Intellectual property: Independent local firms in Japan

Anderson Mori & Tomotsune

Anderson Mori & Tomotsune's intellectual property practice is made up of attorneys (bengoshi) and patent attorneys (benrishi). The firm is experienced in patent litigation, IP licensing, and transactions, as well as providing expertise in the areas of electronics, telecoms, computing, machinery, chemicals, biotechnology and pharmaceuticals. The practice also handles trademark and copyright matters across a range of sectors. The team’s benrishi are qualified to appear before the Japan Patent Office for patent prosecution proceedings and assist in the filing of patents, utility models, designs, and trademarks. The practice is co-led by Yasufumi Shiroyama, Yoshikazu Iwase, Akihito Nakamachi, Wataru Shimizu, Miki Goto, and Masayuki Yamanouchi.

Practice head(s):

Yasufumi Shiroyama; Yoshikazu Iwase; Akihito Nakamachi; Wataru Shimizu; Miki Goto; Masayuki Yamanouchi

Testimonials

‘Miki Goto is great in handling clients and giving legal advice’

Key clients

Toyota Motor Corporation

Murata Machinery (Muratec)

Mochida Pharmaceutical, Co., Ltd.

DENSO CORPORATION

Aisin Seiki Co., Ltd.

JTEKT CORPORATION

ADVICS CO., LTD.

USHIO INC.

Toyota Motor Asia Pacific Pte. Ltd.

Taiyo Holdings Co., LTd.

Work highlights

  • Acted for SKC KOLON PI INC (SKPI) a cross-border (US and Japan) and unprecedented lawsuit, in which Hirano Tecseed Co., Ltd (HIRANO) seeks declaratory judgment that SKPI does not infringe certain US and Japanese patents of Kaneka Corporation (KANEKA).
  • Acted for Firstface, who argues that certain iPhone products infringe certain patents of Firstface and seeks stoppage of importation by Apple of the iPhone products infringing the patents.
  • Client Seoul Semicon, filed a patent infringement lawsuit with the Tokyo District Court, accusing the LED product manufactured by Everlight and sold by Mouser of infringing an LED patent of Seoul’s affiliate.
  • Three patent infringement lawsuits pending before the Tokyo District Court, in which the client (Plaintiff) seeks injunction order against Buzzvil, Inc. distribution of certain application software for smart phones.
  • Represented Mochida Pharmaceutical in a major collaboration and license deal with Amarin Corporation plc.

Nagashima Ohno & Tsunematsu

The broad practice of Nagashima Ohno & Tsunematsu covers IP litigation and transactional matters, including due diligence, licensing, M&A, and IP finance. The firm has particular expertise in the areas of pharma and technology. Notable in the practice are Shunji Matsuda and former IP High Court judge Ryoichi Mimura. In a recent highlight, the team successfully represented Nintendo in litigation filed with the Tokyo District Court against Maricar for the use of Nintendo characters in its business. The court ruled that the defendant must stop such activities, constituting unfair competition.

Other key lawyers:

Shunji Matsuda; Ryoichi Mimura

Key clients

Nintendo Co., Ltd.

Nichia Corporation

Sanofi

Nippon Hoso Kyokai (Japan Broadcasting Corporation)

Pioneer Corporation.

Ryohin Keikaku Co.,Ltd. (i.e., MUJI) (http://ryohin-keikaku.jp/eng/)

Work highlights

  • Successfully represented Pfizer in Patent litigation.
  • Represented Ryohin Keikaku Co., Ltd. , on August 1, 2016, filed a lawsuit seeking an injunction with the Tokyo District Court against CAINZ K.K. alleging that the sales of CAINZ’s Steel Unit Shelf products which are very similar to our client’s popular Steel Unit Shelf product constitute a violation of the Unfair Competition Prevention Act of Japan.

Nishimura & Asahi

Nishimura & Asahi is known for cross-border expertise in litigation, trademark and patent issues, acting for IT platforms, as well as telecoms and entertainment companies. The firm also has experience in the life sciences and pharma industries. Yoshiyuki Miyashita leads the practice and handles transactions and dispute settlements related to IP and IT. He can call on the expertise of Hitomi Iwase, who specialises in disputes and transactions involving trademarks, patents and IP across a range of sectors.

Practice head(s):

Yoshiyuki Miyashita

Other key lawyers:

Hitomi Iwase

Key clients

Dentsu Inc.

The Asahi Shimbun Company

Nippon Steel & Sumitomo Metal Corporation

PopSockets LLC

Work highlights

  • Advising client on its challenge to the validity of a patent regarding construction sludge generated by the cellular-shield construction method that is owned by a competitor.
  • Advising PopSockets LLC on anti-counterfeit/brand protection matters in Japan.
  • Representing the patentee in a patent infringement lawsuit at the Tokyo District Court against the infringer of a patent regarding an LED light bulb.
  • Represented a cosmetics manufacturer, the rightful holder of a trademark comprising two letters “S” and “R”.
  • Advising client on a misappropriated patent application filed by an ex-employee of the partner in a joint R&D project with our client.

