Kiyoko Nakaoka

Attorney-at-Law, Patent Attorney

Partner
TEL: +81-3-6452-9286
Email: nakaoka@kubota-law.com

Ms. Kiyoko Nakaoka is an attorney-at-law and patent attorney qualified in Japan.

After graduating from the Chemistry Department of the Faculty of Science at Tokyo Science University in 2001, Ms. Kiyoko Nakaoka spent ten years working as a patent engineer for Hitachi, Ltd. Her main tasks included prosecution of patent applications relating to electronic devices including digital cameras, Televisions, and IC cards, negotiation of licensing semiconductor patents, and preparation of patent litigations. She passed the patent attorney examination in 1997. She graduated with a Juris Doctor degree from Waseda Law School in 2007. After one year legal training, she was registered as a lawyer in December 2008, and worked at the Tokyo Office of Hogan Lovells as a member of the Japan Practice team from January 2009 through April 2015, until she left Hogan Lovells and joined KUBOTA.

Ms. Kiyoko Nakaoka's practice has mainly focused on protection of IP in Japan, in particular patent litigation and anti-counterfeits. With respect to patent litigation, she represented clients in various technical fields including telecommunication, chemicals and pharmaceuticals. With respect to anti-counterfeits, she filed Customs Seizure applications for fashion brands owners outside Japan and warning letters to counterfeit sellers. In addition to IP, her legal service covers an extensive range of general commercial matters, especially, matters relating to general corporate, Personal Information Protection, and labor.

Ms. Kiyoko Nakaoka speaks English and Japanese. She is a member of AIPPI Japan. Ms. Nakaoka was a Visiting Professor at Tokyo University of Science's Masters of Intellectual Property course in 2012 and 2013, and an academic advisor of Waseda Law school in 2009-2012. She teaches regularly at the Japan Intellectual Property Association since 2018 and is serving as a lecturer on Patent Act for a training course of the Japanese Patent Attorneys Association since 2021.

Bibliography:

Patent Eligibility of Electronic Commerce Inventions (Intellectual Property Management, August 1999)

Study of Japanese Trade Dress, Preliminary injunction case finding shop exterior protectable under the Unfair Competition Prevention Act (Intellectual Property Management, March 2018)

Judgment granting injunction against the use of costumes of game characters by a rental company of carts, Tokyo District Court judgement of September 27, 2018 (DESIGN PROTECT, 2019, No. 129)

IP High Court finds patentability of "System for Providing Steaks", IP High Court judgement of October 17, 2018 (AIPPI Vol. 64 No.9, 2019)

Protection of shop exterior and interior (Masaki Coffee shop case) (Tokyo District Court, December 19, 2016), Leading cases in Trademark, Design and Unfair Competition Law, 2nd Edition, July 2020

"The Right to Repair and the Protection of Intellectual Property" ("ESG and Legal Affairs", Seibunsha)