Japan - Intellectual Property: Domestic Lawyers & Law Firms - Asia-Pacific - Chambers and Partners
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Asia Guide

Intellectual Property: Domestic — Japan


Abe, Ikubo & Katayama - Intellectual Property: Domestic Department

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Band 1

第一等

Chambers Commentary (based on the Chambers research)

What the team is known for Market-leading practice with a proven track record defending multinationals in litigation centring on IP infringement and invalidation actions. Takes on high-profile cases in respect of patents and trade marks, and offers strong technical knowledge in fields such as biotechnology, chemicals, telecommunications and electronics. Highly proficient in representing clients before the Patent Office as well as the IP High Court and the Supreme Court.

Strengths One "extremely satisfied" client reports: "They have an abundance of people and give pertinent advice."

One peer observes: "They are a very well-known Japan IP firm and are also good with prosecutions."

Work highlights Represented Eli Lilly in defending nullity actions brought by three generic companies before the Japan Patent Office and in the IP High Court.

Defended Kowa on an infringement claim before the IP High Court pertaining to a patent covering a product for the treatment of Ménière's disease. The case centred on a new aspect of patent law concerning 'dosage claims'.

Notable practitioners

Mami Hino is favoured by clients for her ability to "understand the needs of Western clients and give different perspectives." Further, one observer reports: "She is very knowledgeable and has specific knowledge in chemistry and pharmaceutical matters." She acted successfully for Boehringer Ingelheim in challenging a nullity action by a generic company concerning its Micamlo patent.

Eiji Katayama is an "excellent and great lawyer" who is highly sought after for his depth of expertise in tackling contentious IP matters, including patent infringement claims. He is well versed in acting for manufacturers and pharmaceutical companies and can draw upon three decades of experience in representing clients at the Tokyo District Court.

About the Team (content provided by Abe, Ikubo & Katayama)

Department profile not yet provided by Abe, Ikubo & Katayama. Please see their firm profile.

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Anderson Mori & Tomotsune - Intellectual Property: Domestic Department

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Band 1

第一等

Chambers Commentary (based on the Chambers research)

What the team is known for Flourishing team with well-honed skills in an array of IP issues, especially in relation to patent infringement disputes. Also retained by drugs and electronics manufacturers on a range of transactional matters such as licensing agreements and the transfer of IP rights. Also offers advice on areas such as trade secrets and customs matters.

Strengths One commentator remarks: "They have strengths in intellectual property. They have both patent and trade mark prosecution and IP litigation capabilities."

Notable practitioners

Yasufumi Shiroyama is famed for his wealth of experience in patent and trade mark law. He maintains a robust track record in handling invalidation and infringement actions, and is singled out by observers as a "very friendly and likeable" practitioner who is "very smart" and "very diligent."

Yoshikazu Iwase is distinguished as a practitioner who is "very good at advising clients in the pharmaceutical and chemical" sectors. His recent workload includes acting on both patent infringement matters and trade secrets cases.

About the Team (content provided by Anderson Mori & Tomotsune)

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Nakamura & Partners - Intellectual Property: Domestic Department

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Band 1

第一等

Chambers Commentary (based on the Chambers research)

What the team is known for Outstanding boutique firm covering the full array of IP issues, including patents, trade marks and design rights. Recommended for its proficiency in contentious patent work as well as its ability to tackle cross-border IP transactions and unfair competition issues. A diverse client base includes leading manufacturers and TMT companies.

Strengths Clients widely regard the team as "a top-level firm in Japan with extremely high-quality service."

One client adds: "There are many veteran lawyers and patent attorneys who have a wealth of achievements and experience. Thus, as a client, there is a sense of security and they actively conduct discussions that include the client and resolve the issues."

Work highlights Successfully represented TOTO at the IP High Court following an appeal by Panasonic to invalidate TOTO's patent covering a flush toilet bowl.

Acted successfully for JAXA in defending a copyright infringement claim made against the client in IP High Court appellate proceedings.

Notable practitioners

Yoshio Kumakura is a seasoned practitioner who is praised by clients for his "deep knowledge and broad opinions on market precedent." He continues to advise on contentious matters and successfully represented KK EMAX Tokyo at the Supreme Court in appealing against a decision of the Fukuoka High Court in favour of Nippon Kenso Kogyo. The case concerned the trade mark 'EMAX'.

