Delhi, Telecom Disputes Settlement and Appellate Tribunal (TDSAT), IP Appellate Board (IPAB), and Indian Patent Office. Her advisory work includes streamlining the Copyright Office (amicus curiae, High Court of Delhi), streamlining patent examination processes (member, High-Level Committee), and intellectual property legislative amendments (Parliamentary Committees). Her honors include awards for best IP lawyer, Managing IP’s Asia Women in Business Law Award, and the 30 Most Powerful Business Women in India in 2018. After obtaining her LLB from the University Law College, Bangalore, Justice Singh received her LLM (ODASSS scholarship) from the University of Cambridge, where the Prathiba M. Singh Scholarship for LLM students was created in 2013. She serves on their Circle of Advisors for India.
Japan (Chapter 7)
Mr. Jonathan Dobinson is an Australian lawyer and adjunct researcher at the Research Center for the Legal System of Intellectual Property, Waseda University, Tokyo. He obtained Bachelor of Arts and Bachelor of Law degrees from the University of Wollongong, Australia; a Master’s degree in intellectual property from Hongik University, Republic of Korea; and is admitted as a lawyer in Australia. For over 25 years, he has provided legal policy, communications, and international relations advice to organizations in Australia and Asia, including as a senior lawyer, director of research and director of communications for Australian government agencies; as a consultant to Republic of Korea government agencies; and as a project manager, researcher, and editor for Japanese universities. His publications include History of Design and Design Law: An International and Interdisciplinary Perspective (Springer 2022), as a co-editor and co-author.
Mr. Makoto Hattori was admitted to the Japanese Bar and joined Abe, Ikubo & Katayama in 1998. In 2001, he was seconded to the Intellectual Property Policy Office in the Ministry of Economy, Trade and Industry (METI). From 2002 to 2004, after completing an LLM at the University of Pennsylvania Law School, he worked as a visiting researcher at the Max Planck Institute for Intellectual Property and Competition Law. He was admitted to the New York Bar in 2003. Mr. Hattori’s areas of expertise include litigation and contracts concerning patents, copyright, trademarks, and unfair competition law. His other roles include adjunct instructor at the Graduate School of Science and Technology, Keio University, from 2007 to 2018; visiting professor at the Graduate School of Law, Kobe University, since 2016; and Chairperson of the Intellectual Property Center of the Japan Federation of Bar Associations (JFBA) in 2021.
Ms. Izumi Hayashi is a founding partner of Sakurazaka Law Offices. She graduated from Waseda University Faculty of Law, and after passing the bar exam in 1983, worked as a public prosecutor before registering as an attorney with the Tokyo Bar Association. After working at a Tokyo-based law firm with an international practice and a U.S. law firm in San Francisco, she was a partner at Eitai Sogo Law Office (Tokyo) from 1993 to 2014. Ms. Hayashi has served as the President of the Japan Intellectual Property Arbitration Center (2011–2012) and the Chairperson of the Intellectual Property Committee of the Japan Federation of Bar Associations (2013–2014). She is also the Executive Director of IP Lawyers Network Japan, an outside director of several listed companies, a member of the Regulatory Reform Council of the Cabinet Office, and a member of the Intellectual Property Strategy Headquarters of the Cabinet Office.
Ms. Mami Hino is a Japanese patent attorney and a partner at Abe Ikubo & Katayama. She is admitted to practice in New York and has represented the world’s leading technology companies for many years in litigation and transactions. Ms. Hino’s practice is focused on invalidity trials and resultant IP High Court appeals, cross-border infringement litigation, strategic patent prosecution, client counseling, and opinions. Due to her background as a registered pharmacist, Ms. Hino has extensive experience representing innovative pharmaceutical companies to protect their patents, including by filing patent term extension applications, defending patents in invalidity trials and IP High Court appeals, and filing preliminary injunction requests and patent infringement suits against generic drug companies. She obtained a Bachelor of Science degree in pharmaceutical sciences from Kyoto University and a JD from Seton Hall University School of Law.
Mr. Yoshinori Horigome is a founding partner of Sakurazaka Law Offices. He has extensive experience advising on intellectual property matters, including patent, copyright, trademark and unfair competition law. He also practices in the areas of corporate and commercial law (specifically with respect to employment and contract law issues) as well as litigation. Mr. Horigome has represented various companies and individuals in Japan in a variety of industries, including trading, computer software, communications, chemicals, construction and art. He has a Bachelor of Mathematics from the Tokyo Institute of Technology, one of Japan’s most prestigious national universities of science, and holds an LLM degree from Duke University School of Law (2004).
