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2021 Asia IP Profiles: Tell us about your firm!31 May 2021
Later this year, Asia IP will publish the 2021 edition of Asia IP Profiles. This guide is the definitive resource for companies trying to identify the best IP practices in the region, and is based on editorial research, and surveys submitted by leading law firms.
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Imagineer is determined to get its MEDABOTS trademark back in Europe09 February 2021
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People and places
June Yeum joins Pillsbury as a partner in the firm’s New York, Hong Kong and Tokyo offices31 October 2019
Japan has long been Asia’s headquarters for quickly advancing technology. At once on the forefront of AI, the internet of things and data protection, even today, Japan manages to offer a glimpse of the future the rest of us haven’tquite reached.
It’s no surprise, then, that Japan’s intellectual property firms and practices are at the forefront of the business. Japan’s intellectual property market features several major players, including Anderson Mori & Tomotsune; Nakamura & Partners; Abe, Ikubo & Katayama; Hiroe & Associates; and Nishimura & Asa-hi. It also is a place where global law firms can thrive, as evidenced by firms like Baker McKenzie, Hogan Lovells, Jones Day and Morrison & Foerster, each of which have strong IP practices and boast strong individual members of their IP teams.
But while big firms may have the lion’s share of the international IP market, Tokyo is also a place where a hard-working small or mid-size firm can also see great success; many of the best are included in our list of law firms below.
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Eiji Katayama is the top name at Abe, Ikubo & Katayama. The firm is noted for its patent litigation work in chemistry, electronics and machinery, involv-ing advanced technology such as biotechnology and semiconductors. The firm’s work is frequently cross-border in nature, and members have extensive experi-ence as examiners at the patent office.
With broad experience in IP, life sciences and IT, Anderson Mori & To-motsune provides services in relation to international and domestic disputes, transactions, filings and regulatory matters. The firm is headquartered in Tokyo with branch offices in Osaka and Nagoya. Outside Japan, it has offices in Beijing, Shanghai, Singapore, Ho Chi Minh City and Bangkok. It also has associated firms in Hong Kong, Jakarta and Singapore. Partner Hideto Ishida is a key contact.
One of the largest Japanese IP firms and founded in 1965, Aoyama & Part-ners has its main office in Osaka, with a branch in Tokyo. Its patent attorneys are also scientists, engineers, pharmacologists and chemists who provide strategic counseling, prosecutions and litigations for domestic and international patent, design, trademark and other IP related matters. Senior counsel Mutsumi Same-jima is a key contact.
Located in Tokyo, Asamura Patent Office is overseen by senior managing partner Masahiro Asamura. The firm prosecutes cases regarding patents, utility models, designs and trademarks. It is involved in various proceedings at JPO and other jurisdictions. Cases from clients abroad and requests for filing applica-tions in foreign countries make up more than 90 percent of the firm’s work.
Atsumi & Sakai traces its roots to its well-respected finance and securi-tization practices; today, the firm has developed itself into a strong all-around player in most areas of business and finance law, include intellectual property and information technology. Senior partner Chie Kasahara is a key contact in the firm’s IP practice. She serves as a director of the Entertainment Lawyers Network Japan.
The IP/IT group at Baker McKenzie provides a full range of IP services including infringement litigation on patents, designs, trademarks, copyright, unfair competition and trade secret disputes. The firm is also active in prose-cution and proceeding management related to trademark design applications and registrations, as well as technology transfer and other acquisition, licensing and protection issues. Many of its members, such as partner Kensaku Takase and Kei Matsumoto, have abundant experience in both domestic and foreign ju-risdictions, which enable them to handle IP matters for the US and European markets and work with their international counterparts to coordinate inbound and outbound work.
The IP lawyers at City-Yuwa Partners have extensive experience in large-scale, complex and technologically sophisticated patent litigation. The firm also handles licensing agreements, technology transfer agreements and IP litigation. The firm also offers advice on the evaluation of essential patents for patent pool licensing programs of standard technology patents; partner Hideo Ozaki is a key contact for such patent matters. Kanako Inokuchi is an important contact for other IP matters. The firm is located near Tokyo Station on the east side of the city.