Koichi Tsujii is highly proficient in acting for clients in the telecommunications sector and represented KDDI in defending a JPY5.08 million patent infringement damages claim by Core Appli concerning software in smartphones. He is also trusted by corporations for his depth of knowledge in trade mark and copyright matters.

Kei Iida holds deep-rooted expertise in contentious IP matters. Of late, he represented Jill Stuart Asia at the Tokyo District Court in securing a provisional injunction against Sanei International. The case concerned Sanei's use of the Jill Stuart name in respect of women's clothing. He is also skilled in representing corporations against patent trolls.

About the Team (content provided by Nakamura & Partners)

Nakamura & Partners is an international patent and law firm which provides a wide range of services in the field of intellectual property inside and outside Japan.  Approximately 180 staff members, including about 60 patent attorneys and about 20 attorneys-at-law, work to provide various legal services.

The scope of the firm’s practice is extensive and includes both the enforcement of intellectual property rights and all other legal affairs relating to intellectual property law.

Specifically, the practice focuses on litigation and arbitration relating to intellectual property.  Nakamura & Partners’ lawyers have been involved in substantial intellectual property litigation, representing foreign and major domestic companies worldwide. Its expertise in technology work includes IT, hi-tech electronic, chemical, biotechnological and engineering fields.  Work also includes drafting and negotiations related to joint ventures, licensing, mergers and acquisitions, international business transactions, and general corporate affairs.

The firm further handles patent applications, design applications, trade mark and service mark applications, oppositions, and trials before the Japanese Patent Office. The firm also provides expert advice and representation relating to these intellectual property rights.

The firm has in-depth experience in advisory and prosecutory work relating to business model patents for trading companies, financial institutions and other organisations.

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TMI Associates - Intellectual Property: Domestic Department

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Band 1

第一等

Chambers Commentary (based on the Chambers research)

What the team is known for Houses an exceptionally strong bench of practitioners who cover the full spectrum of matters including copyright infringement, brand protection, patent invalidations and employee inventions. Maintains a significant presence in the sports sector in which it is mandated on marketing, sponsorship and licensing agreements. Additional strengths include acting for internet service companies and broadcasters.

Strengths One source reports: "They have a strong IP team and are very strong in copyright and trade marks."

Further, one client highlights: "Their services are excellent. They bring both technical and negotiation expertise in assisting me with mitigating patent risks."

Work highlights Represented Cremovision in a patent infringement claim filed by Iix and assisted in obtaining a favourable judgment at the Tokyo District Court which was later upheld by the IP High Court.

Acted successfully for Nihon Eve in IP High Court appellate consideration of a patent infringement dispute with Mentor Graphics.

Notable practitioners

Managing partner Yoshiyuki Inaba is a seasoned practitioner who is hailed as a "big name" and a "legend in the benrishi community." He continues to assist major corporations with trade mark filings and the management of their portfolios. His work also encompasses prosecutions and enforcements of clients' IP rights.

Mitsuko Miyagawa is most noted for her prowess in assisting corporations with brand protection matters. "She is very passionate about trade marks and has a very good niche area in luxury goods," reports one observer, while another remarks: "She is talented and smart." Miyagawa also handles contentious design and copyright matters.

About the Team (content provided by TMI Associates)

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Mori Hamada & Matsumoto - Intellectual Property: Domestic Department

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Band 2

第二等

Chambers Commentary (based on the Chambers research)

What the team is known for Offers a comprehensive service and distinguished for its abilities in contentious matters centring on copyright and trade mark disputes. Routinely acts on infringement and invalidation claims and has a strong following of technology and media clients. Advises on trade dress infringement matters and on the IP aspects of M&A transactions. The team is enhanced by the addition, as special counsel, of Ryuichi Shitara, former Chief Judge of the Intellectual Property High Court.

Strengths One interviewee states: "They are extremely good and offer a professional service."

Work highlights Acted for Hospira Japan in defending a patent infringement claim filed by Debiopharm International relating to generic anti-cancer drugs.

Notable practitioners

Sources single out Yutaka Miyoshi as a practitioner who is "a good lawyer who communicates very well and explains his thoughts very well." He is regularly instructed on patent infringement and preliminary injunction matters as well as trade dress infringement claims. He is also noted for his depth of expertise in copyright matters.

