Patent attorneys & lawyers

Haruo GOTO

Consultant and Lawyer

Haruo GOTO

Education
College of Law, Nihon University
Professional career
Started working at the Japan Patent Office (Trial and Appeal Department, Secretarial Unit), April 1958
Trial and Appeal Department, Trial and Appeal Division, August 1961
Policy Planning and Coordination Department, General Coordination Division, April 1965
Patent and Design Examination Department, Trademarks Second Division, January 1972
Visited Sweden, Britain, Australia, West Germany, France and the US to study the European and American trademark systems, April 1974.
Visited China for an investigation concerning the Agreement between Japan and China with Regards to Protection of Trademarks, May 1976
Represented a research council in industrial property law, October 1976
Concurrent posting with foreign affairs secretariat (Asia Office), attended negotiations to conclude the Agreement between Japan and China with Regards to Protection of Trademarks, September 1977
Concurrent posting with the Policy Planning and Coordination Department, General Coordination Division, March 1978
Concurrent posting with the Foreign Affairs Secretariat (Asia Office), September 1982
Attended the Nice Agreement Concerning International Classification Preparation Working Group as an observer, and visited Sweden, West Germany, Holland, France, Britain and the US to study their trademark systems., June 1988
Chief Administrative Judge, Trial and Appeal Department, December 1988
Work includes posting as an extraordinary member of the Patent Attorney Examination Council, January 1989
Concurrent posting as Litigation Office Chief, Trial and Appeal Department, October 1989
Concurrent posting as Patent Attorney Examination Council, January 1990
Chief Officer, Section 27, Trial and Appeal Department, April 1990
Chief Officer, Section 26, Trial and Appeal Department, July 1991
Retired from the JPO, July 1991
Part-time lecturer, Law Department, Faculty of Law, Daito Bunka University, April 1992
Professor, Nihon University, April 1994
As head of the Investigative Committee on the New European Trademark Registration System, visited the UK Intellectual Property Office, the European Patent Office, the Deutsches Patent- und Markenamt, WIPO and OHIM (Office for Harmonization in the Internal Market (Trade Marks and Designs)), February 1996
Nominee mediator and arbitrator, Japan Intellectual Property Arbitration Center, April 1998
Deputy Director, Nihon University Business, Research and Intellectual Property Center/Nihon University International Industrial Technology and Business Education Center, Nihon University TLO, April 2000
Deputy Chairman, Operating Committee, Nihon University Business, Research and Intellectual Property Center/Nihon University International Industrial Technology and Business Education Center, April 2000
Arbitration and Mediation Center Panelist, World Intellectual Property Organization (WIPO), December 2000 - present
Reorganization of the Japan Intellectual Property Arbitration Center, March 2001
Representative, Intellectual Property Research Center, October 2003
Retired from Nihon University, March 2005
Lecturer, College of Law, Nihon University, April 2005
Lecturer, Graduate School of Law, Nihon University, April 2005
Visiting Professor, Kokushikan University Graduate School, April 2006
Lecturer, Graduate School of Intellectual Property, Nihon University, April 2009
Visited Intellectual Property Court, Economic Division Intellectual Property Office, Intellectual Property Inspection Corps to study the state of supervisory activities for information on the operation of trademarks, unauthorized trademark goods, and copyright-infringing products, November 2009
Mediator, arbitrator, adjudicator, Japan Intellectual Property Arbitration Center, April 2013 - March 31, 2016
Examinations passed

Passed Patent Attorney Examination:
December 1958 

Patent Attorney Registration:
April 1992

Registered as a lawyer:
November 2005 

 

Registrations
Registration number as patent attorney: 10230
Registration Number of Lawyer:33509
Affiliation
R&D Department, Asamura Legal Offices
Languages
Japanese, English
Specialty Fields

Litigation

-Decisions Concerning Standards for Similar Judgments on Products
(Decision of the Supreme Court Third Petty Bench, June 27, 1961, Showa 33 (O) No. 1104)
Appeal in the matter of Tachibana Shochu vs. Tachibana Masamune (Sake)

-Decisions Concerning Identifying the Gist of an Invention under Application
(Decision of the Supreme Court Second Petty Bench, March 8, 1991,  Showa 62 (Gyo-Tsu) No. 3)
Appeal in the matter of Lipase

