Patent Attorney Noriko Kuboyama

Reliable legal knowledge and career to protect
your valuable intellectual property.

PROFILE

Ms. Kuboyama graduated from Faculty of Economics at Yamaguchi University and started her career in the field of intellectual property at a patent firm in 1995 where she passed the patent attorney examination in 1997. In 1998, at a time when the “State Street Bank” U.S. court decision was issued and so-called "business model patents” were trending, Ms. Kuboyama joined corporate legal department of an IT services and computer software company. As in-house counsel of the Intellectual Property Management Group, she was entrusted with the planning and management of an in-house training program in order to make industrial Intellectual Property Department more profitable by promoting filing policies for business model patents with an eye to enforcing the rights. As a hands-on patent attorney in charge of above field of technology, she also gained a wide range of experience, from patent prosecution and trademark registration to the handling of licensing and infringement cases.

Ms. Kuboyama recalls that in the early days of said “business model” software related patents, examination guidelines were not yet in place, and it was difficult to foresee what would be patented in Japan. Therefore, based on the original text of above court decision, the U.S. examination guidelines (MPEP), and the interpretation of the Japanese patent law, Ms. Kuboyama focused on promoting inventions comprising systems specialized for business transactions. This experience of preparing patent specifications based on the interpretation of the basic patent law and predicting future modes of the invention in order to strive for an optimal protection as well as foreseeing the limitations thereof in the examination process has been particularly useful for recent AI patent applications.

Ms. Kuboyama joined our firm as patent attorney in 2013, where she contributes to the successful filing and enforcement of electronics and software related patent applications. Ms. Kuboyama’s motivation for providing the best perspective is to be entrusted with her clients' important intellectual property. Her solid legal knowledge and her experience in domestic and international patent prosecution enables her to successfully transform these inventions in to strong patent rights in Japan and abroad.

Fields of Expertise

Regarding her experience as an in-house counsel, Ms. Kuboyama has expertise in patent prosecution (computer software, information processing, telecommunications, electronics related inventions), prior art searches, FTO analysis, and international patent prosecution at the IP-5 offices. She also has experience in invalidation trial proceedings, etc. and provides knowhow on the appropriate resolution of patent disputes.

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Technical Fields
AR/VR systems, AI-related inventions, autonomous driving systems, medical and life science related inventions such as modality devices, medical image processing systems, “business model” related inventions, plant control and monitoring systems, plastic extrusion and molding control systems, civil engineering systems for manufacturing modular homes, daily necessities.
Birthplace
Yamaguchi Prefecture
Profession
Patent Attorney JPAA registered since 1997 (Reg. No. 11064)
Qualified IP Litigator in Japan (Registered in 2006)
Qualifications
Certification of the Japan Deep Learning Association (JDLA G Certificate)
Certification of the AI Implementation Test Executive Committee (AIEO Level B Certificate)
Professional Career
2013 – Takewa International Patent Office
2004 – 2012: Patent Attorney at a Patent Office
1998 – 2004: In-house Counsel at Intellectual Property Management Group, Legal Department of CSK (now SCSK) Corporation.
1995 – 1997: Patent Engineer at a Patent Office
Education
Graduated Faculty of Economics at Yamaguchi University, Department of Business Administration
Extra Curriculum Activities
2010: Guest Lecturer, Yamaguchi University, Faculty of Economics
2014: Guest Lecturer, Yamaguchi University, Faculty of Economics
2019-2021: Intellectual Property Support Center, Japan Patent Attorneys Association
Languages
Japanese, English