Summary
Overview
Work History
Education
Skills
Certification
Languages
Timeline
Generic

AYAKA MORIMOTO

Yokohama,JAPAN

Summary

After completing the Department of Biomolecular Functional Engineering at the Graduate School of Life Science and Technology, Tokyo Institute of Technology, joined Kansai Paint Co., Ltd. For about 5 years, engaged in research and development of paints and biotechnology as a researcher. In 2009, after passing the patent attorney exam on the first try, he moved to the company's intellectual property department. As a patent attorney for approximately 8 years, he has been engaged in invention discovery, patent searches, patent applications, and rights acquisition work in the fields of automobile paint, colour design, and biotechnology. Joined JFE Steel Corporation in January 2019, and has been engaged in patent rights utilization work in the automotive steel sheet and can steel sheet fields and patent clearance work for other companies at the head office.

Overview

19
19
years of professional experience
1
1
Certification

Work History

Patent Attorney

JFE Steel Cooperation
2019.01 - Current
  • Intellectual property strategy planning and promotion
  • Investigation of other companies' applications, investigation of infringement, invalidation services (oppositions, invalidation trials, etc.)
  • Patent management (determining the value of your own patents)
  • Intellectual property education (for new employees, mid-career employees, etc.)

[Steel sheets for cans, surface-treated steel sheets for automobiles] (Responsible alone as section manager of the intellectual property department at the head office)
Intellectual property strategy planning and promotion:
In accordance with the business plan proposed by the business division, we formulate intellectual property strategies in cooperation with business divisions, R&D departments, and liaisons, manage application progress, and take measures against other companies' patents (mainly information provision, opposition, patent clearance), etc. went.
Since the businesses of steel sheets for cans and surface-treated steel sheets for automobiles are different, we are devising strategies that suit each.

Organizing foreign patents:
After reviewing foreign patents that have been neglected for many years, determining the product type based on the content of the patent and allocating it, we determine whether it is necessary from the current and future perspective, and with the approval of the R&D department, manufacturing department, and business department. Abandoned unnecessary patents. As a result, we were able to save a lot of money on our pension.

Recycled steel cup project:
Participated as a person in charge of intellectual property. He led multiple events to success while collaborating with the business division, sales, research and development department, and legal department. In this process, we proposed the need to acquire not only patents but also design rights, and worked together with the business division, in-house invention department, and liaison to file the first application for a design right in the can steel sheet field. As the person in charge of intellectual property, I was able to examine the content of inventions not only from a technical perspective but also from a design perspective, and I was able to talk to general managers from other departments and gain their understanding of the importance of multifaceted intellectual property acquisition. This led to success. He also worked hard to obtain trademarks.

Measures against other companies’ patents:
A patent belonging to another company was discovered that would be an obstacle to bringing the company's product to market. In collaboration with lawyers, the R&D department, and business departments, the Intellectual Property Department will file an objection, and in case the invalidation cannot be achieved, consult with a lawyer, formulate countermeasures, provide explanations to the R&D department, and analyze the product. We made a request, provided an explanation to the business department, and requested a lawyer to prepare an expert opinion. Through discussion with the inventor, we were able to gain a deep technical understanding of the content of the patent, which led us to make appropriate requests to the R&D department and a lawyer, and we were able to obtain valid analytical data and an expert opinion.

others:
On a daily basis, we judge the importance of applications in the relevant field based on intellectual property strategies, and decide whether or not an inspection is required, whether a foreign application is required (if necessary, the country of application is also selected), and whether or not pension maintenance is required. Is going.


[Automotive thin steel sheets] (One of several people in charge of intellectual property at the head office, working as deputy manager)
Overseas infringement investigation:
We investigated whether there was any infringement of automobile steel sheets overseas. Collaborate with in-house invention department, domestic agent and local research company. Meeting in English with the local survey company. On the other hand, we were able to obtain detailed data on the suspected infringing products by collaborating with overseas staff to obtain the suspected infringing products and requesting the development department to analyze them.