-Toshiba Lighting & Technology Corporation Case
(Decision of the Supreme Court Third Petty Bench, February 24, 1995, Heisei 3 (Gyo-Tsu) No. 139)
Appeal in the matter of Design for Embedded Light for Ceiling Use

Memberships
Member of the Asian Patent Attorneys Association (APAA), 1992 - present
Member of the International Association for the Protection of Intellectual Property (AIPPI),1992 - present
Member of the Japan Trademark Association, 1992 - present
Member of the Licensing Executives Society Japan, 1992 - present
Official Commendation
The Order of the Sacred Treasure, Gold Rays with Rosette, April 2005
Publications
Books:

“Revised Patent Laws in European Countries” (Hatsumei-Shinbunsha). (February 1969)
“Commentary On Patent Law Amendments” (Research Institute of Economy, Trade and Industry) (July 1974)
“Commentary on the Paris Treaty” (AIPPI Japan). (March 1976)
“Patents” (joint-translator), (Dai-Ichi Hoki). (June 1976)
“Agreement Between Japan And China with Regards to Protection of Trademarks” (joint-author), (Japan Institute of Invention and Innovation). (March 1978)
“International Applications And Domestic Priority Rights” (Japan Institute of Invention and Innovation). (June 1986)
“The Nice Agreement and International Classifications” (AIPPI Japan). (July 1991)
“Commentaries on Patent Law Vol. 1, Vol. 2” (joint-author) , (Seirin-Shoin). (December 2000)
“Developments Toward Formation of Patent Treaties” (Research Institute of Economy, Trade and Industry). (August 2003)
“Paris Treaty Lectures (with commentary on the TRIPS Agreement, 13th Edition” (Japan Institute of Invention and Innovation). (July 2007)
“Japanese Laws Relating to Industrial Property” (AIPPI Japan) (1999 - 2010)

Academic papers:

“The Patent System Of The EEC (1), (2), and Chemical Engineering” Chemical Industry (Kagaku Kogyosha). (March - April 1965)
“Benelux Integrated Trademark Law” (AIPPI Japan, No. 15 (2)). (February 1970)
“The Madrid Agreement Concerning the International Registration of Marks” (AIPPI Japan, No. 16 (3)). (March 1971)
“The Trademark Registration Treaty” Patent News, Nos. 3264, 3271, 3275. (February 1972)
“The Trademark Registration Treaty” Patent News, Nos. 3279, 3282, 3284, 3399, 3401, 3405, 3407, 3409, 3414, 3417, 3540, 3543, 3551, 3557, 3561, 3564 (Research Institute of Economy, Trade and Industry). (February 1973)
“TRT” Patents and Corporations, Nos. 51, 54. (March 1974)
“About the Partial Amendments to the Trademark Law” Journal of business laws No. 245. (February 1975)
“About the Partial Amendments to the Patent Law” Patent News, Nos. 4307, 4312, 4317, 4322. (February 1975)
“About the Partial Amendments to the Trademark Law” Patent News, Nos. 4412, 4417, 4422, 4427, 4437, 4442, 4452. (August 1975)
“Interpretation of "Registered Trademark" in Appeals and Decisions for Cancellation of Trademark Registration Due to Illegitimate Use” The Invention, Hatsumei 1976 (12) 1977 (1) 1977 (4) 1977 (5). (November 1976 - May 1977)
“Patents that Go Worldwide through International Registration Application” (Vol. 1), (Vol. 2), Laws of the Time (Printing Bureau, Ministry of Finance). (June - July 1978)
“The Patent Cooperation Treaty and the Japanese Law System” Jurist (Yuhikaku Publishing Co.,LTD). (August 1978)
“Proposals for Amendments to the Patent Cooperation Treaty (PCT)” Patent (Japan Patent Attorneys Association). (February 1984)
“Definitions of Inventor's Certificate and Patents” Japan Association of Industrial Property Law Bulletin (Yuhikaku Publishing Co.,LTD) (December 1984)
“Calculating Amounts for Loss Affecting Patentees and Exclusive Licensees” Jurist Separate Volume (Yuhikaku Publishing Co.,LTD). (December 1985)
“Partial Abandonment of a Product Specified in a Trademark Registration Application” Professor Masao Miyatake 77th Birthday Memorial Collection (Japan Institute of Invention and Innovation). (June 1986)
“Cases Seeking Cancellation of an Appeal or Trial Decision for Cancellation of a Trademark Registration” Precedents in Trademark Law (Japan Institute of Invention and Innovation). (January 1991)
“The Unfair Competition Act and Acts of Unfair Competition Under the Paris Treaty” Investigating the Unfair Competition Act (Institute of Intellectual Property). (June 1991)
“Service Marks” Japan Association of Industrial Property Law Annual Report (Yuhikaku Publishing Co.,LTD). (December 1991)
“Laws on Expanding Rights Protection in German Industry, Law of February 23 1992” AIPPI Vol. 37 Nos. 9 10 (AIPPI Japan). (April - May 1992)
“Mixing Products And Business Profits” Precedents in Unfair Competition Law: Professor Shoen Ono 60th Birthday Memorial Collection (Japan Institute of Invention and Innovation). (June 1992)
March 1993 “Future Directions in Federated Trademark Systems”,
“Protocol on the Madrid Agreement Concerning the International Registration of Marks”,
“The Relationship Between Federated Trademark Systems and Protected Mark Systems, and the Madrid Agreement Protocol Concerning the International Registration of Marks”
“Report on Investigative Research Concerning Federated Trademark Systems and Protected Mark Systems” (Institute of Intellectual Property).
“EEC Council Directive of December 12, 1988, for Aligning the Laws on Trademarks of Member Countries” (89/104 EEC) (89/104/EWG) (89/104/CEE).
“The Treaty of October 5, 1973, to Amend Article 63 of the Treaty Concerning Granting of European Patents (Council Regulations of June 18, 1992, Concerning Creation of Additional (Supplementary) Protection Certification for Pharmaceuticals)” AIPPI Vol. 38, No. 8 (AIPPI Japan). (August 1993)
“The Stakes in Seeking Cancellation of a Registered Trademark for Illegitimate Use”, Journal of Civil and Commercial Law Vol. 109 No. 2. (November 1993)
“China's Unfair Competition Prevention Law” Patent News No. 8734. (December 1993)
“Guide To Trademark Harmonization Treaties” Patent News Nos. 8736, 8741, 8744. (December 1993)
“The Law for Partial Amendment of The Patent Act etc., (Law No. 26 of 1993)” Appendices to Commentaries on Patent Law in Commentaries on Patent Law. (April 1994)
“Similarity of a Trademark Comprising a Well-Known Trademark and Other Characters” Comparative Law Vol. 11, 1994. (July 1994)
“Kozo Sushi Supreme Court Decisions” Trademark Talks Vol. 14. (July 1996)
“European Trademark Laws” Patent News No. 9432. (June - July 1996)
“Trademark Law Treaties” Collection of Questions and Answers on Industrial Property Rights Law (Dai-Ichi Hoki). (November 1996)
“Solid Trademark Registration Systems” (May 1997)
“Federated Trademarks”
“Systems for Commencing Objections Post Registration”
“Using Registered Trademarks”
Collection of Questions and Answers on Industrial Property Rights Law (Dai-Ichi Hoki).
“"Well-Known Name of a Registered Trademark" as a Requirement for Protective Trademark Registration, and Products with Concerns of Co-Mingling”, The Invention, Hatsumei) Vol. 94. (October 1997)