About the Team (content provided by Mori Hamada & Matsumoto)

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Nagashima Ohno & Tsunematsu - Intellectual Property: Domestic Department

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Band 2

第二等

Chambers Commentary (based on the Chambers research)

What the team is known for Offers expertise on both litigious and transactional IP, including patent invalidation and infringement actions, trade secrets disputes and unfair competition litigation. Recommended for its track record in representing pharmaceutical companies and manufacturers at the Tokyo District Court and before the Patent Office, and often called upon to assist with appeals at the IP High Court.

Strengths Clients enthuse: "They are very professional and provide very useful advice. Their abilities regarding contracts and negotiations are also excellent."

Work highlights Successfully represented Nichia with regard to IP High Court litigation which upheld a previous Tokyo District Court judgment justifying the client's contention that LEDs manufactured by Everlight Electronics infringed on Nichia patents.

Assisted Sanofi with an invalidation claim relating to patents covering a range of anti-PCSK9 antibodies held by Amgen.

Notable practitioners

Ryoichi Mimura is hailed as a "very energetic and bright" practitioner, valued by clients for his ability to draw upon his previous experience as an IP judge. Recent work highlights include successfully acting for Kyowa Hakko Kirin and Alcon Research in invalidation claim proceedings before the Japan Patent Office concerning the patent covering the clients' valuable eye drop product Patanol.

Masato Tanaka is acknowledged for being able to draw upon his experience as a former judge when handling IP matters. He is often called upon to act on contentious issues and is also adept in advising corporations on matters pertaining to transactional and broader corporate matters.

About the Team (content provided by Nagashima Ohno & Tsunematsu)

Nagashima Ohno & Tsunematsu has expertise in all aspects of IP
law, including licensing, litigations, new issues arising in the digital domain, IP-based M&A, joint ventures, IP-based structured finance, privacy and competition law IP issues, and handles a wide variety of disputes and provide pre-dispute advice as well as general, coordinated IP program structuring.

For more details, please visit our website http://www.noandt.com/en/practice/index.html.

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STW & Partners - Intellectual Property: Domestic Department

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Band 2

第二等

Chambers Commentary (based on the Chambers research)

What the team is known for Adroit group of litigation practitioners with a strong focus on IP. Noted especially for its talents in patent and trade mark litigation, acting for clients including those in the pharma and technology sectors. Offers a blend of both IP and unfair competition/antitrust expertise.

Strengths One client highlights: "Their advice is based on technical understanding. The lawyers also have a lot of experience in the field of trade secrets litigation." Another client remarks: "Their performance on our matter was excellent."

Notable practitioners

Wataru Sueyoshi continues to be regarded as "a leading lawyer in the IP industry." One client also adds: "He has a lot of experience in the field of intellectual property rights and trade secrets litigation."

Hajime Watanabe is singled out for his prowess in tackling IP litigation and competition matters. He also offers a wealth of knowledge in cross-border and trade secrets issues.

About the Team (content provided by STW & Partners)

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Jones Day - Intellectual Property: Domestic Department

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Band 3

第三等

Chambers Commentary (based on the Chambers research)

What the team is known for Well-regarded practice with capabilities in an array of contentious IP matters, including patent invalidation disputes, copyright infringement litigation and trade secrets protection. Works in conjunction with foreign lawyers to provide robust support to international corporations in the enforcement of their IP rights. Areas of additional expertise include the exploitation of IP assets including licensing.

Strengths One source reports: "They are easy to converse with and are able to handle matters fast. They are also able to utilise their global network in order to resolve problems."

Work highlights Assisted Wikimedia Foundation with trade mark prosecution issues and with regard to a refusal by the Patent Office of the client's Madrid Protocol application for Japan.

Continued to assist Starbucks with the enforcement of its trade marks, advising on areas such as the importation of counterfeit products as well as criminal investigations.

Notable practitioners

Michiru Takahashi's practice centres on a wide variety of trade mark issues. Her recent work highlights include acting for Dell on a range of patent and trade mark prosecution, enforcement and licensing matters. One client reports: "She has an abundance of experience. She is also very good at creating an environment in which it is easy to converse with her, and we feel that she thinks from the client's perspective."

About the Team (content provided by Jones Day)

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KUBOTA - Intellectual Property: Domestic Department

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Band 3

第三等

Chambers Commentary (based on the Chambers research)

What the team is known for Maintains a superb client base which includes both pharmaceutical and technology companies. Notable strengths in defending clients in IP litigation including patent invalidation actions. Also skilled in managing trade mark portfolios and anti-counterfeiting matters for leading brands.