Led by managing partner Naoki Yoshi-da, Finnegan, Henderson, Farabow, Garrett & Dunner’s Tokyo office represents Japanese companies in IP litigation cases filed in the US district and appellate courts and before the US International Trade Commission; counsels on various IP issues; conducts due diligence for mergers, acquisitions, and other partnering opportunities; develops global litigation strategies; and negotiates IP licenses and draft licensing agreements. Leveraging more than 30 years of experience handling American legal matters for major Japanese corporations through its offices across the US, Europe, Mexico and Asia, Foley & Lardner is a full-service firm that established its Tokyo office to expand its coverage on IP and corporate matters. The more than 200 attorneys of the firm’s IP department have represented top five US patent owners in the fields of biotechnology, chemical, electronics and communications. Partner Michael Kaminski, who once worked as a research chemical engineer for a major oil company and for a major chemical company, is a key contact. He divides his time between Tokyo and Washington.
There are 87 patent attorneys at Fukami Patent Office, who work side-by-side with an AI/IoT support team. The firm, based in Osaka with branch offices in Tokyo and Nagoya, handle most IP matters, including filing and prosecution, op-positions, licensing, border protection and other IP-related matters. In its more than 50 years of existence, the firm says it has worked with more than 1,800 for-eign clients and filed applications in more than 180 countries. Yoshitake Kihara, Nobuo Arakawa, Masato Sasaki and Hisao Fukami make up the firm’s executive committee.
Hiroe and Associates provides services concerning patent, utility model, trademark, industrial design, copyright, unfair competition, licensing, search, prosecution, litigation, opinion, maintenance, renewal, technology transfer, counselling and more. The firm’s well-rounded team of professionals, which is based in Gifu Prefecture outside Nagoya, provides expertise in a wide range of technical fields and intellectual property law. Masanori Hiroe and Takenori Hi-roe are key contacts.
Regional managing partner for Asia Pacific Lloyd Parker and office manag-ing partner Frederick Ch’en are key contacts at Hogan Lovells in Tokyo. The firm offers IP services for both contentious and non-contentious matters on patents, trademarks, copyright, designs, trade secrets and unfair competition.
Itoh International Patent Office in Tokyo has a team of 63 Japanese pat-ent attorneys, complemented by a U.S. patent attorney, three Chinese patent at-torneys, two South Korean patent attorneys, and 39 patent engineers. The firm handles the full range of IP services, including applications, trials, litigation, ap-praisals, investigations and other consultations.
Jones Day has a formidable intellectual property practice, and that applies to its office in Tokyo, too. Maxwell Fox is a Japanese-speaking U.S. litigator – one of the few in Japan – who has been in Tokyo since 2006, where he handles IP infringement litigation, licensing and counselling matters, representing clients from electronics manufacturers to life sciences companies. Fox was part of a team that successfully defended NEC Display Solutions – both the Japanese par-ent and a U.S.-based subsidiary – against infringement allegations brought by Ultravision Technologies, brought both in the International Trade Court and in a parallel action in the Eastern District of Texas, in which Ultravision ultimately asserted eight patents.
Hirohito Katsunuma leads Katsunuma International Patent Office in To-kyo. Along with patent attorney Maya Kadonaga, they provide advice in a variety of areas, specializing in computer software, nuclear power, petrochemical engi-neering, semiconductor and manufacturing equipment.
Since 1957, Kawaguti & Partners has been a full-service IP law firm for re-gional and international clients of all sizes in Tokyo. Led by president Katsumasa Osaki, the team provides prosecution and litigation advice. Specialized advice comes from many including vice president Mitsumasa Ihara.
