With ‘extensive experience in handling a variety of IP cases’, Baker McKenzie (Gaikokuho Joint Enterprise) houses a bilingual team in English and Japanese, who is equipped to handle the full spectrum of IP matters, including trademark registration, patent infringement litigation, rights enforcement and licensing deals. Assisting domestic and international companies in managing their global trademark portfolios, the practice often advises on cross-border matters across a wide range of industries, most notably, tech, pharmaceuticals, fashion, luxury goods and telecom. Notable for his experience in large-scale trademark filling programmes, copyright clearance, licensing and design infringement, Kensaku Takase heads up the team. Daisuke Tatsuno focuses on the registration, protection and dispute of IP rights while US patent litigator Kei Matsumoto and Yosuke Takenaka are recommended for IP prosecution and litigation. At the associate level, Tsugihiro Okada is a key name.
Intellectual property: International firms and joint ventures in Japan
Baker McKenzie (Gaikokuho Joint Enterprise)
Other key lawyers:
Daisuke Tatsuno; Kei Matsumoto; Yosuke Takenaka; Tsugihiro Okada
‘The Japanese lawyers at Baker McKenzie Tokyo office have extensive experience in handling a variety of IP cases and good communication skills.’
‘It is difficult to find in Japan such lawyers who have both IP experience and good communication skill.’
‘Kei Matsumoto is talented, diligent and reliable. He is also a good leader.’
- Assisted Arcelik in the negotiating the band licensing of the $300m joint venture between the client and and Hitachi Global Life Solutions.
- Acted for Amadeus Code on intellectual property issues surrounding its AI music application.
The ‘extremely efficient’ team at Hogan Lovells Horitsu Jimusho Gaikokuho Kyodo Jigyo stands out for its large headcount of multi-jurisdictional dedicated IP lawyers, who are known for their strong background in areas such as medical sciences, molecular and cellular biochemistry and engineering. The group is equipped to handle both contentious and non-contentious work and is jointly led by UK chartered biologist and US patent attorney Frederick Ch’en, who is a key contact for patent litigation and cross-border licensing matters, and regional managing partner Lloyd Parker, whose expertise spans trademark portfolio management and enforcement proceedings. Tomoe Takahashi, who is qualified in England, Ireland and New Zealand, is recommended for trademark prosecutions and portfolio management. Hiroto Imai is especially sought after to act on patent disputes and commercial transactions across a range of sectors, most notably pharmaceuticals, tech and telecom. Other key names are counsels Nicolas Hirt and Aki Koshizuka, and senior associate Mikako Tsukada, who is a Japanese qualified IP litigator.
Lloyd Parker; Frederick Ch’en
Other key lawyers:
Hiroto Imai; Tomoe Takahashi; Nicolas Hirt; Aki Koshizuka; Mikako Tsukada
‘The team is extremely efficient and runs very smoothly, providing top advice in every manner.’
‘My main contact is Lloyd Parker. He is a top flighter and is always thinking outside the box, looking for novel ways to provide better, faster and less expensive services to clients, offering clients advantages not available elsewhere.’
Merck & Co, Inc., d.b.a. Merck Sharp & Dohme
Brother Industries, Ltd.
- Advised Merck & Co, Inc., d.b.a. Merck Sharp & Dohme (MSD) on complex legal action in relation to MSD’s proposed pipeline vaccine products.
- Assisted Brother Industries, Ltd. with its global trademark portfolio.
- Acted for Mixi, Inc. on multiple global trademark oppositions and litigation proceedings.
The IP team at Morrison Foerster is prominent in a wide range of fields, most notably semiconductor, software, fintech, pharmaceuticals, and telecom, where it covers the full spectrum of IP work. Led by Louise Stoupe, Yuka Teraguchi, and Masato Hayakawa, the team is often instructed on high-profile patent infringement litigation and negotiations by leading Japanese and international companies. Stoupe’s practice focuses on representing large tech companies in complex commercial disputes while semiconductor, manufacturing, medical devices and software companies often turn to Teraguchi for assistance with IP litigation in both US and Japanese courts. Hayakawa is recommended for licensing deals, outsourcing programmes and IP matters relating to M&A. Other key names includes Max Olson, who is noted for his expertise in multi-jurisdictional patent litigation, Chie Yakura and Akira Irie.
Louise Stoupe; Yuka Teraguchi; Masato Hayakawa
Other key lawyers:
Max Olson; Akira Irie; Chie Yakura; Yukihiro Terazawa
‘Availability, flexibility, team work, attention to detail, and creativity.’
‘The team leader is alway available for a call or a meeting. This associated with timely and appropriate action and response to several problems and issues that arise during the development of the project leads to a smooth path towards achieving the optimal and quite often the most desirable results.’
