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Japan: IP – Litigation 2016

The new IP Litigation chapter is designed to accommodate the unique IP legal marketplace in Japan. Clients who need representation before the Japan Patent Office (JPO), the Tokyo and Osaka District Courts, the IP High Court of Japan and the Supreme Court require the assistance of Japanese attorneys-at-law (bengoshi) and patent attorneys known as benrishi. The division between bengoshi and benrishi are similar to those in the Europe and the US, namely that benrishi usually (but not always) have technical backgrounds and handle prosecution matters, whereas bengoshi have a licence to litigate in the national courts and predominately come from non-technical backgrounds. However, often teams representing clients in infringement and invalidations proceedings are formed of patent attorneys, who have gained a licence to litigate before the courts (known as huki-benrishi) and act as a co-counsel with bengoshi. Aside from these divisions at the bar, the market is also made up of foreign attorneys-at-law, who although are not licensed to practice Japanese law often represent Japanese clients in jurisdictions abroad. The following 37 practitioners are licensed litigating benrishi, bengoshi or foreign attorneys at law, who are considered leading figures in the market. 

Domestic

Five listings from Nakamura & Partners ensure that it tops our research, excelling with strength and depth, as well as a highly visible market presence. Koichi Tsujii is highly regarded for his “outstanding practice and intimate knowledge of IP law”; as a dual-qualified lawyer in the Japanese and New York bars, he is especially well regarded for US-Japanese IP litigation. Kei Iida is widely praised for his trademark and anti-counterfeiting practice. Kazuhiko Yoshida is well regarded for his expertise in both patent and trademark disputes, offering domestic and international clients “a fantastic insight into the law and a responsive approach”.  Meanwhile, Yoshio Kumakura and Kazuko Matsuo are “elder-statesman figureheads” among peers, lauded for their renowned practices over the last half a century.

TMI Associates was founded by 10 IP specialists over 25 years ago and it continues to be a core practice at the now full-service firm. Mitsuko "Mimi" Miyagawa is a noted trademark specialist with peers noting that she is “fiercely intelligent and very passionate”. Yoshiyuki Inaba is very well known in the market with a “top-notch” patent and trademark practice before the JPO and all levels of the Japanese courts. Satoru Nagasaka has a broad practice, including acting in patent and trademark disputes. One source notes that “he always brings something new to negotiations and his advice is good for getting to the heart of an issue”. Hiroshi Nemoto is a young but highly regarded partner at the firm. He is reportedly popular with clients for his “strong attention to detail and practical approach”.

At Abe Ikubo & Katayama, IP law is a core practice of the firm and it certainly counts itself as one of the leading players in Japan. Eiji Katayama is a “big name in patent litigation” and “one of the top three practitioners in the country” according to sources; he is especially renowned in the life sciences industry. Junichi Kitahara is a litigator with a focus on patent disputes in the pharmaceuticals, chemicals, medical devices, semiconductors and electronics fields. “He’s very smart and much admired for his sense of strategy and perspective,” says one peer.

Anderson Mori & Tomotsune provides a full range of disputes services in IP with two particularly renowned specialists. Head of the practice Yasufumi Shiroyama is well versed in large patent and trademark disputes with over 20 years’ of dedicated experience. He is regarded by some international peers and clients as “the go-to counsel” for instruction in complex patent litigation before the national courts. Yoshikazu Iwase has a very good reputation in the market and chairs the life sciences and chemical practice team at the firm. “He’s swift at dealing with demanding issues and performs very well in courts,” reports one peer.

STW & Partners is less than 10 years old but has successfully gained a strong client portfolio of domestic and international clients with a number of well established practitioners heading its IP practice. Wataru Sueyoshi is seen as “a top litigator who is very knowledgeable and provides unique insights into the law”; fellow founding partner Hajime Watanabe is seen as “an authority” in the field and “a top choice for complex patent disputes”.

Nagashima Ohno & Tsunematsu has prominent place in life sciences and tech patent disputes, with clients including Samsung and Kyowa Hakko Kirin. Ryoichi Mimura is a longstanding name in the field with an excellent pedigree among respondents for his performances in negotiations and in court. Yoshimi Ohara is a disputes specialist with a core focus on IP. One source notes, “She’s very good, knowledgeable, focused and resolute.”

