Westerman, Hattori, Daniels & Adrian
A Comprehensive Portfolio of IP Services.

Rapid advancement in science and technology has made the world smaller than ever before. As a result, research and product development collaborations expand across country borders, as do partnerships and other development opportunities. There is no doubt that these global collaborations can result in innovative products and services. In all the excitement and quest to protect innovation under patents, practitioners and patent applicants often struggle with critical aspects of the patent application filing process. Inconsistencies and language barriers can make patent acquisitions challenging to obtain and strategize. This is precisely where Westerman, Hattori, Daniels & Adrian attorney group, opens its doors to help inventors and corporate from around the world, in particular, companies from Japan, China, and South Korea, procure patent rights from the U.S. Patent and Trademark Office. With a group of 16 highly experienced lawyers from a leading Washington DC IP firm, the company provides the best service by utilizing modern technology and in-depth subject knowledge.

Today, the firm’s size has nearly doubled in terms of their clients and services rendered. With a team of attorneys from the U.S., Europe, and Asia, the company looks forward to assisting clients from around the globe, by protecting their IP assets. In an interview with CIO Applications, Tsuyoshi Nakamura, Partner at Westerman, Hattori, Daniels & Adrian, sheds his insights on patent law and how his team of attorneys help corporate enterprises and inventors procure patent rights. Mr. Nakamura has more than 20 years of experience in patent prosecution, including drafting patent applications, analyzing office actions, and advising clients on strategies for successful prosecution. His comprehensive knowledge of practice before the USPTO and Japan Patent Office enables him to craft the most effective prosecution path for each client, after analyzing the client’s needs and sophistication level. Mr. Nakamura also regularly teaches U.S patent practice and provides consultation to Japanese corporations.

How does your service help Japanese clients in procuring patent rights?

I am a native of Japan and I practiced patent law in my country. I moved to U.S. in 2004 and ever since, I continue to practice patent law here and assists Japanese clients with their patent rights. I was promoted after a few years of service and became part of the management committee in 2017.

Apart from giving counsel to my clients, my day-to-day job involves the management of the firm. One of the unique aspects about our organization is the versatile talent we hire. We have many excellent attorneys with PhDs. Our workforce also includes former patent examiners.

The legal services industry is old fashioned and strictly regulated by the American Bar Association. For that reason, it is extremely important to study and understand the nuances in patent law and help our clients with the process. I have gathered substantial knowledge and experience in both Japanese and U.S. patent law. With that, I help my clients understand the requirements and the procedures they should follow to successfully procure a patent.

What are some of the challenges your clients face?

In many instances, clients do not understand the true nature of the problem. The patent law in the American legal system is complicated and it is an uphill task to understand the regulations and rules pertaining to patent law. The statute or the rule itself in many countries might seem similar, but upon studying it closely, one may observe that they are far different. Many corporates in Japan file their drafts and related documents according to Japanese legal practice. Those documents sometimes are found to be of no use when they are filed here in the U.S. Our expertise helps them understand the difference between various programs in various countries. We explain them elaborately about the statute and the best practices to follow for proceeding with the patent filing system in the country.

What are some of the services you offer?

One of our solutions is native language communication practice. We unify the expertise of the foreign native attorneys from various countries with American attorneys to create uniqueness. This uniqueness is also true among support staffs. Foreign native support staffs are working together with American co-workers. Our services include expert witness and consulting, interferences, ITC litigation, legal opinions and counseling, licensing, litigation, patent prosecution, post-grant procedures, trademark mediation, trademarks and we also provide training and education.

Could you explain with examples the process that you follow while engaging with a client?

One of my clients from Japan required his patent filed in the U.S. I represented the client and won the appeal. However, the client approached me later stating that the case wasn’t good. The problem was that client was following the Japanese patent practice. In Japan, if an individual wins the appeal, the appeal court can give the appellant favorable disposition (not remanded). As the precedent in Japan was different, the client didn’t understand the regulation in the U.S. However, I helped him and explained each and every minor procedure that has to be followed for winning the appeal. In another instance, a U.S. client had a problem with a patent application in Japan. Initially, he approached a Japanese law firm and that engagement didn’t end well. The client reached out to us and I started working with the case. After studying the case, I found cause of frustration that Japanese examiner did not describe the rejection like US examiners (who describe the findings of facts, relevant rules, and how to apply the rules to the facts. Because of this, the client could not analyze adequacy of findings of the facts nor the application of rules. I explained unique approach in Japan to the client to present effective arguments.