Emiko Yano

Emiko Yano

Patent Attorney

Partner
TEL: +81-3-6452-9284
Email: emiko.yano@kubota-law.com

Ms. Emiko Yano is a patent attorney qualified in Japan

After graduating from the Faculty of Pharmaceutical Sciences at Kyoto University in 1984, Ms. Yano joined Yamanouchi Pharmaceutical Co., Ltd., and was involved in biopharmaceutical research and drug discovery at the Molecular Biology Research Department. From 1991, she moved to the Patent section and worked on patent prosecution, in-licensing evaluation, contract review and patent litigation especially in the biotechnology field. Ms. Yano registered as a patent attorney in 1996. From April 2011 to March 2016, she served as a group leader (Executive Director) of the First Group at the Intellectual Property Department of Astellas Pharma Co., Ltd. She joined KUBOTA from April 2017.

While working at Astellas, she was also active in external activities related to intellectual properties. From 2000 to 2011, she was a member of The First Patent Committee and Medicinal and Biotechnology Committee (where she served as Chairperson in 2010 and 2011) of The Japan Intellectual Property Association (JIPA). In 2008 and 2009, she served as a bio-pharmaceutical expert member of the "Case Study on Patentability" which was held by the Trial and Appeal Division of the Japan Patent Office.
From 2007 to 2011, Ms. Yano lectured on intellectual property at the Faculty of Pharmaceutical Sciences at the University of Tokyo. From 2012 to 2016, she was an expert member of the Intellectual Property Committee of the Japan Pharmaceutical Manufacturers Association. In 2016, she was the vice chairperson of the Intellectual Property Committee of the Pharmaceutical Manufacturers' Association of Tokyo.

From March 2014 to March 2017, she served as a member of the Patent System Subcommittee in the Industrial Structure Association of the Ministry of Economic, Trade and Industry. She also served as a member of the Biotechnology and Life Science Committee of the Japan Patent Attorneys Association from April 2018 to March 2021 (as vice-chair from April 2019 to March 2020).

From June 2019 to March 2024, She was a Lecturer (part-time) of Tohoku University Graduate School of Medicine.

She is currently a court expert of the Tokyo High Court, Tokyo District Court, Osaka District Court.

Ms. Yano speaks English and Japanese.

Bibliography:

Research on novelty / inventive step judgment of gene-related inventions (co-author, June edition, 2001, Intellectual Property Management, Journal of JIPA)

Research on rights acquisition and rights interpretation in functional / characteristic claims of bio-related inventions (co-author, December edition, 2002, Intellectual Property Management, Journal of JIPA)

The arbitrage license system for biotechnology-related inventions (co-author, May edition, 2004, Intellectual Property Management, Journal of JIPA)

A Study on the Smooth Utilization of Non-Substitutable Upstream Technology Patents in Research (co-author, August edition, 2004, Intellectual Property Management, Journal of JIPA)

Tripolar Comparative Study of Japan, US and Europe on Functional Expression Claims of Pharmaceutical Compounds (co-author, January edition, 2006, Intellectual Property Management, Journal of JIPA)

Infringement Exemption and Research Tool Patent under Article 271 (e) (1) of the US Patent Law - A Study on the Supreme Court Decision of the Merck Integra Case and the Research Tool Patent (co-author, August edition, 2006, Intellectual Property Management, Journal of JIPA)

Tripolar comparative study of Japan, the United States, and Europe regarding the examination of gene patent applications - Consideration of novelty judgment in the presence of similar sequence prior art - (co-author, April edition, 2007, Intellectual Property Management, Journal of JIPA)

Practical guidelines from recent trial decisions and court decisions in the field of biotechnology (co-author, August edition, 2007, Intellectual Property Management, Journal of JIPA)

Tripolar Comparative Study of Japan, US, and Europe on Examination of Antibody Patent Applications (co-author, July edition, 2008, Intellectual Property Management, Journal of JIPA)

Tripolar Comparative Study of Japan, US, and Europe on Examination of Antibody Patent Applications (continued) (co-author, April edition, 2009, Intellectual Property Management, Journal of JIPA)

Practical guidelines from recent trial decisions and court decisions in the field of biotechnology (co-author, August edition, 2009, Intellectual Property Management, Journal of JIPA)

Antibody Pharmaceuticals and Patents (Journal of Intellectual Property Association of Japan, Vol.16, No.1, 2019)

Technical scope of the antibody claims described in functional expression: Intellectual Property High Court /Judgment of October 3, 2019 / Case No. 2018(Ne) 10043 (Appeal case of seeking injunction against patent infringement) and Intellectual Property High Court /Judgment of October 30, 2019 / Case No. 2019(Ne)10014(Appeal case of seeking injunction against patent infringement) (A.I.P.P.I., Journal of the Japanese Group, Vol. 65 No.12, 2020)

Relationship between patents and generic drug approval operation and Recent cases of disputes between originator and generic companies (March edition, 2022, LES Japan News)

Intellectual property strategy for antibody drugs (Experimental Medicine Special Issue, Vol.40, No.20, 2022)