About

Toshiko Takenaka is the Washington Research Foundation/W. Hunter Simpson Professor of Technology Law at the University of Washington School of Law, where she joined the faculty in 1993. She teaches courses in Patent Law, Advanced Patent Law, Intellectual Property, and Innovations in Science and Technology. Professor Takenaka is the Director of the Center for Advanced Study and Research on Intellectual Property (CASRIP). Her research focuses on comparative patent law, patent enforcement, and the development of intellectual property policies, particularly in the context of industry 4.0 and open innovation. She has extensively published in her field and is a frequent speaker at academic and professional seminars. Her background includes a successful career in patent prosecution and management with Texas Instruments Japan Ltd., and she holds a Bachelor of Law degree from Seikei University in Tokyo. She earned her LL.M. and Ph.D. in Comparative Law from the University of Washington School of Law, and has served as a visiting scholar at the Max Planck Institute for Domestic and International Intellectual Property in Munich, Germany, as well as a visiting professor at Waseda University in Tokyo. Professor Takenaka is actively involved in advising the Japanese government on IP policies and serves on editorial boards and committees related to intellectual property law.

Research topics

• Political Science
• Business
• International trade
• Law
• Economy
• History
• Economics
• Accounting
• Art

Selected publications

• PCT and inclusive utility model reform for open innovation

  Edward Elgar Publishing eBooks · 2024-06-12

  book-chapter1st authorCorresponding

  Patent owners in High Tech industry and the open-source community are key players in the post-Internet era and use patents defensively to avoid litigation and proactively to promote open innovation. They do not use patents to exclude others due to the open-source philosophy and a risk of counter-infringement assertion. They disclose their inventions without filing a patent application through non-patent disclosure mechanism due to the high cost of patent filing. Individual inventors could play a key role but fail to disclose their inventions due to initial disclosure cost. Economic scholars recognize this lack of disclosure as a market failure and urge to provide cheap and easy intellectual property. Utility model systems should provide such an intellectual property. Not every country has a utility model system, and the current utility model system is outdated for failing to consider the needs of these key players. To better serve the key players’ needs, this chapter proposes a reform of the PCT system and utility model systems by reducing the cost for disclosing the inventions in the international publication and by enhancing the inclusive nature of utility model rights with introduction of statutory license and revised compulsory licenses in utility model protection.

  PublisherDOI

• Patentable Subject Matter (Eligibility)

  Edward Elgar Publishing eBooks · 2024-04-25

  book-chapter1st authorCorresponding

  The Encyclopedia of Intellectual Property Law is quite simply the definitive reference work in the field. Bringing together over 350 authors from across the world, the Encyclopedia sheds light on the current global state of Intellectual Property Law, providing unique insights into the discipline and how it is affected by globalization and increased regional integration. New entries will be added every month and PDF downloads will be available once the Encyclopedia is complete.

  PublisherDOI

• US patent reform 2.0: Simplifying first-inventor-to-file novelty

  Edward Elgar Publishing eBooks · 2023-03-17

  book-chapter1st authorCorresponding

  This chapter examines the first-inventor-to-file novelty that the U.S. Patent System adopted to replace the first-to-invent novelty through the enactment of America Invents Act (AIA) in comparison with the first-to-file novelty under the European Patent Convention. Congress created the first-inventor-to-file novelty by bringing the best aspects of the first-to-invent and the first-to-file novelty through the definition of the prior art based on the effective filing date while maintaining the one-year grace period. It reviews AIA’s legislative history and discusses goals that Congress and the AIA drafters intended to accomplish. This article examines whether such goals are achieved and proposes reforms to accomplish the goals more completely.

