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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

Who Represents Who

Find out which law firms are representing which Independent local firms clients in Japan using The Legal 500's new comprehensive database of law firm/client relationships. Instantly search over 925,000 relationships, including over 83,000 Fortune 500, 46,000 FTSE350 and 13,000 DAX 30 relationships globally. Access is free for in-house lawyers, and by subscription for law firms. For more information, contact david.burgess@legal500.com.

CLICK HERE TO VISIT THE WHO REPRESENTS WHO SITE

Nakamura & Partners’ ‘excellent’ team is experienced in the enforcement of intellectual property rights, as well as in application procedures for patents, design and trade mark registrations, and procedures before the Japan Patent Office (JPO) and other bodies. The practice assisted EMAX Tokyo with an appeal to the Supreme Court related to an injunction under the Unfair Competition Prevention Act and successfully defended the telecoms operator KDDI in a case seeking ¥4.12m in damages for patent infringement. Yoshio Kumakura and Koichi Tsujii are recommended.

The sizable team at TMI Associates handles the full spectrum of contentious and non-contentious IP-related work, including patent, design and trade mark rights, protection of know-how and trade secrets, copyright, and prevention of unfair competition. Work highlights included the successful defence of Nihon EVE and Cremovision from claims for compensatory damages based on alleged patent infringement. Mitsuko Miyagawa is a name to note.

The ‘unbelievably fast and efficient’ group at Anderson Mori & Tomotsune acts for clients such as Toyota, Muratec and Dunlop, and handles patent litigation, IP licensing and transactions, as well as in the filing of patents, designs and trade marks. The ‘excellent’ Yoshikazu Iwase, Yasufumi Shiroyama and Akihito Nakamachi are recommended. Wataru Shimizu, Masahiro Moriyama and Yun Li joined the practice from Ohno & Partners.

Kubota is active in patent litigation, trade mark prosecution and enforcement, and corporate-related matters. The practice has been advising AbbVie on the defence of a patent that covers the drug Humira from an invalidation action; it has also been handling cross-border patent infringement litigation for Sony initiated by Fujifilm regarding a data storage tape for computers. Practice head Eiichiro Kubota is ‘excellent’.

Headed by Yutaka Miyoshi, the team at Mori Hamada & Matsumoto focuses on IP portfolio management, domestic and cross-border IP litigation, IP-related transactions and trade mark prosecutions. Clients include leading Japanese and international companies in sectors such as pharmaceuticals and life sciences, automobiles and parts, telecoms and consumer product manufacturing. Atsushi Okada and Takuya Iizuka defended Hospira Japan in patent infringement litigation initiated by Debiopharm seeking an injunction against generic anti-cancer drugs. Former chief judge of the Intellectual Property High Court Ryuichi Shitara joined the practice as special counsel.

Nagashima Ohno & Tsunematsu handles matters related to patent work, unfair competition, copyright and trade mark and design protection. The practice successfully acted for Japanese chemical engineering and manufacturing company Nichia against Tachibana Eletech in an unfair competition matter. Other clients include Alcon Research and Yamaha. Former judge at the Intellectual Property High Court Ryoichi Mimura is recommended.

With extensive experience in IP infringement matters, Abe, Ikubo & Katayama successfully represented Kowa before the Intellectual Property High Court in an infringement appeal and assisted Boheringer Ingelheim with nullity proceedings against a patent covering Boheringer’s widely sold high blood pressure drug. Apple, Novartis and Eli Lilly are other key clients. Practice head Hiroshi Kobayashi has ‘a lot of experience handling patent prosecutions’.

Atsumi & Sakai advises Japanese and multinational companies on trade mark registrations, license agreements, protection of IP rights and patent infringements. The practice is headed by Chie Kasahara.

Osaka-based Shusaku Yamamoto Patent Law Offices handles contentious and non-contentious IP and licensing work. The practice successfully patented a treatment for Zika virus and registered the mark ‘Maradona’ as a Japanese trade mark for Argentinian football legend Diego Armando Maradona. Shusaku Yamamoto and Kensaku Yamamoto are the two main contacts.

The ‘always friendly, trustworthy and reliable’ team at Sonderhoff & Einsel Law and Patent Office is singled out for its ‘very short response times, profound knowledge and top support’. Headed by Felix-Reinhard Einsel, the practice handles a range of patent, trade mark and design matters.

Sugimura & Partners advises clients on patent, design, and trade mark prosecution and strategy, proceedings before the JPO, infringement, and unfair competition matters. The firm has recently added a litigation team, well-equipped to handle contentious IP matters. Practice head Kenji Sugimura is a strong choice for patent prosecution.

The ‘very reliable’ team at Hiroe & Associatesprovides prompt and accurate advice’ on patent, design, trade mark and copyright matters, such as filings, prosecutions, litigation, enforcement and licensing. Recent work highlights include successful registration of patent applications and appeals against decisions of refusal. Practice head Masanori Hiroehas deep experience and sets the high standard of service quality for the firm’.

Nishimura & Asahi’s client portfolio includes Canon, Dentsu, The Asahi Shimbun, Molson Coors Canada, Stussy and Japan Radio; the practice successfully defended the latter in patent infringement litigation. Hiroshi Suga and Yoshiyuki Miyashita are key contacts.

STW & Partners is active in patent litigation. Wataru Sueyoshi is recommended.

Yuasa and Hara is specialised in prevention and resolution of disputes related to patents, utility models, trade marks, designs, copyright and unfair competition. Toshiaki Makino is the main contact.


