Toshio NAKAMURA

BIOGRAPHYToshio NAKAMURA studied chemistry while at the Graduate School of Science at Tokyo University.
Mr. Nakamura was awarded his Ph.D. for his research on the "Synthesis of Leucotriene B4 Derivatives and Labdanoid Diterpenes".
In 1995 he passed the patent attorney examination and was registered as a patent attorney the same year. While preparing for the examination, the Great Hanshin earthquake occurred.
Mr. Nakamura joined Sumitomo Pharmaceutical Co., Ltd. and conducted research on the discovery and development of new medicines for 10 years.
Following his time as a laboratory researcher, Mr. Nakamura transferred to the IP department at Sumitomo Pharmaceutical, where he spent the next 18 years dealing with various IP cases as well as IP contracts and employee's inventions. He also resided in the U.K. and spent 2 years working in a U.K. IP law firm. He left Sumitomo Pharmaceuticals, and joined Tanabe Seiyaku Company (Currently Mitsubishi Tanabe Pharma Corporation), where he became a licensed patent attorney.
Later, Mr. Nakamura left Mitsubishi Tanabe Pharma Corporation and joined a Japanese IP law firm where he prosecuted patent applications for both domestic and foreign clients, particularly in the fields of pharmaceuticals, foods and beverages, and cosmetics in which he capitalized on his English skills and his wealth of knowledge in organic chemistry, medical applications, biotechnology and cosmetics that he acquired as a researcher at Sumitomo Pharmaceutical.
Mr. Nakamura has experience filing patent applications in a number of countries in North and South America, Europe, Oceania and Asia. He is also engaged in the representation of foreign applicants seeking Japanese patent rights.
He has extensive experience with and knowledge related to examinations, appeals, oppositions, written opinions, invalidation trials and litigation of Japanese patents.
Mr. Nakamura is able to respond to a client’s needs in either Japanese or English.
He is always eager to acquire more knowledge and further develop his skills.
Utilizing his vast IP knowledge and experience, Mr. Nakamura strives to meet the needs and goals of his clients.

PRACTICE AREASMr. Nakamura is a certified patent attorney who specializes in affairs related to Intellectual Property rights. He has done work in the areas of prosecution, prior art searches, written opinions, appeals and litigation related to patents, particularly in the areas of organic chemistry, pharmaceuticals, biotechnology, and foods and cosmetics.

EDUCATIONTokyo University, School of Science, Department of Chemistry
Tokyo University, Graduate School of Science, Department of Chemistry, PhD

EXPERIENCESumitomo Pharmaceutical Co., Ltd.
Trained in J. A. Kemp (UK) in 1999-2001
Mitsubishi Tanabe Pharma Corporation
Fukami Patent Office P.C

PROFESSIONAL ASSOCIATION AND MEMBERSHIPJapan Patent Attorneys Association (JPAA)

ACTIVITIES

• Osaka Pharmaceutical Manufacturers Association,
  Intellectual Property Committee, Patent Panel (1996-1999, 2001-2002)
  
• Japan Intellectual Property Association
  Biotechnology Committee (2003-2004),
  1st Patent Committee (2004-2010), Chairman of the 1st Patent Committee (2007-2010)
  
• Central Research Institute of Intellectual Property Right
  Researcher and Member of Management Board (2014-2016)
  
• Patent Committee of Japan Patent Attorney Association (2016-2017)
  Deputy Chairman (2017-2019), Head of the 1st WG (2019-2020)
  
• International Activities Center of Japan Patent Attorney Association (2020-present)
  
• Kansai Branch of Japan Patent Attorney Association
  International Information Committee (2014-2018, 2020-present)
  
• Kansai Branch of Japan Patent Attorney Association
  Interllectual Property Popularization and Support Committee (2018-2020)
  
• Kansai Branch of Japan Patent Attorney Association
  Practical (Patent) Committee (2022-present)

PUBLICATIONS AND PRESENTATIONS
◆"CJEU Installs Another Hurdle for SPCs on Functionally Defined Products and Ends Second Medical Use SPCs", Franz-Joseph Zimmer, Ph.D.，Benjamin Quest, Ph.D., Toshio Nakamura, Ph.D.(Translation), IP Prism January 2021 Vol.19 No.220 p.74-84.

◆"Consideration of Recent Patent Grant rate before the Japan Patent Office", Toshio Nakamura, Ph.D.and others(joint work), Patent (2020) Vol.73 No.5 p.3-14.

◆"Consideration of the Japanese Opposition System", Toshio Nakamura, Ph.D.and others(joint work), Patent (2019) Vol.72 No.2 p.99-108.