‘Language skills, resources and availability. This has become more significant than ever with COVID-19, when it is imperative at times to speak directly with attorneys without concern for time zones and technical issues from web meetings.’
‘Max Olson and Akira Irie are noted for their language skills, legal knowledge, and performance in court.’
‘The team ensures proper transmission when associate changes by setting enough takeover period.’
‘Yukihiro Terazawa answers clearly on our questions.’
‘The team at Morrison & Foerster is well aware of Japanese market practices, acting on our instructions in a timely manner. In addition, they typically recommend the most cost-effective way to perform the next steps.’
‘Max Olson has extensive knowledge of our business models and management system. When we instruct him on a problem, he provides the appropriate advice.’
Cadence Design Systems, Inc
Buffalo Americas, Inc
Fujitsu Semiconductor Limited
Fujitsu America, Inc
DENSO TEN Limited
Fujitsu Client Computing Limited
Asahi Kasei Pharma Corporation
Santen Pharmaceutical Co., Ltd
Access Advance LLC
ASUSTeK Computer Inc
Mitsui Chemicals Inc
- Assisted JOLED Inc in filling and settling a patent infringement action against Samsung Electronics and Samsung Display in the US District Court for the Western District of Texas.
- Represented Cadence Design Systems, Inc in a patent infringement action brought by Computer Circuit Operations LLC in the US District Court for the Western District of Texas.
- Acted for Fujitsu America on a patent infringement litigation against Realtime Data, LLC in the US District Court for the Northern District of California.
With strong IP capabilities covering prosecution, non-contentious and contentious work, Jones Day has a proven track record in representing global companies in high-profile cross-border patent infringement litigation, especially disputes before US courts. With a strong team of Japanese qualified practitioners, the team also boasts a longstanding domestic trademark practice under the leadership of Michiru Takahashi, who focuses on trademark, unfair competition, and copyright issues. Takahashi works alongside Shogo Asaji, who is recommended for patent disputes across the US and Japan. Maxwell Fox left the firm in November 2021.
Other key lawyers:
Daikin Industries, Ltd
Educational Testing Service
Otsuka Pharmaceutical Co., Ltd
Rakuten Medical Inc
Ricoh USA, Inc
Senju Pharmaceutical Co., Ltd
Sunkist Growers, Inc
Torii Pharmaceutical Co., Ltd
Wikimedia Foundation Inc
- Represented Daikin Industries, Ltd and its US subsidiary in a multi-patent infringement lawsuit filed in the US by Chemours Company FC.
- Assisted Torii Pharmaceutical Co., Ltd in the drafting and negotiating a license agreement and other related agreements with Verrica Pharmaceuticals Inc.
- Advises Dell in connection with trademark matters in Japan, including trademark application, prosecution, clearance, counselling and dispute matters.
The IP team at Orrick, Herrington & Sutcliffe LLP is noted for its track record in representing domestic and international clients before both Japanese and US courts, where it frequently handles SEP licensing disputes and cross-border patent infringement litigation. Notable for his wealth of experience in handling IP litigation, arbitration and cybersecurity matters in a wide range of industries, including pharmaceuticals, computer software and manufacturing, Shinsuke Yakura oversees the practice. Yakura is supported by senior associates Masao Fujino, whose expertise spans patent infringement disputes and trade secret misappropriation, and Anri Nakamoto, who is recommended for contentious and non-contentious IP matters.
Other key lawyers:
Anri Nakamoto; Masao Fujino
‘The team has excellent capabilities in complex multi-jurisdictional issues, able to organise a team of expert from its overseas groups to provide high-quality advice in a short period of time.’
‘Shinsuke Yakura and Anri Nakamoto are very good at handling matters. They speak English, Chinese and Japanese very well. Not only do they have extensive experience, but they also have a close relationship with the firm’s experts overseas.’
Funai Electric Co., Ltd
JVC Kenwood Corporation
Mitsubishi UFJ Research and Consulting
Morinaga Milk Industries Co., Ltd
Sharp NEC Display Solutions of America, Inc
Toyota Motor Corporation
- Assisted Funai Electric with a claim brought by Universal Eletronics Inc against Roku and its partners.
- Successfully represented JVC Kenwood Corporation in a patent infringement lawsuit filed in the Eastern District of Texas by non-practicing entity American Patents.
Acting for clients from a wide range of industries, including tech, video gaming, pharmaceuticals, telecom and sports, DLA Piper Tokyo Partnership Gaikokuho Kyodojigyo Horitsu Jimusho is noted for its expertise in IP transactions such as patent and trademark applications. The group is jointly led by managing partner Lance Millar, whose practice focuses on venture capital, cross-border M&A and financings, and of counsel Tomoni Fujikouge, who is recommended for IP licensing matters, commercial contracts and outsourcing agreements. Another key name is associate Naoto Kosuge, who excels in data protection compliance and antitrust matters.
