Next Generation Partners: Bengoshi

Intellectual property: International firms and joint ventures in Japan

Baker McKenzie (Gaikokuho Joint Enterprise)

A market leader in the area of IP law, Baker McKenzie (Gaikokuho Joint Enterprise) houses a bilingual team (English and Japan) and regularly advises multinational companies on contentious and cross-border matters. With an expansive international network and prodigious expertise in trade mark law, the team is particularly well equipped to handle global trade mark and patent searches and has an established record representing some of the world’s leading brands. Kensaku Takase, a seasoned IP expert with expertise in the field of trade marks, copyrights and designs, leads the team supported by Yosuke Takenaka, whose practice focuses on IP prosecution and litigation. Rising stars in the practice include Tsugihiro Okada, who was recently promoted to counsel, and Ayako Nakano. Yuki Kondo rejoined the firm following a secondment in the US, while Kei Matsumoto left the firm in October 2022.

Practice head(s):

Kensaku Takase


Other key lawyers:

Yosuke Takenaka; Tsugihiro Okada; Ayako Nakano


Testimonials

Our contact for 5 years has been Yosuke Takenaka, and we have always been impressed by his high work ethic, knowledge of IP, practical legal and commercial advice (consistently sound), and grasp of our specific needs. He is incredibly hardworking, a very personable man, a delight to work with.

Incredibly competent, knowledgeable, great legal and practical advice, excellent grasp of our specific needs and industry, hardworking. Impressive throughout.

‘The IP team and the partner I worked with (Kensaku Takase) have been ready to collaborate and bring in partners with expertise from other practice groups when necessary and this has proven to be an efficient way to get our work done with speed. The collaborative approach is very much appreciated.’

Work highlights


Hogan Lovells Horitsu Jimusho Gaikokuho Kyodo Jigyo

Situated within a globally integrated network and fielding a market leading IP team, Hogan Lovells Horitsu Jimusho Gaikokuho Kyodo Jigyo is one of the few firms to offer its clients multidisciplinary skills across sectors such as life sciences, automotive, infrastructure and energy. The team is co-led by Lloyd Parker, a renowned expert in trade marks, and Frederick Ch’en, who leverages his scientific training to advise on a broad range of IP matters in the life sciences sector. Hiroto Imai is an active and experienced practitioner in infringement, brand protection and enforcement, whilst Tomoe Takahashi has a broad legal skillset making her a sought-out litigator for auditing global IP portfolios. Other key members in the practice include Nicolas Hirt, Aki Koshizuka and Mikako Tsukada.

Practice head(s):

Lloyd Parker; Frederick Ch’en


Other key lawyers:

Tomoe Takahashi; Nicolas Hirt; Aki Koshizuka; Mikako Tsukada; Hiroto Imai


Testimonials

‘Always innovative – pushing the edges to find better, more cost efficient, more commercial ways of interacting with clients and colleagues. The quality of the lawyers is top flight.’

‘They always support us from the same perspective as us.’

‘The team is comprised of very experienced and capable attorneys who are not only highly skilled in subject matters but also understand clients’ business priorities and needs.’

‘Frederik Ch’en has superb communication skills and approaches matters with a strategic and global perspective. He deeply understands business needs of pharmaceutical clients and implications of legal outcomes on business operations. He focuses on outcomes and is creative in solution finding.’

‘Frederick Ch’en is very courteous, conscientious and knowledgeable about the law, the relevant science, and the relevant business areas. His summary of documents from the JPO and the courts is very detailed, as are his legal briefs. His legal advice is clear and takes into consideration not only the law, but also Japanese business culture. ‘

‘Hogan Lovells Horitsu Jimusho Gaikokuho Kyodo Jigyo are a very impressive firm in the IP space and are rightfully a market leader in Japan. The growth of their client portfolios is a strong testament to this. They are thorough, practical, responsive and work very hard for their clients.’

