Asialaw Profiles
The Guide to the legal markets of the Asia-Pacific

With a reigning IP practice, Nakamura & Partners is widely-regarded by the market as being the top IP boutique firm. The firm was established in 1914 and its practice encapsulates a broad range of IP matters which includes specialties in both prosecution and litigation. The prosecution group is staffed with 60 patent lawyers and its legal group employs 20 lawyers. Both groups are supported by nearly 100 staff members. The practices handle various patent, utility model, design, trademark and service mark applications, oppositions, trials, counseling, litigation and arbitration. Yoshio Kumakura and Koichi Tsujii are two of the top practitioners in this field.

A highlight case for the team this year was in advising Philips Lumileds Lighting Company in a Supreme Court Decision from July 10 2008 regarding a patent correction of claims. The Supreme Court cancelled both the decision of the IP High Court and the Patent Office and concluded that the correction of claims in the opposition procedure should be allowed must be decided claim by claim. In a recent high-profile case, the firm was hired by Bandai on a September 29 2009 IP High Court decision relating to patent infringement.

Abe Ikubo & Katayama’s IP practice boasts an expertise in patent litigation and prosecution, particularly in advanced technologies like life science, medicine, biotechnology and chemistry, and industries such as semiconductors, electronics and machinery. Its patent attorneys are noted for its strength in these areas. The firm was formed in 1959 and now employs a staff of more than 80 lawyers, attorneys and support members. The well-regarded litigator Eiji Katayama is the Chairman for the Intellectual Property Law Committee of Japan Federation of Bar Associations.

The practice has handled numerous clients in many prominent IP litigations in the areas of patent, trade mark, copyright and unfair competition. The practitioners within the group have strong backgrounds as examiners or appeal examiners for the Patent Office, and some have experience as judicial research officials in IP at the Tokyo District Court. Clients of the firm include a broad range of businesses like manufacturers, financial institutions, distributors, and numerous service industry enterprises. The practice has advised clients on Japanese law in international patent disputes.

As one of Japan’s largest firms, Anderson Mori & Tomotsune has a strong IP practice that offers expert counsel on patent litigation, and copyright and trade mark matters. The group comprises two dedicated IP partners, Yasufumi Shiroyama and Yoshikazu Iwase and a group of 10 associates. The practice has continued to hone its specialisation on the science industries and has brought on board attorneys with this type of background. Clients include Hitachi, Denso Corporation, and Sekisui Medical.

A highlight case for the team is an ongoing matter where the outcome may affect the foreign client’s market entry into Japan. This particular case has been proceeding parallel to those pending in other jurisdictions and the final decision may impact the outcomes of the foreign cases along with the client’s global business strategies.

Mori Hamada & Matsumoto significantly grew its IP team this past year with a number of associate hires and two promotions to the partnership in early 2008. The group’s litigation practice is renowned with Masayuki Matsuda and Takuya Iizuka as leading lawyers. Practice head Matsuda has been a member of the Copyright Section Group of Cultural Council of Agency for Cultural Affairs since 1993. The team offers quality advice on possible infringements, license negotiations, terms analysis, M&A involving IP, litigation and dispute resolution. In addition to domestic expertise, the team has an extensive track record of being involved in cross-border IP cases.

Recent noteworthy matters the firm handled include acting for a European client that managed the copyrights of a filmmaker by bringing a copyright lawsuit against Japanese companies selling DVDs of the films. The Japanese companies alleged the film had entered the public domain, but the Tokyo District Court and IP High Court were persuaded by the Mori Hamada team that the firms were not yet in the public domain after a correct understanding of the relationship between the former and current copyright law of Japan was deduced. The team also successfully defended a Japanese broadcasting company in a copyright litigation brought on by a foreign company in a Tokyo District Court.

TMI Associates runs a seamless practice between its lawyers and patent attorneys and has gained a solid reputation for its IP practice. Its 55 patent attorneys are specialists in a broad spectrum of technical fields and bring trustworthy opinions about filing applications for patents, utility models, designs, and trade marks. Its sector specialisations are in IT, media, entertainment and sports. The team’s offerings include the fields of copyrights, design and trade marks, patents and utility models, trade secret protection, unfair competition prevention, strategising for brand name protection, agreement drafting, and antitrust law advice. Mitsuko Miyagawa, Hidetoshi Masunaga and Tomohiro Tohyama are top IP lawyers part of the team.

A firm highlight this year had the firm advising a Japanese advertising agency in a patent infringement litigation brought by a Japanese stationery manufacturer in the Tokyo District Court. The TMI team won for its client on the basis of the invalidity of the patent. Another interesting matter was when the firm represented a Japanese subsidiary of a Korean LED manufacturer in a multi-jurisdictional patent infringement litigation brought by a Japanese LED manufacturer in the Tokyo and Osaka District Courts. Both parties reached an agreement on cross-licensing and all the cases were closed by settlement.

With over 70 patent attorneys, Yuasa & Hara is a top IP boutique in Japan known for its patent expertise. It houses lawyers, patent attorneys and certified public accountants who offer opinions on legal matters, intellectual property protection, accounting and auditing. The firm has been present in the market for over a century, established in 1902 by judge Toyotaro Yuasa. Key areas the firm has developed its expertise include business method patents, computer software protection, cyberspace transactions, domain name disputes, international brand protection of trade marks and designs, and patent protection in biotechnology, mechatronics, computer science and other advanced technologies. Additionally, the firm handles corporate work, litigation and dispute resolution.

Leading partner Toshiaki Makino was a former Tokyo High Court judge and Kozo Yabe is revered for his knowledge on cyberspace law and domain name dispute resolution. The firm won a major trade mark case in the IP High Court, having it recognise the Coke bottle as one of the first 3D trade marks in the country.

Abe Wada & Watanabe was formerly known as Abe & Matsutome. The newly-branded firm offers a full-range of IP law services for trade marks, patents, copyrights and design rights. It has extensive experience acting for clients in trade mark prosecutions, licensing, anti-counterfeiting work and the enforcement of patent rights in Japan. The firm is affiliated with Ohtsuka International Patent Office and has three benrishi partners: Yoshiki Abe, Hiromi Watanabe and Hiroto Imai.

Nagashima Ohno & Tsunematsu has an esteemed roster of practitioners within its IP practice including a former judge of the IP High Court of Japan, and members of government IP-related councils and working groups among others. The domestic firm covers all core areas of the IP industry from patent prosecution to licensing.

Nishimura & Asahi is Japan’s largest domestic firm and its sizable IP practice has an expertise in IP matters related to entertainment and engineering industries such as information technology, biotechnology, and life sciences. The group offers a full range of advice from license transactions and trade mark registration to strategic IP litigation counsel.

Seiwa Patent & Law is a boutique IP offering that specialises in traditional patent prosecution, and the protection and utilisation of IP in the business sector. The group has eight lawyers and its patent division provides services for the filing and prosecution of trade mark applications, trade mark searches and opinions, and advice on trade mark infringement. The firm houses veteran engineers and former senior members of the Japan Patent Office.

Atsumi & Partners recently advised a film production company in relation to its document preparation and legal opinion on its granting of rights to produce and market a theatrical film based on a Japanese novel. The IP practice has extensive experience working patent, trade mark, copyright and other IP disputes for domestic and international clients in a broad sweep of industries.

Ohno & Partners is an IP boutique firm with an experienced staff that includes 15 patent attorneys and possesses an expertise in advanced technology IP litigation. Areas it covers include filing and pursuing applications for patents, trade marks, designs and utility models, and acting on IP litigations involving patent, trade mark, design rights, utility models, copyrights, and unfair competition.