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Editorial

Independent local firms

Index of tables

  1. Intellectual property: independent local firms
  2. Leading individuals: bengoshi

Leading individuals: bengoshi

  1. 1

At Nakamura & Partners, Takaki Nishijima spearheads the electrical and IT team, Takeshi Deshimaru leads the mechanical and design practice, and Kazuo Yamasaki manages the chemical and biotechnology group. The bengoshi and benrishi (patent attorneys) handle applications, appeals and trials before the Japan Patent Office (JPO) and foreign agencies. Representing Sony in a patent infringement claim brought by a well-known patent troll was a highlight. Other key managing partners include trade mark and unfair competition expert Hiroyuki Itaki, Shinichiro Tanaka and Koichi Tsujii. Yoshio Kumakura and Kei Iida are also recommended alongside newly promoted partners Yuriko Sagara, Shoichi Satake and Naoki Okumura.

TMI Associates fields skilled attorneys and benrishi with expertise in fields such as nanotechnology, semiconductors and pharmaceuticals. Led by senior partner Tomohiro Tohyama and Yoshiyuki Inaba, the practice advises on the procurement, maintenance and execution of IP rights. Counsel Shoji Kobayashi registered a sound and moving mark with the JPO on behalf of ST Corporation; Mitsuko Miyagawa also worked on the matter and has been active in unfair competition and copyright infringement. Partner promotions include Toyotaka Abe and Kentaro Ito. Shunji Sato, Makoto Okada and Yoshiro Masumoto are distinguished individuals.

Anderson Mori & Tomotsune houses widely regarded patent litigators that have additional expertise in trade mark, copyright and entertainment disputes. The firm is also strong in IP licensing and transactions. The benrishi handle patent prosecution proceedings and filings before the JPO. Yasufumi Shiroyama, Akihito Nakamachi and Yoshikazu Iwase head the team, which provides technical expertise in the areas of electronics, telecoms and pharmaceuticals, among others. Wataru Shimizu and benrishi Masahiro Moriyama joined from Ohno & Partners. Clients include Aktana, I-O Data Device and Murata Machinery.

Already a ‘very strong’ practice, Kubota continued its expansion by hiring Chiaki Kato from Ryuka IP Law Firm as head of trade marks. As well as protecting IP rights, Kato conducts prosecution and pre-litigation counselling for clients up against infringement claims. Managing partner Eiichiro Kubota is ‘a rock’ for companies facing patent and trade mark litigation, infringement or invalidity claims. He defended Merck against a patent infringement claim filed by Shionogi regarding a HIV drug. H&M, Mercedes-Benz and Asahi Kasei are also clients. Yusuke Inui and Masahito Imai have been recently promoted to partner.

Litigation is one of Mori Hamada & Matsumoto’s core strengths, particularly regarding employee inventions and mandates relating to infringement and invalidity in patents, trade marks and copyrights. Yoshifumi Onodera – who splits time between Tokyo and Beijing – advised on various copyright transfer and licensing agreements. Other facets of the practice include trade secrets, data protection and providing ongoing advice on maintaining, protecting and acquiring IP rights. Atsushi Okada, Takuya Iizuka and Yutaka Miyoshi are noted.

Nagashima Ohno & Tsunematsu’s practice includes former judges Masato Tanaka, Ryoichi Mimura and Kenji Tosaki. The team successfully defended Kyowa Hakko Kirin in a patent infringement case filed by Teva Pharmaceuticals, which reached the IP High Court and Supreme Court. Outside of patents, the firm’s workload included unfair competition litigation, copyright infringement and trade secret protection. Shunji Matsuda leads in transactional matters concerning IP licensing negotiations, due diligence and e-publishing agreements. Kazuo Ohtake became an adviser.

Clients ranging from luxury brands to manufacturers retain Sugimura International Patent and Trademark Attorneys for patent, design and trade mark prosecutions and JPO proceedings. The ‘prompt, responsive and reliable’ practice includes trade mark and design head Kenichi Nakayama, who is ‘cost effective’ and noted for unfair competition work. Deputy president and life sciences expert Tetsuo Tsukanaka is a key figure, as is Kyoichi Saito, the executive director of patent prosecution. President Kenji Sugimura and senior manager Yuko Muramatsu are experienced.

