Shin TOKII

Professional Experience

Sugimura and Partners
Mori Hamada
Max Planck Institute for Innovation and Competition (researcher)
Satoshi Nakashima Patent Law Office
NTT DATA 3C

Education

Peking University (Doctor of Law)
Hokkaido University, School of Law (J.D.)
Hitotsubashi University (B.A.)

Practice Areas

Intellectual Property Law
Chinese Practice

Languages

Japanese
English
Chinese
German

Articles (inclusive of co-authored articles)

1 Books

Shin Tokii, “Inventive Step Requirement in Patent Law,” Shinzansha, 2023
Yoshiyuki Tamura, Shin Tokii & Akihiro Sako, “Practice Intellectual Property Law (Patent Law),” Shinzansha, 2020
Yoshiyuki Tamura & Shin Tokii, “Logistics Intellectual Property Law (Patent Law),” Shinzansha, 2012

2 Papers

1) Case Notes

“Case Finding the Indication of the French Restaurant Called “Chez Pierre” not Well-Known Nationwide (“Chez Pierre” Case, Tokyo District, May 14, 2009)," Leading Cases in Trademark, Design and Unfair Competition Law, 2nd ed., pp. 136-137 (2020)
“The Necessity of Suggestion in Reference Invention,” Leading Cases in Patent Law, 5th ed, pp. 132-133 (2019)
“The Responsibility of Establishing the Burden of Proof in Invalidation trials of Infringement Applications,” Leading Cases in Patent Law, 4th ed., pp. 84-85 (2012)
“Recognition of the Government’s Duty to Compensate for the User’s Acts of Unauthorized Copying of Cadastral Map Borrowed from the Legal Affairs Bureau and Copied on Photocopiers Therein (Intellectual Property Court, September 30, 2008),” Intellectual Property Law and Policy Journal, Vol. 31, pp. 163-218 (2010)
“Case Finding the Indication of the French Restaurant Called “Chez Pierre” not Well-Known Nationwide (“Chez Pierre” Case, Tokyo District, May 14, 2009)," Intellectual Property Law and Policy Journal, Vol. 26, pp. 293-350 (2009)
“Who Should be Recognized as Inventor? (Tokyo District Court, August 27, 2002),” Intellectual Property Law and Policy Journal, Vol. 20, pp. 265-297 (2008) (co-authored by Takakuni Yamane)