Mr. Eiji Katayama is an experienced practitioner of patent litigation in Japan. He received a Bachelor of Engineering from Kyoto University in 1973 and a Bachelor of Law from Kobe University in 1982. He joined Abe, Ikubo & Katayama in 1984 and has been a partner since 1991. He is admitted to practice in Japan and in New York. He has worked with the pharmaceutical industry and represented clients in many patent infringement cases concerning various technical fields. Mr. Katayama has served as President of the International Association for the Protection of Intellectual Property (AIPPI) Japan, the Chairman of the Intellectual Property Committee of the Japan Bar Association, and the President of the Tokyo IP American Inns of Court. He is a professor at the Munich Intellectual Property Law Center (MIPLC) where he teaches Japanese patent law.
Judge Takafumi Kokubu graduated from the Faculty of Law, University of Kyoto. He served as a judge of the Tokyo District Court (Intellectual Property Division, 2005–2007) and of the Intellectual Property High Court (2019–2020). Since 2020, he has been the Presiding Judge of the Intellectual Property Division of the Tokyo District Court and a member of the Trademark System Subcommittee of the Ministry of Economy, Trade and Industry (METI). While serving as a judge, he was posted to Hanoi, Viet Nam, as a long-term expert on the Japan International Cooperation Agency project and assisted the legal and judicial development of Viet Nam for two years.
Mr. Toru Matsuoka graduated from the University of Tokyo and joined the Japan Patent Office (JPO) in 2003. From 2003 to 2022, he worked in various roles, including Patent Examiner and Administrative Patent Judge in the field of Polymer chemistry, Electrochemistry, Biotechnology; Deputy Director, Legislative Affairs Office (Patent Act, etc.); Deputy Director, Examination Standards Office (Patent Examination Guidelines etc.); and Deputy Director, Trial and Appeal Division. Since April 2022, he has been the Associate Managing Examiner, Material Processing Division, and has been responsible for examination management issues in the JPO.
Professor Christoph Rademacher is at Waseda University School of Law. He teaches graduate- and undergraduate-level courses in the field of business law and intellectual property law, in both Japanese and English. His research focuses on the protection of technical innovation by means of patents and other rights. His publications include Patent Enforcement in the USA, Germany and Japan (Oxford University Press, 2015) as a co-author; Japanese Design Law and Practice (Wolters Kluwer, 2021); and History of Design and Design Law: An International and Interdisciplinary Perspective (Springer, 2022) as a co-editor and co-author. He was the recipient of the 2019 Waseda University Research Award for High-Impact Publications. He is admitted to practice in New York and in the Republic of Ireland. He obtained his first degree in business and law and his doctorate degree in law from the University of Siegen, Germany, and an LLM from Stanford Law School.
Ms. Yuriko Sagara studied at the University of Tokyo Faculty of Law (LLB) and the Legal Training Institute, and on graduation passed the Japanese Bar Examination. She went on to be admitted to the New York State Bar after additional studies at Duke University School of Law. Ms. Sagara has been a partner at Nakamura & Partners since 2013. She has experience in a wide variety of intellectual property legal areas, especially intellectual property litigation and contracts. She is a member of various organizations and committees, such as the Intellectual Property Center of the Japan Federation of Bar Associations (JFBA), the Copyright Law Association of Japan, the Japan Trademark Association, and the Asia Patent Attorneys Association, among others. She has also served as a panelist at the Judicial Symposium on Intellectual Property several times.
Mr. Yasufumi Shiroyama is a partner at Anderson Mori & Tomotsune, a general practice law firm in Tokyo comprising over 420 lawyers and patent attorneys. He graduated from the University of Tokyo, Faculty of Law in 1992 and was admitted to the bar in 1994. He also obtained an LLM from University of California Davis Law School. Mr. Shiroyama has focused on domestic and global intellectual property dispute resolution in various forms, including patent, trademark, copyright and trade secrets. His practice also includes the transactional aspects of intellectual property, such as licensing and assignment. In addition, from 2004 to 2022, Mr. Shiroyama taught courses, including on intellectual property law, at the University of Tokyo School of Law, and in 2017, he served as Chairperson of the Intellectual Property Committee of the Japan Federation of Bar Associations (JFBA).