Work highlights Represented Merck, both with regard to a patent infringement claim by Shionogi and in respect of a patent invalidation claim filed by generic drug manufacturer Towa.

Acted for Abbvie in defence of a patent invalidation claim concerning the drug Humira.

Notable practitioners

The "very experienced" Eiichiro Kubota continues to be a popular choice for both domestic and international corporations engaged in IP litigation. He has a robust track record in defending clients in patent disputes and has advised Sony on three patent matters filed by Fujifilm concerning data storage tapes for computers. He is also regularly instructed to act on anti-counterfeiting claims and trade mark portfolio management issues.

Yusuke Inui is swiftly establishing a reputation as a "very good" practitioner active in assisting domestic corporations in an array of patent and trade mark matters. His work includes advising Kokuyo on its global portfolio.

About the Team (content provided by KUBOTA)

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Yuasa & Hara - Intellectual Property: Domestic Department

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Band 3

第三等

Chambers Commentary (based on the Chambers research)

What the team is known for Maintains a strong reputation for its work on patents, trade marks and designs. Highly regarded for representing domestic and international companies active in the spheres of technology and life sciences.

Notable practitioners

Kozo Yabe is a seasoned practitioner with deep-rooted expertise in soft IP and more general corporate matters. His clients include those in the e-commerce sector.

About the Team (content provided by Yuasa & Hara)

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Senior Statesperson

Nakamura & Partners

From the Chambers Asia-Pacific guide

Yoshio Kumakura is a seasoned practitioner who is praised by clients for his "deep knowledge and broad opinions on market precedent." He continues to advise on contentious matters and successfully represented KK EMAX Tokyo at the Supreme Court in appealing against a decision of the Fukuoka High Court in favour of Nippon Kenso Kogyo. The case concerned the trade mark 'EMAX'.

^ See whole ranking table

Band 1

Abe, Ikubo & Katayama

From the Chambers Asia-Pacific guide

Eiji Katayama is an "excellent and great lawyer" who is highly sought after for his depth of expertise in tackling contentious IP matters, including patent infringement claims. He is well versed in acting for manufacturers and pharmaceutical companies and can draw upon three decades of experience in representing clients at the Tokyo District Court.

^ See whole ranking table

Band 1

Ohno & Partners

From the Chambers Asia-Pacific guide

Seiji Ohno of Ohno & Partners is highly proficient in tackling contentious matters concerning patent law. He commands great respect among his peers, who point to his handling of major cases and his deep understanding of the court systems and judges. One observer characterises him as "very high-calibre" while another characterises him as a brilliant lawyer who "works very hard."

^ See whole ranking table

Band 1

Yasufumi Shiroyama

Anderson Mori & Tomotsune

From the Chambers Asia-Pacific guide

Yasufumi Shiroyama is famed for his wealth of experience in patent and trade mark law. He maintains a robust track record in handling  invalidation and infringement actions, and is singled out by observers as a "very friendly and likeable" practitioner who is "very smart" and "very diligent."

^ See whole ranking table

Band 1

STW & Partners

From the Chambers Asia-Pacific guide

Wataru Sueyoshi continues to be regarded as "a leading lawyer in the IP industry." One client also adds: "He has a lot of experience in the field of intellectual property rights and trade secrets litigation."

^ See whole ranking table

Band 2

Anderson Mori & Tomotsune

From the Chambers Asia-Pacific guide

Yoshikazu Iwase is distinguished as a practitioner who is "very good at advising clients in the pharmaceutical and chemical" sectors. His recent workload includes acting on both patent infringement matters and trade secrets cases.

^ See whole ranking table

Band 2

Sakurazaka Law Offices

From the Chambers Asia-Pacific guide

Harumi Kojo of Sakurazaka Law Offices is described by commentators as "very talented and very experienced" in working on contentious IP issues. Another source reports: "She is a very good litigator who is very easy to deal with." She is also well versed in acting on unfair competition matters and licensing agreements.

^ See whole ranking table

Band 2

KUBOTA

From the Chambers Asia-Pacific guide

The "very experienced" Eiichiro Kubota continues to be a popular choice for both domestic and international corporations engaged in IP litigation. He has a robust track record in defending clients in patent disputes and has advised Sony on three patent matters filed by Fujifilm concerning data storage tapes for computers. He is also regularly instructed to act on anti-counterfeiting claims and trade mark portfolio management issues.