2) Papers

“The Cooperative Operation of the Non-Obvious Theory and the Technical Contribution Theory: Searching for the Third Way of Judging Inventive Step,” Patent, Vol. 77, No. 8, pp. 77-98 (2024)
“The Concept of Technical Prejudice in Patent Law,” Mr. Shimizu Misao 70th birthday Memorial: “Diversified Intellectual Property Litigation for the Future,” (2023, Nihon Kajo Publisher), pp. 249-260
“Reexamination of the Significance of Article 29(1) of the Patent Law: Why the Cited Example can be an example of novelty and inventive step regardless of whether the inventor actually has access to the cited example or not,” Prof. Yoshiyuki Tamura, 60th Birthday Memorial: A Journey for Intellectual Property Law and Policy, (2023, Kobundo), pp. 192-206
“Rehabilitation of Technical Contribution Theory,” Annual Report of the Japan Industrial Property Law Association, No. 44, pp. 69-90 (2021)
“The Current State of the Concept of “Suggestion” in Judgment of Patent Inventive Step: With Some Considerations on the Relationship between the Development of Search Technology on the Internet and Judgment of Inventive Step,” Information Network Law Review, Vol. 19 (2020)
“The Current Situation of Inventive Step Judgments in China - Together with Recent Trends of Inventive Step Judgments in the United States and China and Certain Prospects,” AIPPI, Vol. 65, No. 10, pp. 14-19 (2020)
“The Concept of “Obvious to try” in US Patent Law - and its Similarity to the Concept of “Limited Experimentation” in the Patent Law in the People’s Republic of China” AIPPI, Vol. 65, No. 2, pp. 27-39 (2020)
“Statistical Analysis of Judicial Decisions on Inventive Step and Its Theoretical Implications: A Comparative Study of Japan, China, Germany, EPO and US (1),” Intellectual Property Law and Policy Journal, Vol. 54, pp. 55-90 (2019)
“Statistical Analysis of Judicial Decisions on Inventive Step and Its Theoretical Implications: A Comparative Study of Japan, China, Germany, EPO and US (2),” Intellectual Property Law and Policy Journal, Vol. 55, pp. 205-225 (2020)
“Statistical Analysis of Judicial Decisions on Inventive Step and Its Theoretical Implications: A Comparative Study of Japan, China, Germany, EPO and US (3),” Intellectual Property Law and Policy Journal, Vol. 56, pp.103-122 (2020)
“Statistical Analysis of Judicial Decisions on Inventive Step and Its Theoretical Implications: A Comparative Study of Japan, China, Germany, EPO and US (4),” Intellectual Property La.w and Policy Journal, Vol. 59, pp. 165-253 (2021)
“Statistical Analysis of Judicial Decisions on Inventive Step and Its Theoretical Implications: A Comparative Study of Japan, China, Germany, EPO and US (5),” Intellectual Property Law and Policy Journal, Vol. 60, pp. 115-170 (2021)
“Statistical Analysis of Judicial Decisions on Inventive Step and Its Theoretical Implications: A Comparative Study of Japan, China, Germany, EPO and US (6),” Intellectual Property Law and Policy Journal, Vol. 61, pp. 111-140 (2021)
“Statistical Analysis of Judicial Decisions on Inventive Step and Its Theoretical Implications: A Comparative Study of Japan, China, Germany, EPO and US (7),” Intellectual Property Law and Policy Journal, Vol. 62, pp. 201-264 (2022)
“Statistical Analysis of Judicial Decisions on Inventive Step and Its Theoretical Implications: A Comparative Study of Japan, China, Germany, EPO and US (8),” Intellectual Property Law and Policy Journal, Vol. 63, pp. 93-140 (2022)
“Statistical Analysis of Judicial Decisions on Inventive Step and Its Theoretical Implications: A Comparative Study of Japan, China, Germany, EPO and US (9),” Intellectual Property Law and Policy Journal, Vol. 65, pp. 131-194 (2022)
“Trend in Determining Inventive Step and Its Applications in Japan,” Private Law, Vol. 13, No. 1, pp. 212-285 (2016) (written in Chinese)
“Trend in Determining Inventive Step and Its Applications (1),” Intellectual Property Law and Policy Journal, Vol. 41, pp. 125-177 (2013)
“Trend in Determining Inventive Step and Its Applications (2),” Intellectual Property Law and Policy Journal, Vol. 42, pp. 173-239 (2013)
“Status Quo of Claim Interpretation: A Focus on Restrictive Interpretation,” Intellectual Property Law and Policy Journal, Vol. 40, pp. 1-32 (2012)
“Burden of Proof to Substance the Title to an Invention and the Sufficiency of Disclosure in the Patent Invalidation Procedure,” Intellectual Property Law and Policy Journal, Vol. 38, pp. 87-118 (2011)
“To What Extent Can Errors in the Description be Corrected?” Intellectual Property Law and Policy Journal, Vol. 24, pp. 149-178 (2009)

Lectures

Institute of Intellectual Property, “Recent Trends Based on Comparative Analysis of Court Decisions on Inventive Steps in Japan, China, the U.S. and Europe” (2024)
Symposium at Japan Association of Industrial Property Law (Nov. 2020)
Seminar at Max Planck Institute for Innovation and Competition (in Munich in 2019, English)
Symposium at Beijing Institute of Technology (in Beijing in 2015, Chinese)
The 3rd China-Japan-Korea Intellectual Property Law Seminar (in Wuhan in 2013, Chinese)