Kitahama Partners is a full-service law firm that handles primarily matters of corporate law, including IP and IT and related work. The firm is known for its ability to solve problems for its clients. Partners Jiri Mestecky and Masataka Shitanishi in Osaka and partner Miyako Ikuta are key IP and IT contacts at the firm.
Founded in 2003, Kotto Dori Law Office is located in Tokyo and excellent in art and entertainment law. The firm has represented clients in areas of publish-ing, audio-visual, stage drama, music and game. Its principal practice is divided between advice on domestic and international contracts, dispute resolution and copyright-related issues. Other expertise includes civil litigation, general corpo-rate, data privacy and trademark. Fukui Kensaku is a key contact.
Eiichiro Kubota leads the eponymous Kubota, where his practice focuses on litigation. Much of the Kubota’s former Hogan Lovells IP team, including Yu-suke Inui and Kiyoko Nakaoka, followed him to the new firm.
Founded by Tatsujiro Uchimura in 1908, Kyowa Patent and Law Office in Tokyo specializes in electrical, mechanical, chemical, trademark and design work. Led by managing partner Yukitaka Nakamura and Manabu Miyajima, the firm has approximately 60 patent attorneys and attorneys-at-law.
With its head office in Osaka and a group office in Tokyo, Marks IP Law Firm was founded by Masaki Mikami, who provides a full suite of trademark counselling services for both local and international clients.
Matsuo & Kosugi Partners is an important player in the media and en-tertainment space in Japan. The firm advises on broadcasting, movies, theatre productions, sports, special events, TV games and character merchandising, among other things. On the traditional IP side, the firm has particular expertise in drafting agreements to be used in China, Hong Kong and South Korea; it has represented clients in front of Japanese governmental bodies and in court over IP rights
Mori Hamada & Matsumoto is a large, Tokyo-based international law firm, with offices in Osaka, Nagoya, Takamatsu and Fukuoka, and overseas of-fices in Beijing, Shanghai, Singapore, Bangkok, Yangon and Ho Chi Minh City. With key practitioners Hiroki Saito, Yoshifumi Onodera and Atsushi Okada, the firm has significant experience in handling infringement cases involving patents, trademarks and copyright, and litigation involving patent invalidation claims and employee inventions in Japan.
Chair and patent attorney Hidekazu Miyoshi is the top name at Miyoshi & Miyoshi in Tokyo. The firm has provided IP services since its founding in 1965. The firm has experts in many technical sectors, including electrical devices, electronics, semiconductors, machinery, chemicals or materials and in a wide range of key technologies, from telecommunications and software to biotechnology and nanotechnology. Vice chair and patent attorney Shunichi Takahashi specializes in electronics-related patent prosecution and has lectured frequently on revisions to the Japanese Patent Law.
Morrison & Foerster’s Tokyo office is the largest of any international firm in Japan, with approximately 60 U.S. attorneys, 60 Japanese bengoshi and seven attorneys qualified in England and Wales. The firm is particularly busy in the areas of information technology and software, life sciences and biotechnology and industrial technology. The firm has advised Toshiba in an US$18 billion sale of Toshiba Memory Corporation to a consortium led by Bain Capital, Nissan Motor in the sale of its electric vehicle battery business to Envision Group, and Fujitsu in its strategic partnership with Ericsson to develop, manufacture, commercialize and deliver end-to-end 5G network solutions to major telecom service providers.
Nagashima Ohno & Tsunematsu has powerful legal teams capable of providing clients with effective practical solutions. The firm’s IP practice covers both IP litigation and transactional matters, from traditional IP transactions such as licensing or research and development agreements to complex IP M&A, IP finance, IT related matters and entertainment business. Based in Tokyo, the firm also has offices in New York, Singapore, Bangkok, Ho Chi Minh City, Hanoi and Shanghai.
Named Asia IP patent firm of the year for Japan in 2020, Nakamura & Partners in Tokyo is an international patent law firm which provides IP services inside and outside of the jurisdiction. It provides services for patents (including designs) and trademarks, and has a strong legal section and the administration group to support the firm. Outstanding practitioners include Akira Watanabe, Shinichiro Tanaka, Hiroyuki Itaki and Kei Iida. Clients include Sony and Fuji-Film.