At Abe, Ikubo & Katayama, Eiji Katayama is well versed in cross-border patent infringement litigation in the chemistry, electronics and machinery sectors. Hiroshi Kobayashi heads IP prosecution and is noted for patent prosecution in the chemical and pharmaceutical fields. Junichi Kitahara defended Apple Inc against Samsung’s injunction claims based on interface patents for mobile phones. Partner promotions included Emiko Nishizawa and Kyoko Tamura.

Atsumi & Sakai handles cross-border patent infringement cases spanning diverse sectors, including chemicals, manufacturing and technology. IT-related matters and the registration, protection, use and licensing of model utility, copyright, design and trade mark rights are further strengths of the team. Practice head Chie Kasahara is recommended along with Kunihiro Sumida, who is noted for disputes.

Nishimura & Asahi undertakes infringement and customs matters. On the transactional side, it provides licensing services and advises on IP assets. The team won a trade secret infringement suit against Posco on behalf of Nippon Steel & Sumitomo Metal. Hiroshi Suga, Hitomi Iwase and Yoshiyuki Miyashita are key contacts. Clients include Burton Japan, Microsoft Japan and Asobisystem.

Osaka-based Shusaku Yamamoto Patent Law Offices represented Harley-Davidson in bringing a criminal enforcement action against online counterfeiters selling fake jackets. Kensaku Yamamoto heads up patent and trade mark litigation and the anti-counterfeiting group, while Shusaku Yamamoto spearheads patent prosecution. There is also a licensing and due diligence team, as well as sector-specific electronics, computing and mechanics, and biotech, chemicals and life sciences practices.

Gifu-based Hiroe & Associates shines in pharmaceutical, chemistry and biotechnology matters. Trade mark expert Masanori Hiroe is a leading figure, as is Takenori Hiroe, who specialises in disputes relating to IP infringements. Satoshi Hashimoto and Naoya Taniguchi are standout practitioners.

Wataru Sueyoshi and Shin’ichiro Yoshiba are the main contacts at STW & Partners. The team handles the full gamut of matters, including trade secrets, copyright, patents and trade marks.

Patent prosecutions, trade mark enforcement and design registration are key strengths at Sonderhoff & Einsel Law and Patent Office. Managing partner Felix-Reinhard Einsel is noted for electrical engineering patent litigation and Shogo Matsunaga stands out for trade mark litigation and licensing, among other areas. Hiroshi Morita joined the team from Astellas Pharma, while Hiroyasu Ninomiya, Junichi Maekawa and Rui Ueshima made partner.

Shinjiro Ono leads Yuasa and Hara’s patent division and is experienced in the fields of medical science, pharmaceuticals and polymers. Trade mark and design specialists Kazuhiro Nakata and Hiromichi Aoki are recommended for unfair competition matters.


International firms and joint ventures

Index of tables

  1. Intellectual property: international firms and joint ventures
  2. Leading individuals: bengoshi (within international firms and joint ventures)
  3. Leading individuals: foreign lawyers (gaiben)
  4. Next generation lawyers: bengoshi (within international firms and joint ventures)
  5. Next generation lawyers: foreign lawyers (gaiben)

Leading individuals: bengoshi (within international firms and joint ventures)

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Leading individuals: foreign lawyers (gaiben)

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Next generation lawyers: bengoshi (within international firms and joint ventures)

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Next generation lawyers: foreign lawyers (gaiben)

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One of the ‘best in international IP disputes’, Morrison & Foerster Ito & Mitomi’s practice ‘combines very strong resources in Japan with its first-class US litigation practice, which is of great value to Japanese clients’. In conjunction with US teams, Max Olson defended Fujitsu Semiconductor and its American subsidiary against patent proceedings and appeals brought by Zond to enforce its plasma discharge technology portfolio for semiconductor manufacturing. Patent head Robert Hollingshead represents foreign clients in patent and trade secrets disputes in industries such as telecoms, medical devices and software. Arbitration specialist Louise Stoupe excels in e-discovery and has the ‘ability to handle challenging technical issues in the semiconductor field’. Hollingshead and Steven Comer have a ‘great depth of knowledge’, Chie Yakura is ‘particularly good’ and James Hough is a distinguished litigator. Stuart Beraha’s technology transactions group includes Masato Hayakawa, and advises on licensing, outsourcing and branding agreements, among other matters. Clients include Toshiba and Showa Denko.