◆"New Enlarged Board of Appeal decision G 1/16 -Disclaimer practice in the European Patent Office-", Franz-Joseph Zimmer, Ph.D.，Markus Grammel, Ph.D., Toshio Nakamura, Ph.D.(Translation), IP Prism July 2018 Vol.16 No.190 p.37-45.

◆"Can diagnostic data be protected as 'direct product'of a process ?", Franz-Joseph Zimmer, Ph.D.，Oliver Nemethova, Ph.D., Andreas Kayser, Ph.D., Toshio Nakamura, Ph.D.(Translation), AIPPI (2018) Vol.63 No.1 p.26-32.

◆“Doctrine of Equivalents: New Developments in Germany”, Bernd Allekotte, Ph.D., Markus Grammel, Ph.D., Toshio Nakamura, Ph.D.(Translation), AIPPI (2017) Vol.62 No.6 p.541-545.

◆“Succession in Title and Priority Entitlement in the European Patent Office”, Steven M. Zeman, Ph.D., Toshio Nakamura, Ph.D.(Translation), AIPPI (2017) Vol.62 No.1 p.53-59.

◆“Supreme Court Decisions in India on Imatinib Mesylate, and Considerations on the TRIPs Agreement”, Toshio Nakamura, Patent (2016.12) Vol.69 No.14 (Extra Issue, No.16), p.119-130.

◆“Defeat Other Companies! Developing Truly Strong Patent Practices”, (Joint work), ed. by Information Institute, May 2016 (“Medicinal Drugs” in the Sixth Chapter, the Third Section, the First Clause, written by Toshio Nakamura).

◆“Supreme Court Decisions on Product-by-Process Claims”, Toshio NAKAMURA, ‘Patents ＆ Licensing’, Vol.45, No.6, p.28-32 (2016).
Basis of Grace Period and Cautionary Notes Thereof”, Toshio NAKAMURA, Intellectual Property Management (2014), Vol. 63, No. 11, p.1747-1752

◆“Recent Trends in Judgments Related to Crystal Forms of Medicinal Compounds”, Tohiso NAKAMURA, Intellectual Property Management (2014), Vol. 63, No. 1, p. 33-46

◆“The Daunting Task of Medical Use Inventions for Combination Therapies”, Toshio NAKAMURA, Intellectual Property Management (2012), Vol. 62, No. 12, p.1691-1698

◆“Most Recent Know-How of ‘Patent Practice / IP Strategies’ in Medicines”, (Joint work), ed. by Technical Information Institute Co., Ltd., January 2008
Chapter 6, Section 4, “Use Patent” written by Toshio NAKAMURA

◆"Recent Developments in Japanese Patent Judgements"，Toshio Nakamura, ‘Daejeon International IP Conference’, in Daejeon (KR), February 17, 2017.

◆"A Review of the Current and Changing Practices in Japan"，Toshio Nakamura, ‘Life Science IP Summit’ by C5, in London (UK), October 20-21, 2016.

◆"Review of the Changing Practices in Japan"，Toshio Nakamura, ‘15th International Forum on Pharmaceutical Patent Term Extensions’ by C5, in Munich (DE), June 21-22, 2016.
How to Obtain and Utilize Global Patents? Patent Litigation in Japan and Overseas, Product by Process Claims, Grace Periods ?”, Toshio NAKAMURA, Japan Food ＆ Biotechnology Intellectual Property Right Center (JAFBIC), Kansai Committee, July 17, 2015

◆"Strategies for Managing Pharmaceutical, Biotechnology ＆ Chemical Patent Portfolios for R ＆ D Scientists and IP Professionals", in Mumbai ＆ Ahmedabad (India), February 2-5, 2014.

◆"Crucial Judicial Landmark Cases: Recent Japanese Court Decisions on Patent Term Extensions, Crystal Patents, and Combination Drug Patents", Yearly Seminar by De Clercq ＆ Partners, in Belgium, November 22, 2013.

◆“Patent Term Extensions of Medical Patents”, Toshio NAKAMURA, Kathryn Nicolls, David Albagli, Yoshinori HOSODA, IP Professional Seminar by Kinki Branch of Japan Patent Attorney Association, Osaka, October 23, 2012

◆“Practice for Inventions related to Medicine and Medical Services”, Satoshi OCHI, Yutaka OCHI, Toshio NAKAMURA, IP Professional Seminar by Japan Patent Attorney Association, Tokyo and Osaka, August 3 ＆ 10, 2012

LANGUAGEJapanese and English

HOBBIESDomestic and International Travel