TMI Associates

TMI Associates advises on a range of IP prosecution, litigation and commercialisation matters, but has a particular focus on infringement disputes, invalidation trials, and licensing agreements. The firm acts for domestic and overseas clients, notably in mechanical, electrical and chemical industries. Managing partner Katsuro Tanaka leads the practice with Tomohiro Tohyama, who is known for handling both contentious and non-contentious IP mandates, particularly in the media, entertainment, and IT sectors. The team includes brand protection expert Mitsuko Miyagawa, who has expertise in trademark, design, copyright, unfair competition and trade secret, representing clients in infringement proceedings as well as IP-related business negotiations.

Practice head(s):

Katsuro Tanaka; Tomohiro Tohyama

Other key lawyers:

Mitsuko Miyagawa

Key clients

RayVio Corp.

Work highlights

  • Filed the Application for Suspension of IP Infringing Products with the Japan Customs on behalf of the client.
  • Provided the information concerning the extension of copyright term in Japan from 50 to 70 years under the Trans Pacific Partnership Agreement (TPP11) which became effective on December 30, 2018.
  • Review and refine a contract template to entrust creation or adaptation of music, songs, scenarios, etc. to be used in the performances and entertainments, and we revised the current template from Japanese law perspective.
  • A cross-border patent infringement dispute between a Japanese company and a US company about the cutting-edge UV-LED technology, in which the same products are disputed simultaneously at the U.S court and the Japanese court.

Abe, Ikubo & Katayama

Combining litigators and patent attorneys, Abe, Ikubo & Katayama has particular expertise in IP infringement and procurement matters. Eiji Katayama is a key name for the firm in this area.

Other key lawyers:

Eiji Katayama

Mori Hamada & Matsumoto

Mori Hamada & Matsumoto is experienced advising international entities in data protection and copyright issues. The firm has particular expertise in the pharma and IT sectors, as well as providing strong litigation and trademark prosecution practices. The practice is co-led by Yutaka Miyoshi, who handles disputes, including patent, copyright, and trade secret litigation, as well as IP-related technology transactions; Yoshifumi Onodera, who focuses on domestic and international dispute resolution, arbitration and IP licensing matters; and Atsushi Okada, who specialises in IP infringement, IP transaction, and data protection.

Practice head(s):

Yutaka Miyoshi; Yoshifumi Onodera; Atsushi Okada

Key clients

Pfizer Japan Inc.

Hospira Japan Co., Ltd. (currently Pfizer Japan, Inc.)

Mitsuba Corporation

Koei Techmo

Shiseido Company, Limited

 

Work highlights

  • Represented Pfizer in invalidation trials and infringement litigation with regard to Trastuzumab patents, and achieved complete victories.
  • Represented Hospira in invalidation trials with regard to Dexmedetomidine patent, and achieved complete victories.
  • Represented Hospira in invalidation trials with regard to Bortezomib patent.
  • Represented G. D. Searle, LLC in invalidation trials with regard to Celecoxib patent.
  • Successfully represented Koei Techmo, one of the leading game companies in Japan, before the Beijing Intellectual Property Court and Beijing High Court against Beijing 3DM Software Ltd., one of major local game web providers on the grounds of copyright infringements regarding Japanese major titles of computer games.

Nakamura & Partners

Nakamura & Partners provides patent attorneys as well as attorneys experienced in the enforcement of intellectual property rights. Practice head Shinichiro Tanaka leads a team that includes Koichi Tsujii.

Practice head(s):

Shinichiro Tanaka

Other key lawyers:

Koichi Tsujii

Atsumi & Sakai

Atsumi & Sakai handles a range of IP matters, including registration, protection, as well as use and licensing of patent, copyright, and trademark rights. The firm has particular experience in IT and new technology issues, advising multi-national corporations, know-how providers, and international law firms on data protection, privacy, and social media laws. The team is co-led by Chie Kasahara, who focuses on IP, IT, TMT, and life sciences, with particular expertise in patent, regulatory, and compliance matters; Kunihiro Sumida, who is known for litigation relating to cross-border transactions and advice on labour and IP disputes; and registered foreign attorney Ian S. Scott, who specialises in advising international sports federations, teams, athletes, and sporting organisations, as well as media and entertainment companies. Also notable is counsel Chie Tabata, who advises on IP and media-related matters.