“The New Civil Litigation Act and The Patent Act” Japan Patent Office National Center for Industrial Property Law Training Text (JPO). (December 1997)
“Initial Council Directive of December 12 1998, for Aligning the Laws on Trademarks of Member Countries” (89/104/EEC) (89/104/EWG) (89/104/CEE), Collection of Questions and Answers (Dai-ichi Hoki). (December 1997)
“Council Regulation of December 20 1993, Concerning Joint Trademarks” (EC) No. 40/94. (December 1997)
“Exclusive Rights And Prohibitive Rights” (December 1997)
“Similarity Between the Trademarks ‘Kozo’ and ‘Kozo Sushi’ Used on Sushi, etc.” Patent Studies. (March 1998)
“Procedures Management for Acquisition of Trademark Rights (1996 Amendments To The Trademark Act)” Intellectual Property Management Manual (Dai-ichi Hoki). (May 1998)
“Trends in Format and Content of Trademarks Protection” Research Materials, Research Institute of Economy, Trade and Industry. (September 1998)
“Similarity Between the Trademarks ‘Kozo’ and ‘Kozo Sushi’ Used on Sushi, etc.” (Comparative Law Vol. 16). (March 1999)
“Regulation Based On The Patent Cooperation Treaty (Amendments of October 1997)” Collection of Questions and Answers on Industrial Property Rights Law, (Dai-Ichi Hoki). (April 1999)
“Outline of the Madrid Agreement Protocol” Collection of Questions and Answers on Industrial Property Rights Law, (Dai-Ichi Hoki). (December 1999)
“European Parliament and Council Directives Concerning Legal Protection For Designs”
“Parallel Import of Genuine Products”
“Disputes Resolution”
Collection of Questions and Answers on Industrial Property Rights Law (Dai-Ichi Hoki). (June 2000)
“Considerations on Partial Amendments to the Trademark Law Prior to Entry into the Madrid Agreement Protocol” Japan Law Vol. 66 No. 2. (September 2000)
“How is a Famous Trademark Formed in Japan?” Journal of The Association for the Promotion of International Trade, Japan. (September 2001)
Commentaries on Patent Law Vol. 1, Third Edition, and Commentaries on Patent Law Vol. 2, Third Edition, (joint author ), (Seirin-Shoin). (December 2001)
“Cases Holding that Services for Mail-Order Sales Using a Catalog are not Services under the Trademark Act” The Invention, Hatsumei Vol. 98. (December 2001)
“Abuse of Trademark Rights” Collection of Questions and Answers on Industrial Property Rights Law, (Dai-Ichi Hoki). (January 2002)
“2000’s Amendments to Japanese Trademark Law for Entry into the Madrid Agreement Protocol” Comparative Law Vol.18 (2001). (January 2002)
“Law for the Repression of Unfair Competition” (AIPPI Japan). (June 2002)
“Compensating Losses Caused by Infringement of Patent Rights” Collection of Questions and Answers on Industrial Property Rights Law (Dai-Ichi Hoki). (October 2002)
“Can an Action for Damages, Abandonment of an Infringing Product, or An Injunction Based on an Infringement of a US Patent Right be Commenced in the Courts of Japan?” AIPPI Vol. 48 No. 4 (AIPPI Japan). (April 2003)
“Protection of Partial Designs” Basic Knowledge on Patents, Designs, and Trademarks (Seirin-Shoin). (March 2003)
“Prevention of Unfair Competition under the Paris Treaty” Basic Knowledge on Patents, Designs, and Trademarks (Seirin-Shoin). (March 2003)
“Protecting Country of Origin Display and Country of Origin Name” Basic Knowledge on Patents, Designs, and Trademarks (Seirin-Shoin). (March 2003)
“The TRIPS Agreement” Basic Knowledge on Patents, Designs, and Trademarks (Seirin-Shoin). (March 2003)
“Moral Right of Author” Basic Knowledge on Patents, Designs, and Trademarks (Dai-Ichi Hoki). (October 2006)
“Infringement of Moral Right of Author” Collection of Questions and Answers on Intellectual Property Rights Law (Dai-Ichi Hoki). (October 2006)
“Trademark Usage (Cancellation for Illegitimate Use): The Aohoshi SauceCase” Collection of Annotated Supreme Court Precedents on Intellectual Property Law: Professor Shoen Ono 60th Birthday Memorial Collection II (Seirin-Shoin). (September 2009)
“Considerations on Trademark Practice in Taiwan” Intellectual Property Prism (Research Institute of Economy, Trade and Industry). (July 2010)
“The TRIPS Agreement” Commentaries on the Design Act (Seirin-Shoin). (October 2010)
“Protection of Designs in the Paris Convention for the Protection of Industrial Property” Commentaries on the Design Act (Seirin-Shoin). (October 2010)
“Considerations on the Historical Development of Protection of Well-Known Trademarks under the Paris Convention, (Vol. 1)” Intellectual Property Prism (Research Institute of Economy, Trade and Industry). (November 2010 )
“Considerations on the Historical Development of Protection of Well-Known Trademarks under the Paris Convention, (Vol. 2), Intellectual Property Prism (Research Institute of Economy, Trade and Industry). (December 2010)
“Jurisdiction of International Courts in Intellectual Property Litigation” (Dai-Ichi Hoki). (December 2010)
International Jurisdiction of Intellectual Property Disputes under the Revision Act of 2011 - Collection of Questions and Answers on Intellectual Property Rights Law (Dai-Ichi Hoki). (May 2013)
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