  PublisherDOI

• Grace Period Harmonization in the Open Innovation Era

  GRUR International · 2023

  1st authorCorresponding
  • Political Science
  • Political Science
  • International trade

  Abstract This article urges European companies to discard their prejudices and work with their patent offices to adopt a grace period in the European Patent Convention (‘EPC’) in exchange for the United States’ reconciliation of the definition of the prior art, harmonizing the differences remaining after the America Invents Act (AIA). The negative view that European companies have taken of a grace period is contrary to the experience in Japan, where an unrestricted grace period helped large companies engage in open innovation and increase their use. Empirical studies have substantiated the negative impacts of the lack of a grace period on European SMEs and Universities. After highlighting the differences in the prior art under AIA and EPC, this article will conclude with a proposal for a 12-month, U.S.-style grace period to harmonize the patent systems in Paris Union member states. The adoption of this proposed grace period would result in a win-win outcome for both the United States and European countries.

  PublisherDOI

• Inventorship Standards for Biotechnology Inventions Under the U.S. and Japanese Patent Acts

  SSRN Electronic Journal · 2021-04-30

  articleOpen access1st authorCorresponding

  This article highlights differences between the United States and Japanese inventorship standards by comparing a U.S. Federal Circuit decision and a Tokyo District Court decision in which inventorship of the same invention was disputed. It further discusses how Japanese courts would, by applying Japanese inventorship standards, not find one of the U.S. researchers in this case to be inventor, despite the Court of Appeals for the Federal Circuit (CAFC) finding inventorship while applying the U.S. standard. It argues that the U.S. standard is overinclusive by including individuals for contributing to any part of the inventive process, but that the Japanese standard is too difficult to meet and may exclude inventors who made an important contribution. The overinclusive U.S. standard is influenced by the legacy of “first-to-invent”: a formality requirement that all individual inventors must contribute to every claim to file a single application and a substantive requirement that an inventor’s prior joint invention is the prior art against her later invention unless the same group of individual inventors made both inventions. The article concludes with a discussion of advantages and disadvantages of applying the U.S. and Japanese standards for determining inventorship of biotechnology inventions and proposes an inventorship standard harmonization through the leadership by World Intellectual Property Organization (WIPO). Contact author for view-only access to the online publication.

  Publisher

• Book Review (Reviewing Henning Hartwig Ed., 2021 Research Handbook on Design Law)

  SSRN Electronic Journal · 2021

  1st authorCorresponding
  • Political Science
  • Political Science
  • Law

  This review discusses a book that examines design protection by different types of intellectual property rights in multiple jurisdictions. The editor, Dr. Hartwig, a leading design law practitioner involved in the landmark decisions of the Court of Justice for European Union (CJEU), selected fundamental and advanced topics of product design protection; the world’s leading practitioners and scholars joined to write on the topics from the comparative law approach. The book mainly focuses on the EU and the US, but various chapters cover other major jurisdictions including Japan, China, Australia, Brazil, South Africa, and Turkey. The review includes the structure and topics of the book and discusses the valuable information available from the book for US IP lawyers. Many features of EU design protection are unique and not well-known to non-EU IP lawyers. The book discusses trademark, copyright and other neighboring rights which will function as fallback options for protecting product designs if the designs were first disclosed outside the EU without filing a design application at the EUIPO during the one-year grace period and thus cannot rely on unregistered community design rights. The review recommends the book to law students, IP lawyers, and academics. It offers a starting point to learn the basics of design protection and research on most current issues in product design protection in the global market.

  Publisher

• Inventorship Standards for Biotechnology Inventions Under the U.S. and Japanese Patent Acts

  GRURRR. Gewerblicher Rechtsschutz und Urheberrecht, Rechtsprechungs-Report/GRUR-DVD/GRUR-CD/IIC/Gewerblicher Rechtsschutz und Urheberrecht/Gewerblicher Rechtsschutz und Urheberrecht. Internationaler Teil · 2021-04-20 · 1 citations

  article1st authorCorresponding
  PublisherDOI

• The Doctrine of Equivalents and the Third Prong of the German Test: A Comparative Law Perspective

