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

Hogan & Hartson’s Japan IP practice is part of its integrated Asia practice comprising Tokyo, Beijing, Shanghai and Hong Kong. The firm offers a full range of IP advice and has particular expertise in the technology sector and representing companies in complex patent cases. The practice has a strong track record of advising domestic corporates on matters such as patent and IP litigation, licensing negotiations, general litigation, opinions regarding infringement and validity issues, the prosecution of patent and trade mark applications, due diligence and patent portfolio analyses.

The team includes four registered US patent lawyers and litigators. Technology types the firm deals with include biology, biotechnology, business models, chemistry, computers, electronics, material science, mechanics, semiconductors, and software. Philippe Riesen heads up the office and has over 20 years experience handling patent and other IP matters.

Lovells’ Tokyo IP practice remains one of the market’s premier groups for top-quality contentious and non-contentious advice on patents, trade marks, designs, copyrights, trade secrets, unfair competition. The team consists of 23 members, including eight bengoshi and four foreign-qualified attorneys. Led by the noted Lloyd Parker and Eiichiro Kubota, the firm’s IP offering was strengthened last year after Kubota’s firm, Kubota Patent and Law Office merged with Lovells Tokyo in January 2008. The IP practice’s areas of advice are divided into four main areas: registration, commercialisation, enforcement and defensive strategies. Its clients include a broad range of international and domestic corporates such as Bridgestone, Toyo and Kao Corporation.

With an extensive track record of leading the charge on a number of groundbreaking cases, one example in particular brought the IP team into the limelight in a high-profile matter for PepsiCo. In this matter, Kubota and Parker advised PepsiCo on all the IP aspects of its strategic alliance with Calbee Foods. For the same client, the firm has been instrumental in all its trade mark work in Japan. Panasonic is another client of the firm and Parker recently led a team representing it on the registration of Panasonic’s trade mark for Panasonic’s new range of alkaline batteries.

Morrison & Foerster boasts the largest IP practice of the international firms in the Tokyo market. With 12 partners and 19 associates dedicated to IP work, the firm’s stamp in the space is clear and the market acknowledges the firm’s consistent delivery of winning advice. The practice had two major arrivals recently, top patent litigator Jack Londen and Yukihiro Terazawa a partner with specialisation in hi-tech, e-commerce and IP transactions. Leading names on the team with IP expertise include Matthew Berger, Stuart Beraha, Mark Danis, Taro Isshiki and Peter Stern.

The Mofo IP practice advises on patent, trade mark, copyright, trade secret, unfair competition and other related IP matters. The team concentrates on technology areas involving electronics, software, telecommunications, life sciences, biotechnology, chemistry and materials science. Clients include Sharp Corporation, Fujitsu, Apple, Nikon, Hitachi, Mitsubishi Electric and Nikon Corporation. An example of a current case the team is handling is representing Nikon Corporation, Nikon Precision, and Nikon Research Corporation of America in a patent litigation against Anvik Corporation in New York.

Another matter was acting for Osaka-based Funai Electric in an ITC proceeding brought against six groups of television manufacturers and sells in Taiwan, China and the US. This was one of the first trials on patents related to the federally mandated digital television standard and the team successfully obtained an exclusion order for its client banning the importation of the remaining parties’ infringing products.

The IP practice of Baker & McKenzie GJBJ Tokyo Aoyama Aoki Koma comprises three partners and four associates within a team of 12 members. The firm’s expertise in litigation on copyright licensing, media, sports and entertainment matters is well-known and other core areas it covers includes IP licensing and other non-contentious matters, trade mark and design prosecution, and IP enforcement and litigation. The team is able to liaise closely with other offices within the Baker & McKenzie global network. Leading lawyers Yasunori Hashiguchi and Kenichi Nakayama are respected in this field.

In ongoing matters, the team is acting for Daiwa Seiko in the management of Global Trademark portfolio of new marks, and is acting for a leading US apparel manufacturer defendant in an appellate instance of trade mark registration invalidation trial before the IP High Court in Japan. Additionally, Nakayama is assisting a top domestic electronics corporate on auditing its trademark portfolio of related companies in the country.

This US-based firm is a specialist IP firm that opened up in Tokyo in 1988. Its full-service offering includes quality counsel on all aspects of patent, trade mark, copyright, and trade secret law, including advice, prosecution, licensing and litigation. Other IP issues the practice covers are any related international trade, portfolio management, internet, e-commerce, government contracts, antitrust, and unfair competition. Clients include Mitsubishi Heavy Industries, Otsuka Pharmaceuticals, Sony Corporation, and Toshiba Corporation. Naoki Yoshida is the office’s managing partner.

The industry sectors the team has expertise in are biotechnology, chemicals, pharmaceuticals, medical devices, electrical and computer-related technologies, telecommunications, heavy machinery and manufacturing, consumer products, entertainment and publishing, and internet services. A recent case undertaken by the team was for defendant Mitsubishi Heavy Industries where it is denying allegations by General Electric that the wind turbines its client manufactured and installed infringes certain patents owned by General electric.

Foley & Lardner’s Tokyo office has over 25 years experience handling US-related IP cases for top domestic corporates. It brings the firm’s core strengths in a range of litigious matters and the practice is led by Michael Kaminski who also spends time in the firm’s Washington DC office. Industries that the relatively modest-sized team has experience in are chemical, pharmaceutical, and chemical engineering.

Morgan Lewis & Bockius offers clients a well-rounded IP practice along with its joint venture with Japanese firm TMI Associates. Morgan Lewis TMI specialises in litigation and the areas of life sciences and technology. The joint venture combines the breadth of Morgan Lewis’ global network and US law expertise and TMI Associates leading domestic counsel.

Ropes & Gray opened its Tokyo office in 2007 and is staffed with seven attorneys including three IP partners: Hiroyuki Hagiwara, J Steven Baughman and James McGraw. The core area of focus for the team is IP litigation although it does provide a full range of IP services ranging from patent applications, portfolio management and licensing to alternative dispute resolution. Industries served include biotechnology, chemical, materials science, pharmaceuticals and telecommunications.

Sughrue Mion is an established US-based IP boutique firm that offers expert legal counsel on patents, trademarks and various IP-related litigations. The industries the firm covers include biotechnology, chemicals, pharmaceuticals, electrical, internet and nanotechnology.

Wenping & Co is a Hong Kong-based IP firm with a Tokyo branch in addition to Osaka, Singapore and Beijing. The firm provides a comprehensive expertise in all IP-related matters including filing and investigation of patents, trade marks and registry, copyrights and trade secrets, and infringement counselling.