Multi-skilled: Attorney serves as 'ambassador' to firm's clients, businesses

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By Sheila Pursglove
Legal News

After Kiyoshi Kozu graduated from Tokyo University of Science in 1985 with a bachelor’s in engineering, he worked for an IP Division of Seiko Epson Corp. in Japan. Assigned to various tasks and projects, including domestic and foreign patent applications, offensive and defensive patent licensing negotiations, and patent litigation, he was involved in a number of products, including a semiconductor device, watch, LCD, projector, and printer. He also interacted with U.S. patent attorneys on various occasions.   

“I enjoyed having technical and legal discussions as part of the licensing negotiation processes with other Japanese, U.S., and Korean companies,” says Kozu, now a patent attorney and principal with Harness Dickey, an intellectual property law firm with an office in Troy. “I was also involved in patenting a very important technology for a semiconductor device, which was a terrific experience.”

He was also instrumental in the successful patent infringement litigation involving ink cartridges for Epson inkjet printers before the International Trade Commission and U.S. District Court.

“Although an ink cartridge for an inkjet printer has a generally simple structure, Seiko Epson carefully and strategically managed to file many different kinds of patent applications—through also continuation and divisional applications—and prosecute them with carefully selected arguments in remarks,” he explains. “Those efforts were beneficial, with respect to an inkjet cartridge infringement case, for their victories before the ITC and in federal district court against 29 defendants.

In 1997, Kozu transferred to an IP section of Seiko Epson’s U.S. R&D subsidiary in San Jose, Calif., where he worked closely with the in-house patent attorney and patent agent. 

“However, because I was a client, I realized outside counsel didn’t always give us full or honest opinions—they sugarcoated their opinions for us,” he says. “I sometimes felt unsatisfied with their reactions and counsel. At the same time, I wanted to have the same knowledge and experiences of a patent attorney to have effective and frank discussions about legal issues.”

Then lady luck stepped in. While working in San Jose, Kozu met a patent attorney who was born and raised in Japan, had moved stateside, and was admitted to practice in the States and with the U.S. Patent and Trademark Office.

“Although he described having had a very hard time in law school, he said I could become an attorney if I worked very hard,” Kozu says.

Motivated by this meeting and by his work experiences, in 2001 Kozu headed to Cooley Law School.

“Because English is my second language, I had a very hard time and studied the most I ever have in my life, but I really enjoyed learning the various logical thinking processes for many different legal subject matters,” he says.

“Unlike math and science, though, I also like there is not a single answer for a legal case. I remember that adverse possession in a property class was my first shocking new discovery in a legal field. I also really enjoyed my federal taxation class because half of study topics related to math, and it was easy for me to get an A.”

Kozu, who joined Harness Dickey in 2011, serves as an “ambassador” to Japanese clients and businesses. Although the number of Japanese clients in the U.S. is smaller than the number in Japan, he has Japanese clients in the U.S. for whom he works on their U.S.-originated inventions, as well as an individual Japanese inventor living in the U.S.

He visits Japan two or three times a year for meetings with existing and prospective clients; and when possible on those trips, attends a gathering of Tokyo University of Science alumni who work in IP. The members, who meet every month, include a president of the Japan Patent Attorney Association (JPAA), Japanese patent attorneys, JPO examiners/patent judges, and in-house IP professionals.
A member of the Japan Business Society of Detroit, State Bar of Michigan and the District of Columbia Bar, Kozu notes that IP law requires a special and unique skill, a combination of technology, law, and language skills.

“I think it’s very important to have a good balance among these three skills,” he says.           

A native of Nagano city, Nagano prefecture in Japan—where the Winter Olympic Games were hosted in 1998—Kozu now makes his home in Rochester Hills. He and his wife are “empty-nesters” with their daughter a senior in college and their son working for an automobile company in Texas. When his children were younger, they attended Washington Japanese Language School in Washington, D.C., and then the Japanese School of Detroit every Saturday, and Kozu participated as a volunteer member of the management committee for both schools.

In his own school days, Kozu enjoyed the Japanese martial art of Kendo; and in college, enjoyed motor sports, such as dirt-trial and rally. Nowadays he enjoys scuba diving, watching action movies, and traveling with his wife. He also enjoys spending time with the family’s dog Candy, a mix of hound and retriever.

“We rescued her in 2014 when she was six months old. Although we were told she was fully grown, she doubled her weight in half a year and now weighs over 70 pounds,” Kozu says. “I enjoy long walks with Candy twice a day, canoeing with her, and teaching her tricks.”



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