The Legal 500

Nakamura & Partners’ well-established team provides agency services for actions such as applications and appeals before the Japan Patent Office and overseas patent offices regarding industrial property rights, and related research and expert testimony. Its 20-strong legal team handles domestic and international counselling, expert testimony, infringement litigation and enforcement, and unfair competition cases. Thought leader Koichi Tsujii is vastly experienced, and Yoshio Kumakura is another highly regarded expert. Shinichiro Tanaka is also recommended.

IP is a core practice for TMI Associates, which advises government agencies and provides guidance on policy. The firm’s patent attorneys handle filing applications for patents, utility models, designs, and trade marks. It also advises on licensing and technology development agreements. The firm fields several contentious IP experts with a good record in patent infringement cases. Tomohiro Tohyama, Tadahito Orita, patent attorney Yoshiyuki Inaba, Katsuro Tanaka and Mitsuko Miyagawa are highly recommended.

Yuasa and Hara rises to the top tier this year. The team handles patent, trade mark and design, and accounting and auditing matters, including advising on business method patents, computer software protection, domain name disputes, international brand and patent protection. Toshiaki Makino, who is noted for his experience at the Tokyo High Court, is recommended along with licensing expert Kozo Yabe and Osamu Suzuki.

Abe, Ikubo & Katayama provides superb IP counsel, with top-end IP litigation prowess as well as a dedicated patent prosecution division. Highly respected managing partner Eiji Katayama has experience spanning the chemistry, electronics and industrial machinery sectors.

Anderson Mori & Tomotsune provides ‘very good service’ and is ‘excellent value for money’. It fields a large group of benrishi (patent attorneys), including Korean patent expert Sungho Kim. The firm recently advised on a licence and distribution agreement with Booyah, and successfully defended Hitachi in the IP High Court when one of its former employees claimed compensation for the assignment of his invention. Other clients include Bayer, Merck, Hitachi, LG Innotech and Asahi Kasei. Yasufumi Shiroyama ‘speaks good English and is a very pleasant individual’. ‘Superb lawyer’ Yoshikazu Iwase provides ‘exceptional service and great-quality work’, and ‘really understands what customer service is all about’. Satoshi Miyagaki and Shigeyoshi Ezaki are recommended for soft IP matters.

The ‘superb’ Mori Hamada & Matsumoto acted as legal adviser for Nippon Television Network Corporation in a copyright infringement case brought by a North Korean administrative organisation and its Japanese licensee. It also advised Sanyo on the sale of washing machine and refrigerator businesses and associated IP matters in Japan (and subsidiaries in other Asian countries) to Haier Group Corporation in China. Yuko Noguchi ‘knows everything about copyright law’: ‘her definite strength is that she understands public policy and how these discussions are formulated within the government’, and is ‘the ideal lawyer that a lobbyist would want as a partner’. Masayuki Matsuda, Yutaka Miyoshi and Koichiro Iida are also recommended. Tomoya Fujimoto left the firm to join the Walt Disney Company.

Nagashima Ohno & Tsunematsu represents domestic and foreign companies in patent and copyright litigation and patent invalidity proceedings before the Japan Patent Office. It also assists clients in IP transactions, including the negotiation of licence agreements and technology transfers, and IP due diligence in M&A. The firm is advising several semiconductor manufacturers in patent infringement litigation and assisting an education sector business in a domain name dispute. Ryoichi Mimura, Kazuo Ohtake, Yoshimi Ohara and Takahiro Yamauchi are highly experienced.

New to the table, Sonderhoff & Einsel Law and Patent Office mixes lawyers, patent attorneys, certified public accountants (CPAs) and tax consultants to provide comprehensive counselling, assistance and representation. Patent attorney Felix-Reinhard Einsel is recommended.

Abe, Wada & Watanabe continues to attract high praise for its IP capability. It enforces patent rights and pursues infringers, provides anti-counterfeiting advice, and registers trade marks and designs. Takashi Koyama and Hiromi Watanabe are particularly experienced.

Atsumi & Sakai’s corporate practice advises on IT and IP matters including data protection, regulatory advice and the registration and protection of IP rights. The firm recently advised a rightsholder on internet games. Chie Kasahara is recommended.

Nishimura & Asahi has a particularly vibrant contentious IP practice. Clients include Mitsubishi Chemical Corporation, Microsoft and GREE. The firm advised Allied Telesis on patent infringement litigation regarding a network transmitter and receiver switching device; represented Toto in litigation rescinding an earlier patent invalidation; and acted for Sumitomo Asset Management in a trade mark invalidation trial case. Yoshiyuki Miyashita, Eiichi Fukushima, Masakazu Iwakura and Hiroshi Suga are recommended.

Shobayashi International Patent & Trademark Office enters the table this year with clients praising the team’s ‘client-centred and friendly attitude’, ‘depth of IP knowledge’ and ‘excellent level of service’. Its patent attorneys include a former deputy commissioner and former chief of appeals at the Japan Patent Office. Masayuki Shobayashi excels in patent prosecution and litigation, and IP business management across the chemical, pharmaceutical and biochemical sectors. Tetsuo Shiba is ‘accurate and prompt’, and Kazuyoshi Hayashi and trade mark specialist Yukihiro Higashitani are also recommended.

In collaboration with local US counsel, Hashidate Law Office successfully defended a client against a patent infringement claim by winning on summary judgment before the New York District Court. The same matter was also dismissed by the Tokyo High Court and Japan’s Supreme Court. Kenji Hashidate is recommended.

Hiroe & Associates handles matters relating to patents, designs, utility models, trade marks and copyright. Tutomu Nisio advises on the prosecution and enforcement of patents and utility models for industrial and mechanical devices. Takenori Hiroe also has a strong reputation.

At Lexwell Partners, managing partner and patent attorney Akimitsu Hirai has experience in negotiating and drafting international licence agreements for various types of IP, with a special focus on cutting-edge technology such as biotechnology and software.

Miyake & Yamazaki’s Junichi Yamazaki represents clients in IP rights disputes.

At STW & Partners, Wataru Sueyoshi has vast experience in IP-related matters. IP expert Hajime Watanabe is also recommended.