Yuji Orita

What inspired you to pursue a career in intellectual property, and what advice would you give to others considering a similar path?

I pursued a career in intellectual property because I had an interest in both technology and law. During my days as a student, I realised the importance of intellectual property while conducting research. Technological advancements have the power to change society, and in order to protect and utilise these technologies, specialised knowledge in intellectual property is necessary. I was motivated to pursue a career in this area in the hope that I could assist Japanese companies to thrive on the international stage.

My advice for others considering a similar career path would be to first identify the field that interests you the most, whether that be patents, trademarks or copyright. By focusing on a field that you are passionate about, you can better dedicate yourself to learning and growing as an expert. Additionally, gaining practical experience is crucial. By getting involved in real cases, you can apply your knowledge in a practical manner and develop the skills necessary to succeed. While the IP world may be considered small, there are many individuals who excel across various fields. Therefore, I recommend networking with different professionals to broaden your perspective.

You have been described by IAM as a “formidable leader”. As a director of NGB and general manager of the company’s IP research institute, what does inspiring leadership look like to you?

I am honoured to be recognised as a formidable leader by IAM. As a director of NGB and the general manager of NGB's IP Research Institute, I strive to practise inspiring leadership. I believe that this involves motivating the team and providing the right guidance to help us move towards our goals together. I focus on maximising the abilities of my team members and creating an environment that supports all of us to achieve our objectives. Specifically, I engage in goal setting, maintaining a clear vision and prioritising communication. I also provide opportunities for continuous education and training to support the growth of my team. Further, I place huge emphasis on staying updated with the latest know-how and technological trends, and providing my team with information that will nurture their expertise.

How has your membership of the Licensing Executives Society contributed to your professional development?

Being a member of the Licensing Executives Society contributes greatly to the enhancement of my professional capabilities. This organisation brings together individuals with notable expertise in IP licensing and provides opportunities for information exchange and networking. Through interactions with my fellow members, I have the opportunity to learn about the latest trends and best practices, thus improving my own professional skills. Participating in exclusive seminars and workshops for members also allows me to share my own practical experiences and new insights. Further, building rapport among members can lead to expanded business opportunities and potential partnerships that are beneficial for both parties.

On top of that, you undertake patent analysis on ESG investment. What impact, if any, is the climate crisis having on patent filings?

Efforts to address the climate crisis are impacting corporate values and brand image. Consumers and investors tend to support environmentally-conscious companies and sustainable business models over companies that don’t hold these values. Therefore, consideration of ESG has become increasingly important in patent applications. Applicants are expected to demonstrate how their technology and innovations will contribute to a sustainable society.

Consideration of ESG is also important in IP information analysis. When analysing patent databases and patent literature, it is necessary to collect information about their environmental impacts and evaluate the ESG performance of the related companies and technologies. This allows investors and businesses to focus on sustainable technologies and innovations.

In summary, information regarding environmental impact and sustainability is a crucial element in patent applications. As efforts to address the climate crisis alter corporate values and brand image, consideration of ESG elements must be considered in any IP information analysis. Companies are increasingly expected to demonstrate how their technology and innovation contribute to a sustainable society.

How would you characterise the IP transactions space in Japan right now?

Traditionally, Japanese companies have been less inclined to sell their acquired patents to other companies. However, more recently there has been an increase in the sale of dormant patents in the market – they are being sold rather than simply being discarded. This allows companies to maximise the utilisation of their assets. It also promotes collaboration with other companies and the mutual use of technology, which leads to innovation.

We are seeing a gradual trend of Japanese companies acquiring patents from overseas when starting new businesses. This indicates that they recognise the need to incorporate new technologies and knowledge to maintain their competitiveness in the global market. Through patent acquisition, companies can protect their unique technologies and products, ensuring that they secure a competitive advantage.

The changes in IP transactions in Japan are driven by shifts in business strategies coupled with the evolving global competitive environment. It is expected that Japanese companies will continue to focus on the effective utilisation of intellectual property and the establishment of global networks, aiming to continue their sustainable growth in the future.

You have extensive experience of working with foreign attorneys to enforce Japanese companies’ rights in US and Canadian litigation. How do you emphasise clients’ needs to foreign legal representation?

I have found that effective communication is key when it comes to emphasising clients' needs to foreign legal representation. Throughout my career, I have worked closely with foreign attorneys to ensure a clear understanding of my clients' objectives and priorities. This involved providing comprehensive briefings and documentation that outlined the specific needs and expectations of the client. I actively engage in regular communication and collaboration with foreign legal teams to foster an open and transparent dialogue in which we can easily address any concerns or questions that may arise. By establishing a strong working relationship and effectively conveying our clients' needs, we can ensure that their rights are properly enforced in US and Canadian litigation.

Yuji Orita

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Yuji Orita is a director at NGB Corporation and the general manager of the NGB IP Research Institute, the award-winning research arm of NGB Corporation. He graduated with a master’s degree from Tokyo Institute of Technology. Mr Orita’s areas of expertise includes supporting foreign patent prosecution and litigation for Japanese clients, as well as working with foreign attorneys and providing them with patent search and analytics services.

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