Lance Miller; Tomomi Fujikouge
Other key lawyers:
‘The team has the ability to quickly and accurately conduct legal research in many foreign countries.’
ZeniMax Asia KK
MaaS Global Oy
HSBC Bank plc
Science and Innovations JSC
Denco Horeca Beheer BV
Syneos Health, Inc
- Advised ZeniMax Asia KK on a variety of matters, including IP licensing, outsourcing, e-signature law, employment issues.
- Assisted MaaS Global Oy with a variety of matters including, premium law, payment regulation, competition law and consumer protection.
- Acted for HSBC Bank Plc on a trademark application to be filed in with the Japan Patent Office (JPO).
Co-led by Louis Beardell and Dion Bregman, Morgan Lewis & Bockius LLP‘s IP team is especially focused on representing Japanese clients in IP disputes before US federal district courts, the US Patent and Trademark Office and international arbitration centres. Key contacts for IP licensing, due diligence and international litigation are Motonori Araki, Mitsuyoshi Saito and Jitsuro Morishita; the latter was promoted to partner in October 2021. Other areas of strength for the practice are licensing and IP issues related to corporate matters.
Louis Beardell; Dion Bregman
Other key lawyers:
Motonori Araki; Mitsuyoshi Saito; Jitsuro Morishita
‘We use the law firm for the patent prosecution in the field of biotechnology.’
‘They have patent attorneys that speak Japanese. They offer useful suggestion.’
‘Good sense of client’s operations, including tech, R&D processes, management system and business strategy.’
‘Professionals with deep knowledge and experience.’
‘Jitsuro Morishita has in-deep knowledge of both US and Japan practices. So, Japanese clients are comfortable with his advice because they can compare the US and Japan matters on patent litigation.’
Shionogi & Co., Ltd
Taiho Pharmaceutical Co., Ltd
- Represented Nippon Shinyaku in the US Court of Appeals for the Federal Circuit in Nippon Shinyaku v. Sarepta Therapeutics.
- Acted for Dynabook Inc on a US patent litigation against a non-practicing entity (NPE) in the case Pineapple34, LLC v Dynabook, Inc filed in US District Court for the Western District of Texas.
- Assisted Fanuc Corporation with a patent infringement action filed by Northwestern University in the US District Court for the Northern District of Illinois regarding robotics-related technology.
Paul Hastings LLP
The Tokyo-based IP team at Paul Hastings LLP is recognised for its strong focus on patent disputes, with an emphasis on cross-border IP licensing and patent litigation in Japan and the US. With over 20 years of experience in representing leading tech and pharmaceutical companies in patent infringement actions and licensing disputes, Hiroyuki Hagiwara heads up the group. Hagiware is supported by associate Kyotaro Ozawa, whose practice focuses on US IP litigation and government investigations.
Other key lawyers:
‘The fact that they have many experts available to advise on a variety of litigation issues is an excellent differentiator.’
‘Explanations and advice are prompt and accurate.’
Johnson & Johnson
Mitsubishi Tanabe Pharma
- Represented JSR Corp in a patent infringement dispute filed by Swedish biotech firm, Cytiva Bioprocess, in a high-profile biotech dispute between two major providers of protein A chromatography.
- Acted for Daiichi Sankyo on a complex commercial dispute involving multiple parallel proceedings regarding revolutionary cancer treatment technologies.
- Assisted JSR in filing six petitions seeking invalidation of three US patents owned by Cytiva Bioprocess.
Quinn Emanuel Urquhart & Sullivan, LLP
Renowned for its strong capabilities in dispute resolution, Quinn Emanuel Urquhart & Sullivan, LLP‘s Tokyo team is especially focused on assisting Japanese and Asia clients with international IP litigation and arbitration in the US and Europe. Notable for his wealth of experience in handling disputes across a wide range of areas, including IP, antitrust, product liability and fraud, Ryan Goldstein oversees the group.
‘Aggressive approach, well-thought-out strategy, very good communication.’
‘Ryan Goldstein can develop a very strong and cost-effective team as well as a well-thought-out strategy. He manages the team very well.’
Hamamatsu Photonics KK
Photonics Management Corp
JCB (Japan Credit Bureau)
- Represented Panasonic in major automobile part litigation in the Western District of Texas.
- Acted for Mitsubishi Motors on a major patent litigation filed in Tennessee.
- Assisted major electronics company with a large-scale worldwide patent monetisation programme.