Practice head(s):

Chie Kasahara; Kunihiro Sumida; Ian S. Scott

Other key lawyers:

Chie Tabata

KUBOTA

Specialising in patent litigation and trademarks, KUBOTA provides international experience and particular expertise in the pharma, telecoms, apparel, and consumer goods sectors. Founding partner Eiichiro Kubota leads the practice and is known for IP litigation, notably in relation to patent and trademark, as well as advising on infringement and invalidity. Emiko Yano and Kiyoko Nakaoka were promoted to partner in 2019.

Practice head(s):

Eiichiro Kubota

Other key lawyers:

Kiyoko Nakaoka; Emiko Yano

Testimonials

‘A relatively small outfit with a great mix of experience and youth which makes them agile and cost efficient’

‘Great value for money’

‘Eiichiro Kubota is an outstanding lawyer with great skills and experience’

Key clients

Merck

Abbvie

Sony

Honeywell

Apple

Brown Forman

Patagonia

Philip Morris

Starbucks

Kokuyo

Work highlights

  • Acting for Sony in patent litigation against Fujifilm.
  • Successfully defended Casio in a patent assertion litigation by Denso.
  • Representing Merck in invalidation trials.
  • Representing Apple in its anti-counterfeiting activities in Japan.
  • Representing Patagonia for its trademark portfolio in Japan.

Shusaku Yamamoto Patent Law Offices

Shusaku Yamamoto Patent Law Offices is an IP, technology, and commercial law firm, specialising in patents and related litigation. Founding partner Shusaku Yamamoto focuses on the worldwide procurement, defence, and enforcement of patents. He co-leads the practice with Kensaku Yamamoto, who has expertise in complex contract and commercial matters, as well as representing infringement cases before the Tokyo District Court and the Intellectual Property High Court.

Practice head(s):

Shusaku Yamamoto; Kensaku Yamamoto

Sonderhoff & Einsel Law and Patent Office

Sonderhoff & Einsel Law and Patent Office provides expertise in IP prosecution and enforcement, as well as advising on patent valuations, drafting of employee invention rules and patent infringement cases. The firm also has tax consultants and lawyers collaborating on IP-related matters that require specialist tax knowledge. With offices in Japan, China and Europe, the practice can advise local and international clients on a range of issues. The team is co-led by Hiroshi MoritaShogo MatsunagaJunichi MaekawaRui Ueshima and Hiroyasu Ninomiya. Also notable are Felix-Reinhard Einsel, who is a member of the New York bar and a Japanese patent attorney, and Saori Maekawa, who joined from Mori Hamada & Matsumoto in 2019, specialising in trade mark matters.

Practice head(s):

Hiroshi Morita; Shogo Matsunaga; Junichi Maekawa; Rui Ueshima; Hiroyasu Ninomiya

Testimonials

‘Sonderhoff & Einsel has many very competent members in the team’

‘Outstanding collaboration’

‘Einsel who has excellent knowledge and gives excellent recommendations concerning the special problems and challenges of German companies and IP strategies in Japan’

SUGIMURA & Partners

The 'professional and quality consciousSUGIMURA & Partners is ‘second to none in technical expertise’ and provides ‘quick turn around time' in a range of IP-related matters. The ‘committed, prompt and reliable’ firm specialises in Japanese patent and trademark work, with experience in inception, prosecution, exploitation and enforcement. Kenji Sugimura is known for experience in architecture, design, trademarks and international treaties. He co-leads the practice with Koji Sugimura, whose areas of focus include, intellectual property and corporate law, trade secrets, IT and entertainment.

Practice head(s):

Kenji Sugimura; Koji Sugimura

Testimonials

‘Good quality of work’

‘The firm has numerous strengths including: high-quality services with high success rates; responsive and smooth communication in both English and Japanese; an experienced team handling complex oppositions, appeals, and infringement suits; and highly qualified patent attorneys, with academic and industry experience covering a wide range of technologies’

‘Kenji Sugimura, Koji Sugimura, Takayoshi Kawai and Keisuke Kawahara provide excellent in-depth IP advice’

‘Sugimura & Partners provides excellent services in all facets of IP including patent and trademark prosecution and licensing’

‘The firm is valuable for advising on IP portfolio review and development’

The firm is very proactive in responding to last minute requests’

‘What makes firm stand out is its ability to understand the client’s business’

‘Kenji Sugumura can be trusted for incisive and frank advise on any matter. His leadership caliber is evident in the quality of work done by the firm’

‘The firm has a good range of technical capabilities. They also now have litigation capability’

Key clients

Kenja IP Law PC

Hiroe & Associates

Hiroe & Associates is ‘particularly attuned to the needs of the client’, combining ‘high technical and legal competence and quick reactions to inquiries’, with ‘great technical expertise.’ The firm provides a range of IP expertise in relation to patents, industrial design, trademark, copyright, translation, filing, prosecution and litigation. The practice also counsels on enforcement, licensing, and commercialisation. The team is co-led by Takenori Hiroe, who specialises in textile engineering, copyright and unfair competition; Masanori Hiroe, who 'always provides accurate legal advice very quickly'; and Satoshi Hashimoto, who focuses on procedures relating to patent applications, appeals, cancellation trials, and oppositions.