Patent Attorney

Kansai Paint Co., Ltd.
2010.04 - 2018.12
  • Patent management
  • Analysis of other companies' applications, analysis of foreign application status
  • In-house intellectual property education (for new employees, mid-career employees, managers, researchers, etc.)
  • Prior literature search/application document preparation/intermediate processing/information provision/clearance search

Main areas of responsibility: Automotive paints, pigment dispersion, colour design, biotechnology


In -house research presentation: Application trends in the paint field in China (March 2013)


Response to patent applications
[Applications] 63 domestic applications (including 3 outsourced applications), 36 overseas applications
[Intermediate] 67 domestic cases, 63 foreign countries (US, UK, Europe, China, South Korea, Taiwan, India, Thailand, Vietnam)
[Information provided] 12 items
[Survey] 76 effectiveness studies, 5 conflict studies


Remarkable work as a section manager
Development project of multi-layer coating film for automobiles with excellent metallic appearance using new functional materials:
As the person in charge of intellectual property, I worked with the development department to comprehensively file patent applications and obtain rights. Since this was a joint research with a functional materials manufacturer, we also collaborated with the partner's intellectual property department at times. Because paint is a composition that is difficult to discover infringing, patent rights were sought in many aspects, including not only the composition but also the method of forming a multilayer coating film. The product has been launched on the market.

Organization of existing patents related to colour design:
We have carefully examined the contents of existing patents, organized them by product and colour, and created a map that is easy to understand at a glance. This was done in collaboration with the development department.
·Notices:
After I was put in charge of the CD (Colour Design) Research Institute, I was recognized for my hard work and sincerity through daily application work and the above-mentioned projects, and I was able to build a relationship of mutual trust. When I retired, I was grateful for the fact that I received a letter from the director of the research institute, and even held a farewell party for the research staff. I would like to add that I will be greatly missed by the department in charge of my retirement.

Researcher

Kansai Paint Co., Ltd.
2005.04 - 2010.03
  • Development of water-based paint for automobiles:
    We investigated the conditions for uniformly dispersing a new bright material into paint without losing its shine, and developed an automotive base paint with unprecedented brightness and deep blue colour.
  • Development of water-based intermediate coating for automobiles:
    We have developed paints with excellent chipping resistance by devising resins, pigments, and additives.
  • Research on organic solvent degrading bacteria:
    We screened soil and dust on our own factory premises for bacteria that decompose organic solvents used in paints, and succeeded in using the power of microorganisms to decompose organic solvents in paints that are harmful to the environment.
  • Research on enzyme immobilization technology:
    Developed an enzyme-immobilized carrier that suppresses enzyme deactivation and can be used repeatedly.
  • Research on wastewater treatment technology using microorganisms:
    Paint wastewater and household wastewater (mainly sewage) were decomposed by microorganisms. Of these, the technology has been put into practical use, especially for sewage.

Education

M.D. - Biotechnology

Tokyo Institute of Technology
Tokyo, JAPAN
03.2005

Bachelor of Science - Biotechnology

Tokyo Institute of Technology
Tokyo, JAPAN
03.2003

Skills

  • Patent Searching
  • Patent Term Adjustment
  • Patent Time Management
  • Freedom to Operate Analysis
  • Patent Landscaping
  • Trade Secret Law
  • Patent Project Management
  • Invention Evaluation
  • Patent Drafting
  • Patent Litigation
  • Patent Due Diligence
  • Trademark Law
  • Patent Mapping
  • Patent Counseling
  • Patent Prosecution
  • Patent Appeals
  • Patent Training
  • Intellectual Property Law
  • Design Patent Law
  • Claim Construction
  • Patent Strategy
  • Patent Analysis
  • Patent Risk Management
  • Legal Document Preparation

Certification

  • Patent Attorney - June 2010
  • Class A Colour Coordinator
  • Class A Hazardous Materials Handler

Languages

English
Professional Working
Chinese (Mandarin)
Elementary
Japanese
Native or Bilingual

Timeline

Patent Attorney

JFE Steel Cooperation
2019.01 - Current

Patent Attorney

Kansai Paint Co., Ltd.
2010.04 - 2018.12

Researcher

Kansai Paint Co., Ltd.
2005.04 - 2010.03

M.D. - Biotechnology

Tokyo Institute of Technology

Bachelor of Science - Biotechnology

Tokyo Institute of Technology
  • Patent Attorney - June 2010
  • Class A Colour Coordinator
  • Class A Hazardous Materials Handler
AYAKA MORIMOTO