‘Lloyd Parker is a well established market leader and under his able stewardship has built up the practice. He understands local culture well and is excellent with clients.’

‘Tomoe Takahashi is another key partner of the team. She is fully dedicated to her craft and a master at it. She works very hard to meet client demands. She offers very sound and practical counsel.’

Key clients

Brother Industries, Ltd.


Work highlights


  • Advised Brother Industries, Ltd. on enforcement matters around the world.
  • Acted on behalf of a global pharmaceutical company and its Japanese subsidiary in a dispute regarding patent infringement.
  • Represented one of the biggest Japanese consumer electronics manufacturers on over twenty-five IP related contracts.

Morrison Foerster

A large specialist team with a comprehensive IP offering, Morrison Foerster is well placed to handle a broad array of contentious and non-contentious IP transactions with a multi-jurisdictional element. Particular expertise in the software, fintech and medical device sectors is coupled with in-depth knowledge of the automotive and aerospace industries. The team is co-led by Louise Stoupe, Yuka Teraguchi and Masato Hayakawa, who bring their substantial expertise to advise on high-tech disputes, international arbitration and litigation, adversarial patent litigations and licensing negotiations. They are joined by Max Olson, who advises on trade mark, patent litigation and international arbitration and Chie Yakura, who strengthens the practice with her in-depth knowledge of technology transfers and antitrust law. Other practitioners of note include Yukihiro Terazawa, Seth Graham and Akira Irie.

Practice head(s):

Louise Stoupe; Yuka Teraguchi; Masato Hayakawa


Other key lawyers:

Max Olson; Chie Yakura; Yukihiro Terazawa; Seth Graham; Akira Irie


Testimonials

‘The team works hard to resolve the difficult problems we have faced. They have worldwide networks, so we can ask any questions concerning any countries and areas around the world. Their advice was very helpful in the field of global personal data protection.’

‘Yukihiro Terazawa is full of not only legal skills but also business-practical sense. His advice for contracts documentations or amendments are very accurate.’

‘Yukihiro Terazawa answers clearly to our questions. If he cannot respond to our requests, he clearly says so and explains his reasons.’

‘They understand what we need. If not, they try to find out what we are looking for and then provide the opinions.’

‘Max Olson has a good knowledge of the industry and the legal issues surrounding it. One can have a good dialogue with him on the topics they want advice. Yuka Teraguchi is very prompt and has a very good knowledge of the issues at hand. She also provides very good feedback.’

‘The Morrison Foerster team is familiar with Japanese corporate practices, including decision-making procedures, the preparation of documents, and the timely conduct of our intentions. In addition, they typically recommend the most effective way to perform the next step in a cost-effective manner.’

‘Akira Irie and Yuka Teraguchi have excellent abilities to understand our technologies, products and its related patents. Their strengths are that they can accurately understand our Japanese documents, our ideas and thoughts, and then can reflect our input in the response to the courts.’

‘Seth Graham is sharp and a great negotiator to have on your side.’

Key clients

Amperex Technologies


Antarctica Capital LLC


ARM Ltd.


Asahi Kasei Pharma Corp.


Buffalo Inc.


Chugai Pharmaceutical Co. Ltd


Endurance Acquisition Corp.


FCNT Limited


Fujitsu Client Computing Limited


Fujitsu Limited and its affiliates such as Fujitsu America, Inc., and Fujitsu Semiconductor Limited


JERA Co., Inc.


JOLED Inc.


Mitsubishi Electric Corp.


onsemi


Rakuten Mobile, Inc., and its affiliates such as Rakuten Group, Inc., and Rakuten Symphony, Inc.


Socionext Inc. and its affiliates such as Socionext America, Inc.


TDK Corporation


Teradata


Work highlights


  • Prevailed for Chugai Pharmaceutical in a multi-billion dollar patent case against Alexion Pharmaceuticals, Inc. over infringement of Chugai’s technology for recycling antibodies.
  • Representing Teradata in a suit against SAP America, Inc. for trade secret misappropriation, copyright infringement, and antitrust violations.
  • Representing ARM Ltd. in a high-profile case against NuVia and Qualcomm involving a licensing dispute, trade mark, and breach of contract claims.