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)

  1. 1

Leading individuals: foreign lawyers (gaiben)

  1. 1

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

  1. 1

Next generation lawyers: foreign lawyers (gaiben)

  1. 1

Who Represents Who

Find out which law firms are representing which International firms and joint ventures clients in Japan using The Legal 500's new comprehensive database of law firm/client relationships. Instantly search over 925,000 relationships, including over 83,000 Fortune 500, 46,000 FTSE350 and 13,000 DAX 30 relationships globally. Access is free for in-house lawyers, and by subscription for law firms. For more information, contact david.burgess@legal500.com.

CLICK HERE TO VISIT THE WHO REPRESENTS WHO SITE

At Hogan Lovells Horitsu Jimusho Gaikokuho Kyodo Jigyo, the ‘level of service is superb’, with trade mark and patent work as areas of strength. The practice, headed by Lloyd Parker, has grown through hires at associate, senior associate and consultant level. Work highlights included ongoing advice to longstanding and key client Nissan on its global trade mark portfolio and strategy, which involves work across multiple jurisdictions; and ongoing representation of Merck & Co. in numerous separate patent litigation cases, including defending in patent infringement proceedings brought by Shionogi regarding the client’s HIV inhibitor product. Asahi, Sony and Panasonic also feature on the client roster. Frederick Ch’en is praised for his ‘great technical knowledge’ and ‘insightful guidance’, and Tomoe Takahashi is a recommended senior associate.

Morrison & Foerster LLP provides ‘the best quality services’ in patent, trade mark, copyright, trade secret and unfair competition matters, with a focus on the technology sector. The practice assisted Toshiba with the IP aspects of its global carve-out and $500m sale of its home appliances business to Midea Group, a Chinese home appliances company. Max Olson ‘always provides very quick response times’ and successfully led the defence of Fujitsu Ten from a patent infringement allegation brought by Advanced Silicon Technologies before the US International Trade Commission. IP Bridge and TDK are other notable clients. James Hough, Stuart Beraha and Robert Hollingshead lead the practice, which also includes next generation lawyers Akira Irie and Yuka Teraguchi.

Baker McKenzie (Gaikokuho Joint Enterprise) is particularly strong in global trade mark portfolio management, IP litigation (including patent litigation), IP licensing and commercialisation, and anti-counterfeiting strategies. Practice head Kensaku Takase, who has ‘a good understanding of Japanese legal practice’, advised new client Rosetta Stone, a world leader in digital language learning, on an agreement regarding its rights to license products developed by Japanese distributors under the Rosetta Stone brand and trade mark for resale in territories outside Japan. The practice also defended restaurant chain Paradise Dynasty against a trade mark infringement allegation.

Jones Day provides ‘excellent service, knowledge and responsiveness’ in IP matters such as trade mark clearance, counterfeiting and infringement, and patent litigation. Practice head Michiru Takahashi is ‘thorough in her research and clearly committed to providing a superior service to her clients’; she has been providing ongoing advice to Starbucks on a number of matters, including enforcements against various counterfeit and imitating products, and representation before Japanese customs. Maxwell Fox, who joined the practice from Ropes & Gray LLP in 2016, is strong in contentious and non-contentious matters; he was part of the team that successfully represented NEC and its US subsidiary, NEC Corporation of America, in multi-jurisdictional patent infringement litigation filed in the Eastern District of Texas by Uniloc. Mitsubishi Cable Industries, Canon and Dell are other notable clients.

The practice at Orrick, Herrington & Sutcliffe LLP is led by David Case, who has handled a number of IP and IT contentious and transactional matters for Japanese and multinational clients, such as Yamaha and Ricoh. He is representing Nitto Denko as plaintiff in an ongoing patent infringement suit against Hutchinson Technology in the US Court for the District of New Jersey. The defence of JVC Kenwood and JVC Kenwood USA in patent litigation filed by Hybrid Audio in the District Court of Massachusetts is another work highlight. Yoshihiro Takatori and Kei Kato are other names to note.

Paul Hastings LLP’ IP practice, which was established in 2016 after practice head Hiroyuki Hagiwara left Ropes & Gray LLP, handles IP litigation and licensing, particularly in the fields of pharmaceuticals, technology and telecoms, and works in close collaboration with colleagues in the US. The team successfully defended Olympus in a patent infringement action in the Eastern District of Texas and advised Japanese internet media company Gree on licensing game application patents to competitors. Fujitsu and Mitsubishi Tanabe Pharma are other clients.

Quinn Emanuel Urquhart & Sullivan, LLP acts for Asian clients and multinationals – such as Toshiba, Sanyo, Nissan – involved in disputes in the US, Europe and other jurisdictions. The practice represented Samsung in the widely publicised Apple v Samsung patent litigation and acted for Mitsubishi Electric in multiple high-stakes long-running class actions. Ryan Goldstein leads the department.

Foley & Lardner handles US-related IP matters for major Japanese corporations. The practices advised Dainippon Sumitomo Pharma on its license agreement with Edison Pharmaceuticals. Etsuo Doi is the key contact.

At Squire Gaikokuho Kyodo Jigyo Horitsu Jimusho, expertise covers licensing, technology transfers and other IP matters (both non-contentious and contentious) involving patents, trade secrets and knowhow, copyrights and trade marks. Practice head and senior counsel Shigeru Miki has particular knowledge of the semiconductor, electronics, telecoms, machinery, robotics and computer software sectors. Former general counsel for Sega and senior attorney at Microsoft Japan Scott Warren joined the team in July 2016.


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