Baker McKenzie (Gaikokuho Joint Enterprise) receives praise for its ‘global-minded’ approach, with practice head Kensaku Takase being singled out for having a ‘good understanding of Japanese and world issues’. Takase's caseload centres on the trade mark, copyright and design issues that arise out of cross-border transactions, as well as IT and media law. Kei Matsumoto focuses on transactional mandates and international patent disputes. Daisuke Tatsuno concentrates on registering, protecting, disputing and licensing IP rights. The practice’s sector expertise includes pharmaceuticals, technology and cosmetics.

Patent troll litigation and multi-defendant cases are strengths for Hogan Lovells Horitsu Jimusho Gaikokuho Kyodo Jigyo’s patent team, which hired Hiroto Imai from Wada & Watanabe along with consultant Yoshiki Abe. Another key practitioner, Frederick Ch'en, made partner and is highly regarded in the pharmaceutical and technology fields for cross-border litigation involving Europe. Managing partner Lloyd Parker ‘manages his group exceedingly well’ and is a key person for trade mark matters alongside counsel Chikako Hashimoto, who has ‘abundant experience’. Parker led portfolio management advice to PepsiCo, Nissan and Rakuten. Philippe Riesen joined Foley & Lardner.

Jones Day bolstered its outbound work by hiring Maxwell Fox from Ropes & Gray LLP. Fox’s caseload comprises infringement litigation, licensing and counselling matters. Providing a ‘superior service at all levels’, practice head Michiru Takahashi ‘has proven herself to be an expert’ in trade mark prosecution, clearance and infringement. She represented Wikimedia Foundation in an infringement case against a company that allegedly used a similar trade and domain name to the client. Shogo Asaji is the contact for the infringement, analysis, litigation and prosecution of US patent applications. Recent work for him includes representing Akebia Therapeutics in a JPO invalidation proceeding challenging a competitor’s patent for compounds relating to the treatment of anaemia. Other clients include LeSportsac and Dell.

In addition to patents, copyrights and trade mark disputes, Orrick, Herrington & Sutcliffe LLP excels in unfair competition and trade secret actions. David Case leads the department, which includes Yoshihiro Takatori and Shinsuke Yakura, a benrishi with experience in computer software, industrial machinery and numerous other technical disciplines. Nitto Denko instructed Case to bring a US patent infringement suit against Hutchinson Technology, while Takatori and Yakura were successful in Tokyo arbitration for Toshiba Storage and Electronic Devices Solutions Company in a licensing dispute with BaySand.

Respected patent and trade secret litigator Philippe Riesen joined Foley & Lardner from Hogan Lovells Horitsu Jimusho Gaikokuho Kyodo Jigyo. He is renowned in pharmaceuticals and also has expertise in biotechnology, optics and polymers. Etsuo Doi advises domestic and international companies on patent disputes, negotiations and licensing issues. Other strengths include e-commerce, cross-border transactions, and joint ventures.

Managing partner Peter Godwin is Herbert Smith Freehills’ primary contact for contentious matters, including multi-jurisdictional patent, copyright and collective licensing disputes. Graeme Preston takes charge of non-contentious matters, including transactions, licensing and technology-related work.

US and European patent infringement actions are Quinn Emanuel Urquhart & Sullivan, LLP’s primary focus. Tokyo office head Ryan Goldstein and Wayne Alexander are defending Yokogawa Electric in an ongoing patent infringement case against Automation Middleware Solutions, which involved three patents in automation control technology. Alexander’s workload extends to licensing and litigation involving trade marks and copyright.

Squire Gaikokuho Kyodo Jigyo Horitsu Jimusho’s wide-ranging practice acts for large domestic companies and multinational businesses with Japanese operations in a broad range of IP issues. As well as unfair competition matters, Kanako Inokuchi undertakes patent infringement, trade mark, design and copyright work. Advising the Central Federation of Societies of Commerce and Industry and Tokyo Metropolitan Government on international trade mark registration was a highlight for Inokuchi. Senior counsels Masao Yoshida and Shigeru Miki are noteworthy practitioners.

Managing partner Naoki Yoshida is Finnegan, Henderson, Farabow, Garrett & Dunner LLP’s key figure for the full range of matters, including patent portfolio management and IP due diligence. He is skilled in representing foreign and Japanese clients in front of US district courts and the US International Trade Commission. Yoshida handled US patent prosecution and strategic counselling for Iseki. David Albagli is now a local partner at White & Case LLP – White & Case Law Offices (Registered Association).


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