NAKATANI Tomoko
Biotech and Pharmaceuticals group direct

NAKATANI Tomoko

Ms. Tomoko Nakatani qualified as a Japanese Patent Attorney in 2001. Ms. Nakatani has been engaged in IP services focusing primarily on support for biotech and pharma start-ups and universities for over 10 years.
Ms. Nakatani started her career at a Japanese pharmaceutical company, Sankyo, and then has built her career at a venture capital firm as well as Japanese IP firms. Ms. Nakatani has supported foreign biotech and pharmaceutical start-ups in creating successful Japanese IP protection.

Current Practice Areas

Ms. Nakatani’s practice focuses on the Preparation and Prosecution of Domestic and International Applications, Expert Opinions, IP Consulting, IP Lectures, and Advisory Services.

Technological Fields:
Biotechnology and Pharmaceuticals

Careers

During her work in the intellectual property department in the Japanese pharmaceutical company, Sankyo, Ms. Nakatani handled procedures before the Japanese Patent Office and foreign patent offices, developed patent strategies, drafted and reviewed contract documents, and assisted with laboratory operations.
As a member of a bio-related venture capital firm, she has contributed in IP-utilization consulting for Incorporated Administrative Agencies, IP due diligence of biotech and pharmaceutical start-ups for investment, development of IP protection systems in invested companies, drafting and advising on contracts, advising on dealing with patent infringement. In addition, she was a project manager of a project of the Ministry of Economy, Trade and Industry, “FY2004 Baio Jinzai Ikusei Jigyo – Chiteki Zaisan Shien Jinzai Ikusei Jigyo” (FY2004 Developing Human Resources in the Biotechnology Industry – Developing Human Resources for IP Support).
Then, she has founded a Japanese IP firm, which was specialized in supporting biotech and pharmaceutical start-ups and universities, where she served as a corporation patent attorney, provided advice to investors on IP due diligence of a start-up’s IP, handled domestic and international patent applications in biotechnology and pharmaceuticals patents including patent search (infringement/patentability), and advised on patent infringement. These support including governmental funded program such as a project of Japan Science and Technology Agency (JST), “Program for Creating STart-ups from Advanced Research and Technology (START Program)”.

Publications

● “IP trends” Nikkei Baio Nenkan, 2013 - Present (in Japanese)
● “Revision of patent term extension rules – Impact on pharmaceutical companies” Nikkei biotechnology & business Online March 31, 2016 (in Japanese)
● Serial “How to cooperate with IP” Nikkei biotechnology & business Online April 1, 2015 to September 29, 2016 (in Japanese)
● “‘Designer baby’ patent established – The criticism that it may lead to the selection of babies” Nikkei biotechnology & business December 2, 2013 (in Japanese)

Seminar · Lecture · Award history

Ms. Nakatani has lectured on the following topics:

● “Preliminary course in IP”, Bio-leaders course, June 2017, Japan Bioindustry Association (JBA) (in Japanese)
● “The creation and utilization of IP for bio-related start-ups”, September 2016, Tottori Industrial Promotion Organization (in Japanese)
● “How Patents benefit us?”, Medical innovation lecture, June 2016, Chiba University (in Japanese)
● “FY2015 Brush-up seminar for bio-related start-ups focusing on drug design and medical care", Tokyo/Osaka/Hokkaido/Okinawa, Japan Bioindustry Association (JBA) (in Japanese)
● “Design for patent establishment and latest topics”, KANAGAWA Bio Seminar 2014, August 2014, Yokohama & Kanagawa Bio Business Network (in Japanese)
● “What patents of start-ups should be in terms of business strategies”, July 2012, Yokohama & Kanagawa Bio Business Network (in Japanese)
● “The future of biosimilars from Japan’s perspective – Advice on manufacture and sales of biosimilars in terms of patents”, Human science comprehensive research workshop, January 2012, the Japan Health Sciences Foundation (JHSF) (in Japanese)
● “Introduction to IP – Current situation and future perspectives in medical and biological patents”, MEBIOS extension seminar, October 2010, Keio University (in Japanese)
● “Hints for the strategic creation and utilization of IP”, FY 2010 IP seminar for small and medium-sized firms and start-ups, August 2010 (in Japanese)
● “Research results and patents – Basic knowledge for conducting research in consideration of patents”, July 2010, Kitasato University (in Japanese)
● “Research plan and IP position”, June 2010, Tokyo Women's Medical University (in Japanese)
● “IP strategies for small and medium-sized bio-related start-ups considered from case examples”, FY 2008 IP seminar for small and medium-sized enterprises and start-ups, March 2009, Chiba Prefecture (in Japanese)
● “Recent topics and practical applications based on patents”, September 2008, Showa University Fujigaoka Hospital (in Japanese)
● “IP strategies for bio-related companies”, IP seminar, August 2008, Yokohama city (in Japanese)
● “Research plan and IP position - Research stages and the timing of patent acquisition”, December 2007, Saitama Medical University (in Japanese),
● “Patent strategies considered from case examples in the biotechnology field”, FY 2007 IP seminar, Kurume, December 2007 (in Japanese)
● “Basic knowledge for IP Position establishment by bio-related start-ups”, FY 2007 Biotechnology business global development seminar, Tokyo/Toyama/Osaka, 2007, JETRO (in Japanese).

Ms. Nakatani also served as a facilitator for an extension program held by University of Tsukuba in July 2017.