^ See whole ranking table

Band 2

Nagashima Ohno & Tsunematsu

From the Chambers Asia-Pacific guide

Ryoichi Mimura is hailed as a "very energetic and bright" practitioner, valued by clients for his ability to draw upon his previous experience as an IP judge. Recent work highlights include successfully acting for Kyowa Hakko Kirin and Alcon Research in invalidation claim proceedings before the Japan Patent Office concerning the patent covering the clients' valuable eye drop product Patanol.

^ See whole ranking table

Band 2

TMI Associates

From the Chambers Asia-Pacific guide

Mitsuko Miyagawa is most noted for her prowess in assisting corporations with brand protection matters. "She is very passionate about trade marks and has a very good niche area in luxury goods," reports one observer, while another remarks: "She is talented and smart." Miyagawa  also handles contentious design and copyright matters.

^ See whole ranking table

Band 2

Nakamura & Partners

From the Chambers Asia-Pacific guide

Koichi Tsujii is highly proficient in acting for clients in the telecommunications sector and represented KDDI in defending a JPY5.08 million patent infringement damages claim by Core Appli concerning software in smartphones. He is also trusted by corporations for his depth of knowledge in trade mark and copyright matters.

^ See whole ranking table

Band 2

Yuasa & Hara

From the Chambers Asia-Pacific guide

Kozo Yabe is a seasoned practitioner with deep-rooted expertise in soft IP and more general corporate matters. His clients include those in the e-commerce sector.

^ See whole ranking table

Band 3

Nakamura & Partners

From the Chambers Asia-Pacific guide

Kei Iida holds deep-rooted expertise in contentious IP matters. Of late, he represented Jill Stuart Asia at the Tokyo District Court in securing a provisional injunction against Sanei International. The case concerned Sanei's use of the Jill Stuart name in respect of women's clothing. He is also skilled in representing corporations against patent trolls.

^ See whole ranking table

Band 3

Mori Hamada & Matsumoto

From the Chambers Asia-Pacific guide

Sources single out Yutaka Miyoshi as a practitioner who is "a good lawyer who communicates very well and explains his thoughts very well." He is regularly instructed on patent infringement and preliminary injunction matters as well as trade dress infringement claims. He is also noted for his depth of expertise in copyright matters.

^ See whole ranking table

Band 3

Masahiro Samejima

Uchida & Samejima Law Firm

From the Chambers Asia-Pacific guide

Masahiro Samejima of Uchida & Samejima Law Firm is a "very talented and good attorney" who is distinguished for his depth of expertise in representing SMEs in IP disputes. He is particularly skilled in assisting corporations in the engineering and technology sector.

^ See whole ranking table

Band 3

Michiru Takahashi

Jones Day

From the Chambers Asia-Pacific guide

Michiru Takahashi's practice centres on a wide variety of trade mark issues. Her recent work highlights include acting for Dell on a range of patent and trade mark prosecution, enforcement and licensing matters. One client reports: "She has an abundance of experience. She is also very good at creating an environment in which it is easy to converse with her, and we feel that she thinks from the client's perspective."

^ See whole ranking table

Band 3

Nagashima Ohno & Tsunematsu

From the Chambers Asia-Pacific guide

Masato Tanaka is acknowledged for being able to draw upon his experience as a former judge when handling IP matters. He is often called upon to act on contentious issues and is also adept in advising corporations on matters pertaining to transactional and broader corporate matters.

^ See whole ranking table

Band 3

STW & Partners

From the Chambers Asia-Pacific guide

Hajime Watanabe is singled out for his prowess in tackling IP litigation and competition matters. He also offers a wealth of knowledge in cross-border and trade secrets issues.

^ See whole ranking table

Up and Coming

KUBOTA

From the Chambers Asia-Pacific guide

Yusuke Inui is swiftly establishing a reputation as a "very good" practitioner active in assisting domestic corporations in an array of patent and trade mark matters. His work includes advising Kokuyo on its global portfolio.

^ See whole ranking table

Up and Coming

Takamitsu Shigetomi

Oh-Ebashi LPC & Partners

From the Chambers Asia-Pacific guide

Takamitsu Shigetomi of Oh-Ebashi LPC & Partners is rapidly establishing a profile for his handling of IP litigation and in areas such as licensing and franchises. He is frequently mandated to act on a wide variety of contentious matters and is particularly in demand with clients in the pharmaceutical and hi-tech industries. He is numbered among the best lawyers in Osaka by one commentator and another source comments: "He is a very nice guy and I can recommend him."

^ See whole ranking table