Nishimura & Asahi is the largest and one of the oldest law firms in Japan. Along with the Tokyo headquarters, it has branch offices in Osaka, Nagoya and Fukuoka with approximately 500 attorneys, foreign attorneys, and other professionals. To strengthen cross-border practices and presence, the firm has opened offices in Frankfurt,
Dusseldorf, New York, Taipei, Beijing, Shanghai, Dubai, Ho Chi Minh City, Hanoi, Singapore, Yangon and Bangkok as well as affiliate offices in Jakarta and Hong Kong. Top IP practitioners have helped MNCs such as Microsoft Japan and Canon handle IP prosecution, litigation, licensing and other transactions. Partner Yoshiyuki Miyashita is a key contact.
Oh-Ebashi LPC & Partners was established in Osaka in 1981 and today has more than 150 attorneys in offices in Osaka, Tokyo, Nagoya and overseas in Shanghai. The full-service firm handless most business law matters, and has a significant regional practice. Partner Norihiro Sekiguchi is a key contact for IP and for life sciences matters.
Managing partner Seiji Ohno leads Ohno & Partners in providing litigation, prosecution, licensing, due diligence, opinion and counselling services for all kinds of IP. The firm has actively tackled unsolved legal issues, so it has been able to establish new case laws before the Supreme Court.
Ohtsuka Patent Office in Tokyo boasts practice areas including information processing systems, communications-related technology, semiconductors and electronic circuitry, mechanical, designs, medical devices, chemicals, maceuticals, and amusements and games. Managing partner Yasunori Ohtsuka is noted for his work before the Japan Patent Office and the Intellectual Property. High Court, and for his work seizing IP-infringing products at the customs offices.
Founded in 1968, Onda Techno International Patent Attorneys has its headquarters in Gifu with offices in Tokyo and Osaka. The firm helps both domestic and international clients craft IP strategies for corporate management as well as providing services for enforcement and licensing of patent, trademark and design. President Makoto Onda is a key contact.
Led by president Aki Ryuka, Ryuka IP’s IP team comprises attorneys, paralegals, engineers and translators. Clients come from domestic companies and MNCs in South Korea, Taiwan, China, Hong Kong, Malaysia and Singapore in the fields of electronics, telecommunications, software, optics, mechanical engineering, semiconductors, electronic materials, chemicals and biochemistry.
Sakae International Patent Bureau, also sometimes known in English as Tashiro & Etoh Patent Bureau, has been in existence since 1948. President Toshiaki Etoh has written and edited numerous papers and books on Japanese intellectual property law, and has served as a lecturer at Meiji University in Tokyo. The firm also boasts five other Japanese patent attorneys. Hongyue Liu, a Chinese patent attorney, and Lance Chandler, a U.S. attorney at law, are good starting contacts.
Led by president Atsushi Aoki, Seiwa Patent & Law is an international patent and law firm located in Tokyo. The firm provides all kinds of IP matters to both domestic and overseas clients. It is a partnership comprising about 300 members, including approximately 100 patent attorneys and attorneys-at-law. Located in Tokyo, Shiga International Patent Office was founded in 1965 by Masatake Shiga, and has grown into one of the leading patent firms in Japan due to many technical experts from China, South Korea and several English-speaking countries. President Yasuhiko Murayama is a key contact.
Shiomizaka, located near JR Shimbashi Station in southeast Tokyo, was formerly known as STW & Partners. The firm is well-regarded for its work in IP, data protection, information technology, internet of things (IoT), artificial intelligence and media/entertainment work. Hajime Watanabe and Tomoyo Fujimoto are good contacts for such matters.