Former Chief Judge Ryuichi Shitara graduated from the Faculty of Law, University of Tokyo. He served as a judge of the Tokyo District Court (Intellectual Property Division, 1979–1983, 1986–1990, 1993–1997) and Tokyo High Court (Intellectual Property Division, 2001–2004). From 2004 to 2007, Judge Shitara was the Presiding Judge of the Intellectual Property Division of the Tokyo District Court, and from 2011 to 2014, Presiding Judge of the Tokyo High Court and the Intellectual Property High Court. From 2014 to 2017, he served as Chief Judge of the Intellectual Property High Court. While serving as Presiding Judge and Chief Judge, he adjudicated four Grand Panel cases, including the famous standard essential patent and doctrine of equivalents cases. After retiring from the Court, he was an attorney-at-law (Mori Hamada & Matsumoto, 2017–2018) and is currently Joint Partner & Chairman (SOEI Patent & Law Firm, from 2018–present).
Judge Aya Takahashi graduated from the Faculty of Law, University of Tokyo, and holds an LLM from Harvard Law School. She served as a judge of the Tokyo District Court (Intellectual Property Division) from 2013 to 2016, and as a judge of the Intellectual Property High Court from 2018 to 2021. During her time at the Intellectual Property High Court, she served as a member of the panel in a Grand Panel case concerning the calculation of the amount of damages in patent infringement cases. Judge Takahashi currently serves as a presiding judge of the medical division of the Sendai District Court.
Mr. Hideki Takaishi is an attorney at law and patent attorney at Nakamura & Partners (since 2002) and focuses on industrial property rights law, trademark law, design law, unfair competition prevention law, copyright law, antimonopoly law (antitrust), contract law, joint development and development consignment, corporate legal affairs and international transaction law. He graduated from the Faculty of Engineering at the Tokyo Institute of Technology and went on to complete his graduate studies there. Later, he studied at the Duke University School of Law, where, upon completion of his program, he passed the California Bar Exam. He also passed the U.S. Patent Exam. Mr. Takaishi is a member of various domestic and international organizations, including the International Association for the Protection of Intellectual Property (AIPPI) Japan, the Japan Academic Society for Ventures and Entrepreneurs (JASVE), and Japan Customs as an expert advisor.
Judge Koichi Tanaka graduated from the Faculty of Law, University of Tokyo. He was appointed a judge of the Tokyo District Court in 1995 and later as a judge of the Tokyo District Court (Intellectual Property Division) (2000–2003 and 2012–2013) and the Intellectual Property High Court (2006–2009). From 2013 to 2017, he was a Judicial Research Official of the Supreme Court (Civil/Intellectual Property). From 2019 to 2022, Judge Tanaka was the Presiding Judge of the Intellectual Property Division of the Tokyo District Court. He has adjudicated cases at the Tokyo High Court (Civil Division), Morioka District/Family Court, Saku Branch of Nagano District/Family Court and Naha Family/District Court. He was a visiting scholar at the State Court of New Jersey, United States of America (7 months) and the Max Planck Institute in Germany (6 months).
Mr. Koichi Tsujii graduated from the Faculty of Law, Chuo University (1979) and Cornell Law School (LLM, 1989). He is admitted to the bar in Japan and the State of New York. He has experience in a wide range of intellectual property areas, including patents, trademarks, copyright, and unfair competition, and he represents clients in matters relating to the enforcement of intellectual property rights. In particular, he has a wide range of experience in international patent litigation. Mr. Tsujii has been a partner at Nakamura & Partners since 1993. Since June 2019, he has been the President of the International Association for the Protection of Intellectual Property (AIPPI) Japan; and since October 2020, he has been a member of the Intellectual Property Mediation Panel appointed by the Tokyo District Court.
Mr. Masayuki Yamanouchi is a partner at Anderson Mori & Tomotsune, a general practice law firm in Tokyo comprising over 420 lawyers and patent attorneys. He holds a Master’s degree in science, and specializes in intellectual property matters and legal issues relating to cutting-edge technologies. Mr. Yamanouchi has been engaged in a number of patent infringement lawsuits and other intellectual property related matters for more than ten years. His main focus is the pharmaceutical industry, patent infringement actions, licensing negotiations, joint development projects and technology transfer projects. He has expertise and experience in other forms of intellectual property, including trademarks, copyright and trade secrets. In addition, with his experience in the U.S. (both at a law school and at a law firm focusing on patent matters), Mr. Yamanouchi provides advice to clients involved in patent lawsuits in the U.S.
Mr. Takashi Yamashita joined the Japan Patent Office (JPO) in 1988 after obtaining a Master’s degree in science in physics from the University of Tokyo. He worked as a Patent Examiner and Administrative Patent Judge in technological fields such as physics, optics, and semiconductors. He has also worked on various policy issues and international affairs projects related to intellectual property, including patent law revisions, and WIPO and WTO negotiations. Mr. Yamashita for WIPO as Director of Patent Cooperation Treaty International Cooperation from 2010 to 2013. Afterwards, he took on various roles at the JPO: Senior Director, Applied Optics Division; Director, Trial and Appeal Division; Director General, Patent Examination Department in Electronics and ICT; and Director General, Trial and Appeal Department. He now works as a patent attorney after leaving the JPO in 2021.