Jones Day

With a broad IP practice and a focused local practice in Japan, Jones Day is well placed to advise across a range of industries with particular expertise in the life sciences and technology sector. The team is led by Michiru Takahashi, a principal expert in domestic trade marks practice in Japan. Takahashi is joined by Shogo Asaji, a bilingual practitioner, who uses his engineering background to advise on multi-jurisdictional dispute matters.

Practice head(s):

Michiru Takahashi


Other key lawyers:

Shogo Asaji


Testimonials

‘The Japanese team is well versed in representing US clients and works as an integrated partnership with the US and European teams. It is very convenient to work with a team that has that level of global coordination and that also understands the US mentality. Jones Day has a coordinated billing approach so that one main partner reviews all the bills globally to ensure that the team is consistent.’

‘I have worked closely with Shogo Asaji for many years on projects ranging from IP advice, PTE prosecution, pre-litigation analysis and other areas. He is attentive to detail, very responsive, understands how to present to US companies, and is a tremendous liaison between US companies and Japanese counsel.’

Key clients

Dell Inc.


Educational Testing Service


Kaken Pharmaceutical Co., Ltd.


Kiss Nail Products, Inc.


NGM Biopharmaceuticals, Inc.


Ricoh USA, Inc.


Sunkist Growers, Inc.


The Noco Company


Torii Pharmaceutical Co., Ltd


Wikimedia Foundation Inc.


Work highlights


  • Advises Dell in connection with trade mark matters in Japan, including trade mark application, prosecution, clearance, counselling and dispute matters.
  • Advised Torii Pharmaceutical Co., Ltd. with drafting and negotiating a license agreement with Nogra Pharma Ltd. with regard to the pharmaceuticals for the treatment of acne in Japan.
  • Defended Ricoh USA, Inc. in a series of patent infringement suits filed by a non-practicing entity, Midwest Athletics and Sports Alliance in the United States.

Orrick, Herrington & Sutcliffe LLP

Well versed in representing domestic and international clients before Japan’s IP High Court, Orrick, Herrington & Sutcliffe LLP specialises in patent disputes, copyright, trade mark actions and trade secret actions. The practice is led by Shinsuke Yakura, a dual-qualified (US and Japan) IP practitioner, who is highly regarded for his cross-border experience. He is supported by senior associates Masao Fujino, who specializes in patent infringement disputes and trade secrets, and Anri Nakamoto, who is highly regarded for contentious and non-contentious IP matters.

Practice head(s):

Shinsuke Yakura


Other key lawyers:

Masao Fujino; Anri Nakamoto


Key clients

FUJIFILM Business Innovation (formerly Fuji Xerox Co., Ltd.)


Morinaga Milk Industries Co., Ltd


JVC Kenwood Corporation


NEC Corporation


Toshiba Corporation


Sharp NEC Display Solutions of America, Inc.


Toyota Motor Corporation


Tractable Inc


Mitsubishi UFJ Research and Consulting


Work highlights


DLA Piper Tokyo Partnership Gaikokuho Kyodojigyo Horitsu Jimusho

With a broad expertise in sectors from technology and healthcare to e-commerce and data science, DLA Piper Tokyo Partnership Gaikokuho Kyodojigyo Horitsu Jimusho stands out for its depth of scientific and technical knowledge. Under the leadership of Tomomi Fujikouge, an expert on the domestic regulatory environment, the practice advises many leading brands seeking to expand into the Japanese market. Shingo Okada advises on regulatory matters and competition laws, whilst Naoto Kosuge and Eric Yao are other practitioners of note.

