March 15, 2017 CLE: Dos and Don’ts of US Inbound & Outbound Applications

Event Materials: Dos and Don’ts of US Inbound & Outbound Applications
This presentation material is provided by Jay Sha, Takuya Izumi, Leonard L. Werner-Jones, David Sproston, and Shoko Leek as a courtesy to the WSPLA members. The use of the slides and any information contained therein by the recipient does not constitute legal advice.


Jay Sha, Lui, Shen & Associates
Mr. Sha is a US patent attorney, admitted in Illinois and registered with the USPTO, and a qualified Chinese patent attorney for over 30 years since the beginnings of Chinese patent law. He obtained JD and LLM degrees from John Marshall Law School and a BSEE degree from Zhejiang University. He started his IP career in China in 1982, and worked at major Chinese and US patent firms. Mr Sha has extensive experience in various aspects of intellectual property laws, including patent and trademark prosecutions, litigation, administrative enforcement, licensing and transactions. He is a frequent speaker on patent, trademark and other IP laws. He is a member of ABA, AIPLA, FICPI, AIPPI, LES, INTA.


Takuya Izumi, New Energy and Industrial Technology Development Organization
Mr. Izumi is Representative of Silicon Valley Office of NEDO (New Energy and Industrial Technology Development Organization). He is currently working on research projects regarding R&D and IP in Silicon Valley. Before working for NEDO, he was an administrative judge of the Japan Patent Office (JPO) in the field of material analysis and medical device such as X-ray detector and CT. He was also a patent examiner in the field of photo copier and laser printer. Mr. Izumi earned an LL.M (Master of Law) from the George Washington University Law School and Master of Science from Tokyo University.


Leonard L. Werner-Jones, Hoffmann Eitle
Mr. Werner-Jones has experience in examination, opposition and appeal proceedings before the European and German Patent Offices and the Federal Patent Court and preparation of litigation and legal opinions. His expertise is biotechnology, in particular neurobiology, immunology, cell biology, molecular biology and genetic engineering. He studied biology at Dartmouth College, Hanover, NH/USA; B.A. in 1991, completed a doctoral thesis at the Max Planck Institute of Neurobiology in Martinsried/Munich in 1998 and was a post-doctoral scientist and faculty member at the University of California/San Diego (UCSD) researching nerve regeneration following spinal cord injury (1999-2004). He has been with HOFFMANN EITLE since 2004. German and European Patent Attorney since 2009.


David Sproston, Hoffmann Eitle
Mr. Sproston specializes in patents for electronics, IT, computing, software and business methods and has extensive experience in drafting, filing and prosecuting applications in UK, Europe and throughout the world (particularly USA). Clients he represents include multinational companies, small and medium sized enterprises and private inventors. David has conducted many oppositions and appeals at the European Patent Office. In addition, he has wide experience in infringement and validity searches, evaluations and opinions, UK preaction proceedings, licence negotiations, licence drafting and patent sales. Mr. Sproston studied physics at King’s College, London University, graduating in 1988 with first class honours degree. From 1988 to 1992, he was a technical consultant with a leading consultancy firm, conducting projects in a wide range of technologies (including electronics, computers, communication systems, image processing and information technology) for clients including national and local government departments, international agencies and industrial companies in the UK and throughout Europe. In 1992, joined the patent profession with a British firm, qualifying as a British Patent Attorney in 1995 and as a European Patent Attorney in 1997. He has been with HOFFMANN EITLE since 2006.


Shoko Leek, Seed Intellectual Property Law Group, LLP
Ms. Leek specializes in preparing and prosecuting patent applications in the fields of electronics, telecommunications, optics, software and mechanical engineering. She has extensive experience in counseling in general intellectual property matters including patents and trademarks, developing strategic patent portfolios, conducting due-diligence review of patent portfolios, preparing patent infringement and validity opinions, clearing and registering trademarks, and intellectual property licensing. She received a B.S. in Physics from the University of Washington in 1998 and her J.D. from University of Washington School of Law in 1997.