  SSRN Electronic Journal · 2021-02-01

  articleOpen access1st authorCorresponding

  This article examines the recent trend of applying and limiting the doctrine of equivalents (DOE) in U.S. and German courts. The German Federal Court of Justice (BGH) established a three-prong test for applying the DOE in Schneidermesser. In Pemetrexd, BGH’s application of the third prong – guidance by the claim – moved German DOE more in line with that of U.S. in preventing patentees from asserting DOE on disclosed but unclaimed variant means. Although prosecution history estoppel (PHE) remains a major difference between German and U.S. DOE, the Federal Circuit’s new approach to applying PHE flexibility results in a merger with the German approach in Formstein — DOE is rejected when the accused embodiment lacks novelty or an inventive step. As a result, both BGH and the Federal Circuit reached the same conclusion in the German and U.S. Pemetrexed cases: Infringement under DOE.

  Publisher

• Breathing New Life into the German Utility Model System in the Industry 4.0 Era

  GRUR International · 2021-06-21

  article1st authorCorresponding

  Abstract Key players of Industry 4.0, high-tech firms and individual inventors, do not use patents to exclude others due to the open source philosophy and the risk of a counter-infringement assertion. These key players have developed new uses of patents: (1) defensive use to avoid litigation and (2) proactive use to promote open innovation. They want to be rewarded with the freedom to operate instead of monopoly profits through exclusivity. To better serve the key players in light of these new uses, the German utility model system should be reformed by incorporating a statutory license to implement the open source philosophy and adopting a simplified claiming and disclosure format. The current German translation requirement should be removed to globalize the system.

  PublisherDOI

• Inclusive Patents for Open Innovation

  SSRN Electronic Journal · 2020-02-21

  articleOpen access1st authorCorresponding

  The post-internet era has greatly affected commercial firms’ innovation processes. The complexity and cumulative nature of emerging technologies under the post-internet era has made commercial firms reevaluate their innovation processes and has increased the role of individual innovators. Firms dealing with emerging technologies cannot make products without infringing on patents held by others, as their products are covered by numerous overlapping patents. Many of these firms work with individual innovators and embrace the open-source philosophy that ensures open access to technologies. These firms can no longer use patents for excluding others without risking infringement counterclaims, leading to the development of new uses of patents: defensive use to avoid litigation and proactive use to promote open innovation. The current U.S. patent has become increasingly outdated for failing to take into account these new uses of patents. Although firms have implemented self-help arrangements by retooling patents with licenses and private-ordering mechanisms, the arrangements still fall short as they result in: (1) no defensive function against patent assertion entities (PAEs) and (2) insufficient proactive use if innovators fail to disclose their invention through USPTO, due to expensive patent costs. Patent reform is necessary to overcome such shortcomings. In light of recent changes, this article proposes issuing inclusive patents as an alternative option to current exclusive patents. The proposed inclusive patents allow anyone who licenses their patented inventions to practice the protected invention, and are only enforced defensively when the owners are charged with infringement. The inclusive patents enable owners to request a preliminary procedure to grant a compulsory license in light of the eBay factors when they are charged with infringement of blocking patents. The compulsory license enhances the defensive use of inclusive patents to avoid litigation with PAEs, and guarantees owners the freedom to operate and innovate on their inventions. Because of the limited exclusivity, the USPTO should allow simplified patent applications and issue inclusive patents without examination. With low patent costs, all types of innovators can take advantage of the proactive use of inclusive patents through USPTO disclosures.

  Publisher

Frequent coauthors

• Jan Krauß

  University of Salzburg

  3 shared

• Jochen Pagenberg

  Max Planck Society

  2 shared

• Christof Karl

  2 shared

• Martin J. Adelman

  2 shared

• Herbert Hovenkamp

  University of Pennsylvania

  1 shared

• Keith E. Maskus

  1 shared

• Michael J. Meurer

  University Hospital Carl Gustav Carus

  1 shared

• Hugh T. Patrick

  1 shared

Awards & honors

• Washington Research Foundation/W. Hunter Simpson Professor o…