Shobayashi International Patent & Trademark Office (SIPTO) boasts a team of some 150 professionals across three offices in Tokyo and one in Osaka. President and patent attorney Masayuki Shobayashi is noted for his work in trademarks, chemicals, pharma and biochemicals. Executive vice president and patent attorney Takuya Saito advises on ICT/software-related inventions, business models, IP strategy, IP economic value assessments and contract negotiation support, among others. Patent attorney (New Zealand and Australia) and solicitor (New Zealand) Elizabeth Partridge is noted for her patent prosecution work.
Headquartered in Tokyo with offices in Kyoto and Fukuoka, chairman Ryuichi. Shitara leads Soei Patent & Law Firm in providing patent, trademark and design protection services to engineers, inventors and designers.
Founded in Japan in 1910, Sonderhoff & Einsel is a multicultural firm with professionals from Europe, Japan, the U.S. and China. The firm’s legal, IP, tax and accounting experts provide practical, goal-oriented solutions across a wide range of practice areas to international and Japanese clients. Managing partner Keiji Isaji focuses his practice on IP matters such as licensing under the Patent Law or Trademark Law, on regulatory laws and civil and criminal litigation.
For more than two decades, Washington-based Sughrue Mion has maintained an office in Tokyo with bilingual and bicultural staff members. All of the resident attorneys are US-qualified and provide counselling in areas such as patent prosecution, litigation, licensing, negotiation, validity, infringement, export control and foreign filing licenses.
Named Asia IP copyright firm of the year for Japan in 2020, Sugimura & Partners is an IP specialist firm which represents both Japanese and international clients pursuing patent, design, and trademark protection. Its clientele ranges from single inventors and startups to well established academic institutions and multinational corporations from all sectors of the global economy. Top practitioners include Kenji Sugimura and Koji Sugimura.
Suzuye & Suzuye has more than a century of experience in acquisition, enforcement and maintenance of both domestic and international IP rights in Japan. President Masatoshi Kurata is a patent attorney and U.S. patent agent; he specializes in electrical and telecommunciations work. Senior vice president and partner Toshimi Koide is a patent attorney noted for his work in trademarks, designs and unfair competition.
Tokyo Kyodo Patent Office offers services in portfolio management, enforcement, licensing, defense and valuation for patents, trademarks as well as designs. Yoshihiro Igarashi, Naoto Hiramatsu and Hideya Tsuba are key contacts.
Yoshiyuki Inaba and Toyotaka Abe are key practitioners at TMI Associates. The firm was named Asia IP trademark firm of the year for Japan in 2020; its clients range from venture businesses to well-established high-tech companies. It also liaises with government agencies and has increasingly had opportunities to advise on policy. Besides copyright services, it also handles patent, utility model, design, trademark, trade secret, unfair competition, action plan, antitrust as well as licensing matters.
Uchida & Samejima Law Firm (USLF) was established in July 2004, and specializes in broad business laws, including intellectual property and bankruptcy. The firm focuses on doing business with “technology corporations” and each of its members have both technological expertise and legal experience. Partner and founder Hiroshi Uchida focuses on pharmaceuticals and biotechnology, chemicals and materials, civil engineering and architecture, electronics, machinery and software. Partner and founder Masahiro Samejima focuses on chemicals and materials, electronics, machinery and software. He began his career at Fujikura Ltd., where he was engaged in the development of materials for electric wires.
Located near the National Diet Building, Yamakawa International Patent Office was established in 1967. Its lawyers are each specialists in IP laws and in one or more specific technological field. The firm offers services in areas including counselling concerning IP-related issues, filing and prosecuting applications, dealing with post-grant proceedings, litigation against JPO trial decisions, prior art searches, and trademark searches.
Founded in 1902, Yuasa and Hara is one of the oldest and largest law and patent firms in Tokyo. The firm is a pioneer in multidisciplinary practice, consisting of a legal division, a patent division, a trademark and design division and an accounting division. Kazuhiro Nakata, Hiromichi Aoki and Toshiaki Iimura closely cooperate with each other to provide complete and multiple IP services to both domestic and foreign clients.