Intellectual property: International firms and joint ventures in Japan
Baker McKenzie (Gaikokuho Joint Enterprise)'s intellectual property practice (IP) is led by Kensaku Takase who has expertise across the fields of trade marks, copyright, and design rights. Collectively, Takase's team represents a stellar roster of some of the world's leading brands across the full gamut of matters, including IP transactions, disputes, prosecutions, filings, portfolio management, trade secrets, and anti-counterfeiting campaigns, among others. Other notable practitioners in the group are Daisuke Tatsuno, Kei Takenaka, and the recently promoted to counsel, Yosuke Takenaka.
- The Tokyo office, along with the Brussels, London, Washington DC and Hong Kong offices, acts as the exclusive legal counsel to Yildiz Holding and GODIVA on the sale of its retail and distribution operations in four markets: Japan, South Korea, Australia and New Zealand.
Under the leadership of Lloyd Parker, the full-service intellectual property offering at Hogan Lovells Horitsu Jimusho Gaikokuho Kyodo Jigyo handles all contentious and non-contentious trade marks, patents and copyright matters both inside and outside of Japan. While Parker provides trademark portfolio prosecution management, and enforcement counsel to clients with global brands, Frederick Ch’en focuses on multi-jurisdictional patent litigation, specifically in the life sciences area. Also notable within the team are a host of qualified patent and trademark attorneys, including benrishi, such as Hiroto Imai, and counsels Chikako Hashimoto, Nicolas Hirt. New partner Tomoe Takahashi, who is qualified in New Zealand, England and Wales, and Ireland, is also of note.
‘This team sets itself apart through its effective teamwork and coordinated approach.’
‘The firm’s impressive international network provides easy access to many standout individuals across the world.’
Nissan Motor Co Ltd
Merck & Co., Inc., d.b.a. Merck Sharp & Dohme
Brother Industries, Ltd.
Recordati Industria Chimica E Farmaceutica S.p.A
- Continues to advise its longstanding and key strategic client Nissan on every aspect of its global trademark portfolio and strategy.
- Representing Merck Sharp & Dohme in Japan (as well as in in the UK, Germany, the Netherlands, and the US) in legal actions challenging the validity of certain GSK and Pfizer patents in relation to MSD’s proposed pipeline vaccine product, V114.
- Assisted Recordati Group on the licensing agreements with Aegerion for the exclusive marketing rights to the Juxtapid drug in Japan for a value of $30m in addition to further payments conditional upon achievement of commercial targets and orphan drug royalties.
At Morrison & Foerster LLP the intellectual property department is jointly spearheaded by litigation specialist Louise Stoupe and patents expert Robert Hollingshead. The group has substantial experience in advising clients in a variety of fields, including the semiconductor, software, information technology, fintech, pharmaceutical, medical device, and telecoms industries. Recent work highlights pertain to issues including critical patent license and cross-license arrangements, complex software licensing arrangements, cloud computing transactions, open-source software, and emerging blockchain technologies. Max Olson is a key name to note on the contentious front, while technology transactions partner Masato Hayakawa provides crucial advisory counsel. Also notable are Chie Yakura and Yuka Teraguchi. Akira Irie was recently promoted to partner, while Stuart Beraha joined Latham & Watkins Gaikokuho Joint Enterprise.
Louise Stoupe; Robert Hollingshead
‘MoFo’s many intellectual property experts are knowledgeable on Japanese practices and have easy access to a great international network of lawyers.’
‘Yukihiro Terazawa, Chie Yakura, Yuka Teraguchi, and Robert Hollingshead are of the highest quality and clients can have nothing but good experiences working with them on patent litigation related matters.’
‘The MoFo team knows Japanese companies’ customs in the decision-making process and the preparation of documents.’
‘Chie Yakura is one of the important partners handling intellectual property matters in Japan. She is knowledgeable on foreign intellectual property law as well as Japanese law, especially when it comes to litigation.’
‘Yukihiro Terazawa is a particularly insightful and strategic and skillful leader. Chie Yakura is a reliable and profoundly competent lawyer.’
‘Max Olson quickly recognises the situation at hand and provide the appropriate answers because he knows every fibre of his clients’ business.’
Toshiba and Toshiba Memory Corporation
- The group defended Nikon in US patent litigation matters initiated by Carl Zeiss and ASML.
- The team represented Nissan Motor in the sale of its electric battery operations and production facilities to Envision Group, a Chinese renewable energy firm.
- Defending Mitsui Chemicals, Inc., and its US subsidiary Mitsui Chemicals America, Inc., in a trade secret misappropriation case filed by Developmental Technologies, Ltd
- Successfully obtained a favourable ruling in a JCAA arbitration for Sanyo. Defendants tried to overturn the arbitral award and in 2017 the Japan Supreme Court upheld our arguments and remanded the case back to the Osaka High Court to examine defendants’ allegations.
- Representing Renesas Electronics Corp. in its $6.7bn acquisition of Integrated Device Technology, Inc.
