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Asian Practice Group

The Firm's Asian Practice Group counsels and represents clients throughout Asia in all aspects of intellectual property law.

Most notably, the Group has represented Japan-based clients for approximately twenty years. The Group has a strong presence in Japan, and a significant amount of the Firm's resources are directed to representing these Japanese clients. For example, the Group directly represents many Japanese companies of various sizes in virtually all aspects of intellectual property law, including litigation, preparation and prosecution of patent applications, preparation of infringement and validity opinions, licenses and interferences. Bruce H. Bernstein, the Group Director, has extensively lectured patent law groups in Japan and the United States on both patent strategy, litigation and prosecution in the United States, and is the author of several articles (in both Japan and the U.S.) on patentability of software-and computer-implemented inventions in the U.S.

Members of the Group spend a total of several months every year in Japan, Korea, China, Hong Kong, and Taiwan counseling and advising clients. The Group contains members who are proficient and/or fluent in Japanese, Korean, and Mandarin Chinese.

For example, several attorneys in the Group are proficient in Japanese, having lived in Japan for several years, and are not only familiar with the legal needs of Japanese clients, but are well-versed with the unique customs of Japanese society. Additionally, the Group holds several annual seminars for Japanese and Korean trainees living in or visiting the Washington, D.C. area, and is active in the local Japanese community.

The Group also has a Korean Practice Team where Paul T. Lee, who is a licensed Patent Attorney in Korea and has passed the U.S. Patent Bar Registration Examination, is playing a key role. Mr. Lee holds an advanced degree in Electronic Communication Engineering and was a supervisory Examiner in the Korean Intellectual Property Office for ten years. In addition, he has widespread experience in teaching Korean Patent Law, U.S. Patent Law, Claim Interpretation & Case Analysis at Yonsei University Graduate Patent Law School from 1998 to 1999 as an adjunct Professor, and International Intellectual Property Training Institute (IIPTI) from 1996 to 1997 as a Professor, respectively.

The Group includes other former Patent Examiners and other professionals of the United States Patent and Trademark Office. These members collectively have decades of experience working at the United States Patent and Trademark Office. Members of the Group include law clerks to members of the U.S. Patent and Trademark Office Board of Appeals; a Supervisory Primary Examiner and an Acting Group Director; and a former Administrative Patent Judge with the Board of Patent Appeals and Interferences. The Group litigates in the Federal Courts, including the Court of Appeals for the Federal Circuit. The Group also appears before administrative agencies such as the Board of Appeals and Interferences.

The clients represented by the Group include HOYA Corporation (Japan), Panasonic Corporation (Japan), LG Electronics Inc. (Korea), Hyundai Mobis, Co. (Korea), Panasonic Electric Works Co., Ltd. (Japan), Amada Co., Ltd. (Japan), Sinopec (China), Sumitomo Wiring Systems, Inc. (Japan), and a number of U.S. subsidiaries of these companies.

Periodically, the Group prepares and distributes its own newsletter regarding current topics of interest. These newsletters are available at no charge.

Additional information regarding any subject summarized in a newsletter can be requested by sending us an e-mail or contacting Bruce H. Bernstein.