Practice head(s):

Tomomi Fujikouge


Other key lawyers:

Shingo Okada; Naoto Kosuge; Eric Yao


Key clients

Levi Strauss


Work highlights


Morgan Lewis & Bockius LLP

Morgan Lewis & Bockius LLP works in both the domestic and international context on a range of matters including IP disputes and licensing matters among other transactions. The team is co-led by Motonori Araki and Jitsuro Morishita, and is widely recognized for providing global litigation support to Japanese companies along with overall global IP strategies with a particular emphasis on US patent filings. Other litigators of note include Mitsuyoshi Saito.

Practice head(s):

Motonori Araki; Jitsuro Morishita


Other key lawyers:

Mitsuyoshi Saito


Testimonials

‘Young associates are very energetic same as partners. They understand the Japanese client’s way of thinking and give detailed explanations that are tailored to the Japanese way of thinking.’

‘They offer detailed support. In addition, they can consult colleagues in various countries for advice regarding cross-border or international matters.’

Key clients

Nippon Shinyaku Co. Ltd.


Work highlights


  • Secured a crucial victory for Nippon Shinyaku Co. Ltd. to withdraw its previously filed IPR petitions related to its novel therapy to treat Duchenne muscular dystrophy.

Paul Hastings LLP

An experienced team headquartered in Tokyo, Paul Hastings LLP is noted for its expertise in complex patent mandates. Under the leadership of Hiroyuki Hagiwara, the practice continues to grow in the area of life sciences and pharmaceutical mandates. The team places particular emphasis on licensing and monetising client’s intellectual property. Other key practitioners include rising star Kyotaro Ozawa, who focuses on international property litigation and government investigations.

Practice head(s):

Hiroyuki Hagiwara


Other key lawyers:

Kyotaro Ozawa


Testimonials

‘Hiroyuki Hagiwara understood technical things and market features of our products and business very quickly, even if it was his first experience to look into that technology and business. He also searched and found excellent technical advisors and superior micro-analysis company to support my team.’

‘They provide all necessary advice and preparations for litigation, including litigation strategy planning, analysis of infringing products, and obtaining opinions from external experts. Reliable for a client who has limited experience of US IP litigation.’

 

Key clients

JSR Corp.


Olympus Corp.


Eisai


Johnson & Johnson


Daiichi Sankyo


Mitsubishi Tanabe Pharma


Actelion


Nippon Shinyaku


Otsuka Pharmaceutical


Work highlights


  • Acted for JSR Corp. in a patent dispute filed by Swedish biotech firm, Cytiva Bioprocess, involving protein purification technology.
  • Representing Daiichi Sankyo Co., Ltd. in a commercial dispute concerning Daiichi Sankyo’s biotech drugs that are transforming treatment for breast and gastric cancers.
  • Representing Mitsubishi Tanabe Pharma Corporation (Japan) in an international arbitration against Novartis Pharma AG (Switzerland) pending before the ICC.

Quinn Emanuel Urquhart & Sullivan, LLP

Well known for its expertise in dispute resolution, Quinn Emanuel Urquhart & Sullivan, LLP specialises in assisting Japanese and Asian clients involved in litigation and arbitrations in the United States and Europe. With a network of offices in the US and Germany, the firm excels in patent infringement actions. The group is led by practice head Ryan Goldstein, noted for his sector expertise in advanced technologies, software and mechanical engineering.

Practice head(s):

Ryan Goldstein


Key clients

Panasonic Corporation


Opticon, Inc., Opticon Sensors Europe B.V., OPTO Electronics Co., Ltd., and Hokkaido Electronic Industry Co., Ltd.


Canon, Inc.


JCB


Nikon


Mitsubishi Motors


Line Corporation


IP Bridge


Mitsubishi Electric


TeamLab


Work highlights


  • Acted on behalf of Panasonic in an automobile-related patent litigation worth hundreds of millions of dollars, as both plaintiff and defendant, adverse to Magna.
  • Represented museum TeamLab in litigation involving its ability to protect its proprietary displays, with worldwide coverage.