Republic of Korea (Chapter 8)
Mr. Sang-Wook Han is a senior attorney at Kim & Chang. He is one of the most experienced intellectual property lawyers in the Republic of Korea. For over thirty years, Mr. Han has advised multinational companies in worldwide patent disputes, IP portfolio management and major licensing negotiations. His expertise has been repeatedly recognized by Chambers, Who’s Who Legal and Managing Intellectual Property. He served as the president of the Korean Intellectual Property Lawyers Association and was a member of the National Intellectual Property Committee. He co-authored “Future of Intellectual Property Right” with Professor Nobuhiro Nakayama (published in the Republic of Korea and Japan in 2011). Mr. Han earned an LLB and an LLM from Seoul National University, as well as an LLM from Harvard Law School. He is a member of the Korean Bar and the New York Bar.
Judge Kwangnam Kim is currently at the Seoul High Court and was at the Patent Court until early 2021. During his years at the Patent Court, he also served as the Director of the International IP Law Research Center. He first took the bench in 2010 at the Daegu District Court and then the Suwon District Court. Judge Kim earned a Bachelor’s degree in law from Yonsei University and received an LLM Certificate in Law & Technology from Berkeley Law School. He also did fellowships as a visiting judge in the California Superior Court and the U.S. District Court for the Northern District of California. His published articles include The Challenges and Innovation of Patent Law in the AI Era (2021). He currently serves in the advisory committee of the Korean Intellectual Property Office.
Judge Kyuhong Lee is a Presiding Judge of the Seoul High Court. After taking the bench in 1995, he served as a judge at the Seoul High Court (Intellectual Property Division) and as a Presiding Judge at the Patent Court, among others. He also worked as a constitutional researcher at the Constitutional Court and taught judges at the Judicial Research and Training Institutes. He received two Bachelor’s degrees (Economics and Law) and his PhD in Intellectual Property Law from Yonsei University. He was a visiting scholar at the University of New Hampshire Franklin Pierce Law Center. Judge Lee served as the Chairman of Korea Patent Law Society. He authored Korean Business Law (IP chapter; published in the U.S. in 2010); Copyright and Infringement (2016) and articles, such as “A Review on the Environmental Right, Science & Technology and Patent System in Ecological Transition” (2021).
Ms. Unjung Park has mainly practiced intellectual property and product liability laws since joining Kim & Chang in 2022. She was previously a senior researcher at the International IP Law Research Center of the Patent Court, where she co-authored comparative research papers on indirect patent infringement and selection invention, and a Korean-English IP Law Dictionary. She published articles, such as “Evidencing Consumer Perception with Surveys” (2021) and “Revisiting Inventive Step Standard of Selection Inventions” (2022). Ms. Park received a JD from George Washington University Law School, an LLM from American University, and a BA in Economics from Yonsei University. She is a member of the New York Bar.
United Kingdom (Chapter 9)
Lord Justice Colin Birss was appointed as a judge of the Court of Appeal of England and Wales and as Deputy Head of Civil Justice in 2021. Lord Justice Birss was called to the Bar in 1990 and practiced in intellectual property law. In 2010 he became the judge of what is now the Intellectual Property Enterprise Court (IPEC) and in 2013 was appointed to the High Court.
Mr. Andrew Bowler is joint head of patent litigation at Bristows LLP in London. He has acted for clients in intellectual property disputes for 25 years at first instance, in the Court of Appeal and before the Supreme Court. Mr. Bowler’s cases have covered a wide range of technologies, including complex mechanical and FMCG products, pharmaceuticals, mobile phones, automotives, electronics and medical devices. He also frequently coordinates cross-border patent litigation. Mr. Bowler is often asked to comment and lecture on intellectual property issues and is a regular speaker at international conferences on strategic considerations for European and international patent litigation.
Mr. Brian Cordery is a partner at Bristows. Since qualifying in 1996, Mr. Cordery has worked almost exclusively in the field of life sciences patent litigation, mainly for originators. Since 2001, Brian has authored an annual review of U.K. patent cases which is published in the CIPA Journal. Mr. Cordery lectures on patent litigation on the post-graduate diploma in intellectual property law and practice run by Oxford University and he presently sits on the Exam Board for this diploma. Prior to joining Bristows, Mr. Cordery studied law at Oxford University.