Practice head(s):

Takenori Hiroe; Masanori Hiroe; Satoshi Hashimoto

Testimonials

‘Hiroe & Associates carry out their job very professionally and very well’

‘They provide proper legal advice when it is needed and they put themselves in the applicant’s shoes’

‘Hiroe’s services combine expertise in patent procedure and practice with technical knowledge and result in patents of a consistently high quality’

‘Hiroe has a high legal expertise in the patent field but also in the fields of Trademarks and Designs’

‘Very professional and efficient’

Takenori Hiroe and Masenori Hiroe are always very kind and helpful, ready to deeply examine matters and focus on best strategies and practices’

‘Hiroe’s communications regarding all aspects of the patent process are timely, complete, accurate, and fully informative’

‘Satoshi Hashimoto is especially focused on execution of the strategic aspects of IP activity that pertain to Japan’

Innoventier LPC

The ‘strong, dynamic IP practice’ of Innoventier LPC has 'a lot of experience of IP litigation, not only patent cases but also trademark, design, and unfair competition.’ The firm specialises in IP-related mandates and dispute resolution for domestic and international clients, including prosecution, patent licensing, copyright, trademark, infringement, and invalidation trials. The ‘always cool and fairAyumu Iijima co-leads the team with Keiko Kawakami and Tomomi Fujita, who ‘stands out by her profoundly brilliant work’. Also notable are Shizu Machino, Gai Matsushita and Koji Maeda, who were prompted to partner in 2019.

Practice head(s):

Ayumu Iijima; Keiko Kawakami; Tomomi Fujita

Testimonials

‘The team has always been keen to understand any small changes and they always form the best strategy’

‘Gai Matsushita is particularly experienced in the technical field while having a deep knowledge of law, he is an excellent lawyer who leads his client in the right direction’

‘Tomomi Fujita is an excellent lawyer with a great deal of knowledge and experience of litigation strategies. In particular, she has the ability to analyze the thoughts of judges and the other party’s lawyers’

‘Innoventier LPC has an excellent team for intellectual property cases, especially litigation’

‘Ayumu Iijima stands out from the view point of his performance and character. His background is excellent, including a long career and international experience, but his character makes him stand out more’

‘Tomomi Fujita is brilliant, always listening to client’s story and can gives the best answer’

‘Shizu Machino has also profound knowledge of environment concern cases’

‘Managing Partner, Ayumu Iijima, is a very well known IP litigator in Japan’

‘They command the fierce loyalty of their clients and it is easy to see why. They are strongly dedicated to their clients and their business’

Work highlights

  • Represented Godo Kaisha IP Bridge (plaintiff), a 100% subsidiary of IP Bridge Inc., the company that operates Japan’s first sovereign patent fund (SPF), in a patent infringement litigation before the Tokyo District Court against Intel Corporation in which we sought injunction to stop sales of Intel’s CPU and also for damages.

Yuasa and Hara

Yuasa and Hara specialises in disputes in related to science and technology, particularly life sciences, electronics, and software. The firm has experience in infringement litigation in the court and invalidation actions at the JPO and the IP High Court. The practice also has expertise in licensing, IP transactions, and pharmaceutical regulations. Toshiaki Iimura is former chief judge of the IP High Court and handles patents, trademark and copyright mandates. Notable in his team is Tsuyoshi Sueyoshi, who focuses on technology-related IP matters.

Practice head(s):

Toshiaki Iimura

Other key lawyers:

Tsuyoshi Sueyoshi

Testimonials

‘In-depth knowledge and experiences for both technical matters and legal matters’

‘The team has a deep knowledge of science and a remarkably high level of technical understanding’

‘The team members are rich in variety and the division of roles is clear’

‘Tsuyoshi Sueyoshi has a great scientific background, understands the very complicated physical relations, and can search for related technologies by himself’

Key clients

Chugai

AstraZeneca

JNC

Honeywell

Nippon Suisan (Nissui)

Roche

CJ CheilJedang

JT

Work highlights

  • Represented Nippon Suisan (Nissui) against BASF AS in the appeal at the IP High Court for invalidation of the BASF’s patent in relation to the production process of the active ingredients in pharmaceuticals, and successfully obtained remand of the case.
  • Represented Honeywell against Chemours (former DuPont) in the invalidation action filed by Chemours at the JPO and successfully protected the Honeywell’s patent of an eco-friendly blowing agent.