Nishimura & Asahi sees two partners recommended for their practices. Eiichi Fukushima is regarded as “an eminent member of the IP bar” over the last 40 years. Meanwhile, Hitomi Iwase has developed a strong patent and trademark practice over the last 15 years.

Ohno & Partners’ managing partner Seiji Ohno is one of the most highly regarded patent litigators in the country. He is particularly well regarded for his biotech and pharmaceutical industry practice, with one respondent describing him “as sophisticated and clever as they come”.

Kubota founder Eiichiro Kubota is extensively experienced in patent and trademark matters. According to one peer, “He is at the apex of developments in the field and is very much admired at the bar”.

City-Yuwa Partners’ Hideo Ozaki has “a preeminent reputation”, with over three decades specialising as a patent litigator.

At Fukami Patent Office, xhairman Hisao Fukami is widely known and praised in the market with a patent attorney practice stemming back over 50 years and as a qualified IP infringement litigator since 2003.

Konishi & Nakamura’s managing partner Tomohiro Nakamura is a highlighted for his first-rate trademark and anti-counterfeiting practice. He’s praised as “commercially focused and very good with clients”.

Yuasa and Hara’s Osamu Suzuki has extensive experience in patent and trademark disputes. One source says, “He finds solutions to problems quickly and is generally very good at addressing matters in a timely and responsive manner.”

At Oh-Ebashi LPC & Partners, Takamitsu Shigetomi is a dual-qualified US and Japanese lawyer with a strong insight into cross-border trademark and patent matters. He is highly regarded by peers for his “insightful and practical advice”.

Co-founder of Tani & Abe is an “eminent and longstanding” patent attorneys admitted to practise IP infringement litigation Yoshikazu Tani. He is described as “very knowledgeable” and “client-focused”.

LTE Law Offices is represented by leading partner Kazuo Masui, who is active before the Japanese courts in patent disputes, with a focus on the chemicals and pharmaceutical sectors.

Foreign Attorneys-at-Law

Morrison & Foerster’s international IP practice is top-ranked with a number of prominent Japanese clients, including Hitachi, Fujitsu, Toshiba and Sega. Robert Hollingshead is praised as “a practical lawyer and an excellent strategist.” Max Olson is “the real deal”, leading on notable international IP disputes for the team’s biggest clients.

Hogan Lovells’ practice covers the full range of IP matters for Japanese clients needing overseas advice.  Head of practice Lloyd Parker is highly regarded with a particular emphasis on trademark enforcement.

Jones Day has recently bolstered its global IP disputes offering to its Japanese clients with the hire of the experienced Maxwell Fox. He boasts “a first-class practice”, having spent 10 years in Tokyo. Clients add that he is “responsive” and “very easy to work with”.

Ropes & Gray has established an excellent practice around assisting Japanese clients in US patent disputes. Hiroyuki Hagiwara is US-qualified and handles many of the firm’s most notable mandates, with peers describing him as “an excellent operator”.

Foley & Lardner’s recent hire Philippe Riesen has been brought in to expand the firm’s US patent litigation offering for Japanese clients. He is particularly well regarded for his expertise in the pharmaceutical and biotech space.

Finnegan’s Tokyo managing partner Naoki Yoshida is frequently called to act on cross-border patent disputes for Japanese companies. Sources describe him as “a distinguished practitioner with a very strong knowledge base”.

Head of Quinn Emanuel’s Tokyo office Ryan Goldstein is active in cross-border patent work predominately in the tech and electronics space. “He’s excellent both technically and in the courtroom,” comments one source.

Shusaku Yamamoto’s John Tessensohn is active in cross-border patent litigation practice in the life sciences and electronics sectors. One respondent notes, “He runs a fine shop and is easy to work with.”

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Nominees have been selected based upon comprehensive, independent survey work with both general counsel and private practice lawyers worldwide. Only specialists who have met independent international research criteria are listed.

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