Ms. Anna Edwards-Stuart has a degree in Natural Sciences from the University of Cambridge and a doctorate in molecular biology from the University of Oxford. She was called to the Bar of England and Wales in 2002 and has practiced in intellectual property law in chambers at 11 South Square, Gray’s Inn, London since then. In 2019 she was appointed standing counsel to the U.K. Comptroller-General of Patents, Designs and Trade Marks.
Ms. Alice Hart was called to the Bar of England and Wales by the Inner Temple in 2018 and has practiced at Three New Square Chambers since 2019. Her practice spans all areas of intellectual property law, with a focus on patents. She has a First class degree in Biochemistry from the University of Oxford, and legal qualifications from City University London.
Ms. Roisin Higgins KC is a U.K. advocate, member of the Scottish Faculty of Advocates and a door tenant of 8 New Square, barristers’ chambers in London. She is a specialist in intellectual property and commercial law.
Ms. Morag Macdonald has been a partner in the Intellectual Property group of International law firm Bird & Bird since 1989. In that role she has conducted patent litigation in the UK and coordinated multi-jurisdictional patent litigation for over 30 years. She was co-head of the international IP group of Bird & Bird from 1995 to the end of 2022. She has a Master’s degree in Mathematics, Physics and Law from Newnham College Cambridge.
Madam Justice Denise McBride is a member of the Judiciary of Northern Ireland and a High Court Judge, dealing with civil, commercial and chancery matters, amongst other things.
Mr. Michael Tappin KC was awarded a first class degree in chemistry and a doctorate in biochemistry from the University of Oxford. He was called to the Bar of England and Wales in 1991 and has practiced in intellectual property law in chambers at 8 New Square, Lincoln’s Inn, London since 1992. Between 2003 and 2008, he was standing counsel to the U.K. Comptroller-General of Patents, Designs and Trade Marks. He took silk in 2009. In 2018, he was called to the Bar of Ireland and in 2021, was appointed as a Deputy Judge of the High Court of England and Wales.
United States of America (Chapter 10)
Professor Peter S. Menell is the Koret Professor of Law at University of California Berkeley School of Law, co-founder and Director of the Berkeley Center for Law & Technology, and co-founder and Faculty Director of the Berkeley Judicial Institute. Professor Menell earned his SB from MIT, his PhD (economics) from Stanford University, and his JD from Harvard Law School. Professor Menell joined the law faculty at the University of California at Berkeley in 1990, where his research and teaching have focused on intellectual property law. Professor Menell has authored more than 100 articles and 15 books, including leading casebooks and intellectual property treatises.
Ms. Allison A. Schmitt is a Fellow at the University of California, Berkeley School of Law and the inaugural Director of the Berkeley Center for Law and Technology’s Life Sciences Project. After graduating with a JD from Berkeley Law in 2015, Ms. Schmitt clerked for Judge Stanley R. Chesler at the United States District Court for the District of New Jersey, and Judge Kathleen M. O’Malley at the United States Court of Appeals for the Federal Circuit. She spent several years in private practice, focused on life science patent litigation, counseling and policy matters. Ms. Schmitt holds a PhD in chemistry from Duke University.
The Boards of Appeal of the European Patent Office (Chapter 11)
Mr. Frédéric Bostedt is a legally qualified member of the Boards of Appeal of the European Patent Office. Previously, he was the Head of the Legal Research Service of the Boards of Appeal. Before joining the Boards of Appeal, he worked as a lawyer for the European Court of Human Rights in Strasbourg, France, and for the International Criminal Tribunal for the former Yugoslavia in The Hague, Netherlands. He obtained law degrees in Germany (Ludwig-Maximilians-University of Munich), New Zealand (LLM, Wellington Victoria University) and France (Master 2 Droits de l’homme, Université de Strasbourg), and a doctorate degree in Germany (Dr. jur.).
Mr. Nikolaus Obrovski was appointed as a legally qualified member of the European Patent Office Boards of Appeal in 2020. He entered the Austrian judiciary in 2003, working at various courts, including the Intellectual Property Division of the Commercial Court of Vienna, and received a lifetime appointment as a federal Austrian judge in 2008. Mr. Obrovski also worked as an Intellectual Property Attaché at the Permanent Representation of Austria to the European Union, as a legal adviser on intellectual property at the European Commission in Brussels, and as a lawyer in the Legal Services of the European Patent Office Boards of Appeal. Mr. Obrovski earned Master’s degrees in law and applied economics.