At Jones Day, Maxwell Fox and of counsel Shogo Asaji focus on litigation, post-grant proceedings, patent analysis and assertions, patent licensing negotiations and agreements in both the United States and Japan. The pair are especially strong and adept at representing Japanese companies in US patent litigation, particularly in helping clients navigate patent discovery obligations. On the domestic front, Michiru Takahashi advises on trademark issues including trade mark clearance, counterfeiting counselling, as well as trade mark infringement litigation, and maintains longstanding relationships with a number of global brands.
Maxwell Fox; Michiru Takahashi
Other key lawyers:
‘Jones Day knows about trademark portfolios and understand its clients’ risk tolerances in searches and policing trademarks.’
‘Michiru Takahashi gives advice that is on-target. She is exceptionally useful in the search of clearance reports and third-party dispute recommendations. In transactions she is thorough and efficient. She is also timely.’
‘One of Maxwell Fox’s main strengths is his Japanese language capability. He is always very smooth and understandable for Japanese clients whom he effectively guides through US litigation.’
‘Jones Day’s patent analysis skills are higher than other firms’.’
Daikin Industries Co. Ltd.
Denka Company Limited
Educational Testing Service
Hino Motors, Ltd.
Kiss Nail Products, Inc.
Kobayashi Pharmaceutical Co., Ltd.
Kyowa Hakko Kirin Co. Ltd.
NEC Corporation, NEC Corporation of America
NEC Display Solutions Co. Ltd.
Ricoh USA, Inc.
Seven-Eleven Japan Co., Ltd.
Sunkist Growers, Inc.
Torii Pharmaceutical Co., Ltd.
- Since 2002 Jones Day has been representing Dell on the company’s IP matters in Japan, including both patent and trademark work.
- Advising Sunkist since 2009 when the client transferred its entire trademark portfolio in Japan to Jones Day.
- Representing Kiss Nail Products in several Intellectual property enforcement matters, including assisting in cease and desist letters and takedown notices against a number of infringements.
- Advised NMP, a leading radiopharmaceuticals manufacturer in Japan, in its negotiations of a joint development agreement with Global Medical Solutions Taiwan, Ltd.
- Defending NEC Display Solutions against allegations brought by Ultravision Technologies, LLC that certain of NEC Display Solutions’ modular LED display panels and related components infringe eight patents allegedly owned by Ultravision.
Orrick, Herrington & Sutcliffe LLP provides both outbound and inbound intellectual property (IP) counsel to its Japanese and international clients. Under the leadership of Shinsuke Yakura, the team handles cross-border disputes, license negotiations, transactions and portfolio management, with strong expertise in new technologies such as artificial intelligence. Yoshihiro Takatori heads the litigation department in Tokyo and has a strong track record in acting in cross-border IP and counterfeiting issues on behalf of Japanese clients. David Case has left the firm to start his own firm in the US. Anri Nakamoto has been promoted to managing associate. Also notable in the team is fellow managing associate Kei Kato.
‘Shinsuke Yakura and Masao Fujino are particularly strong in the field of intellectual property.’
‘Orrick’s Tokyo team has excellent capabilities and capacities for worldwide strategic intellectual property issues. No matter how complicated it gets, clients always get accurate and timely advice.’
‘Shinsuke Yakura and associate Masao Fujino have outstanding negotiation skills, but they are also excellent when it comes to drafting contracts, which contributes greatly to the promotion of overseas business.’
V. MANE Fils SA
Mitsubishi UFJ Research and Consulting
Morinaga Milk Industries Co., Ltd
Nitto Denko Corporation
Softbank Technology Corporation
Paul Hastings LLP
Paul Hastings LLP’s intellectual property (IP) team in Japan is focused on patents and has expertise in the automotive, technology, chemicals, life sciences and pharmaceutical sectors. Practice head Hiroyuki Hagiwara advises on complex cross-border licensing and patents litigation matters in various jurisdictions, including Japan and the US. Working closely with its white-collar and compliance colleagues, the IP group can leverage significant dispute resolution capabilities with shared expertise across the firm's key industry sectors. In the junior ranks, associate Kyotaro Ozawa intervenes primarily in IP litigation and government investigations. Counsel Timothy Mackey became deputy head of legal at SoftBank.
Other key lawyers:
Dainippon Sumitomo Pharma
- Representing Canon as plaintiff in a patent dispute filed against TCL Corporation in the Eastern District of Texas. Canon is asserting five patents relating to streaming, remote controlling, and connectivity capabilities in Smart TVs
- Representing Align Technology in patent enforcement actions against its 3Shape A/S in the United States.
- Representing Xtera in patent enforcement actions against its competitors, including Nokia/Alcatel Lucent and NEC.
Squire Gaikokuho Kyodo Jigyo Horitsu Jimusho's intellectual property offering operates as part of the wider disputes resolution practice jointly spearheaded by Haig Oghigian and David T. Miyamoto. In an arbitration before the Singapore International Arbitration Centre, applying Hong Kong law, the team was successful in an intellectual property infringement action on behalf of a US-based telecoms software company against a Chinese mobile phone manufacturer.
Haig Oghigian; David Miyamoto