Japan: Domestic TMI Associates

TMI Associates has approximately 75 patent/trademark attorneys (benrishi) in addition to approximately 370 attorneys at law (bengoshi). These professionals – together with more than 70 paralegals as well as other related staff members – form a unique organisational structure that enables the firm to respond in a highly effective and efficient manner to the needs of clients across a wide variety of businesses and technologies from all around the globe.

History

Since its establishment on October 1 1990, TMI has grown rapidly and achieved its goal of becoming a full-service law firm that offers valuable and comprehensive legal services of the highest calibre at all times, while placing great importance on exercising unparalleled legal judgement in areas including intellectual property, litigation, general corporate, corporate finance, antitrust and bankruptcy law.

Of TMI’s practice areas, intellectual property – including patents, designs and trademarks – has been an integral part of the firm since its establishment, and TMI boasts an unrivalled level of experience and achievements in this area.

IP team

  • 75 patent/trademark attorneys (benrishi): 33 electronics and mechanics; 22 chemicals, biotechnology and pharmaceutical; and 20 trademark and design.
  • 30 IP lawyers (bengoshi).

Currently, out of the ‘Big Five’ law firms in Japan, TMI has the largest benrishi group by far, which supports its reputation as a firm that is famous for its strong IP practice in all technical fields.

IP practice

TMI’s practice covers all aspects of intellectual property, including patent and trademark prosecution, transactions (eg, patent sales/acquisitions and licensing), litigation, pre-litigation analysis, invalidation trials and oppositions, freedom-to-operate analysis, due diligence and import suspension at Customs. The firm handles over 6,000 patent, trademark and design applications and over 20 IP lawsuits per year.

Prosecution – among the comprehensive patent practice, TMI’s patent attorneys are most experienced in patent prosecution, and have been so since the firm’s establishment. The patent team covers all technical fields, including electronics, computer hardware/software, telecommunications, semiconductors, chemicals, biotechnology, pharmaceuticals and mechanics. Key features of the prosecution practice include:

  • prosecutions handled by patent attorneys with countless years of experience in drafting patent applications;
  • prosecution strategies provided from a business and corporate perspective;
  • high-quality translations provided by members with actual patent drafting experience; and
  • successful prosecution of patents suitable for both transactions and litigation.

Transactions – the IP transactional practice, which includes patent sales/acquisitions and licensing, has grown rapidly in recent years as the number of deals between corporations continues to increase globally. Key features of the transactional practice include:

  • team members including professionals with not only legal experience, but also business experience or in-house experience at global corporations;
  • provision of services at all stages of transactions, including identification and approach of potential partner companies, patent analysis, evaluation of patents, patent/business negotiations and drafting of agreements;
  • pursuit of transactions based on both Japanese and foreign patents;
  • representation of both Japanese and foreign corporations; and
  • creative, proactive and seamless work that transcends borders.

Litigation – TMI has become globally known for its highly skilled IP litigation practice over the past decade. In Japanese patent litigation, bengoshi are responsible for litigation strategies and benrishi are responsible for the patent/technical aspects that are central to these strategies. The patent litigation team is very experienced in serving both foreign and domestic clients. At any given time, the firm has at least 10 pending patent cases. Key features of the litigation practice include:

  • patent litigation handled by teams of bengoshi and benrishi working seamlessly together;
  • a litigation team supported by experts in the field, including a former IP High Court judge, former Japan Patent Office examiners and former Supreme Court justices;
  • representation of both plaintiffs and defendants; and
  • experience in handling over 100 patent litigation cases in the past 10 years.

Main address

23rd Floor
Roppongi Hills Mori Tower
6-10-1 Roppongi Minato-ku
Tokyo 106-6123
Japan

Contact details

E: pat_tm@tmi.gr.jp
T: +81 3 6438 5611
F: +81 3 6438 5622
W: www.tmi.gr.jp/english/

Professional contacts

Yoshiyuki Inaba, Senior partner
E: yinaba@tmi.gr.jp

Atsushi Sato, Partner
E: asato@tmi.gr.jp

Toyotaka Abe, Partner
E: tabe@tmi.gr.jp

Other offices

Beijing, Hanoi, Ho Chi Minh City, Kobe, Nagoya, Phnom Penh, Shanghai, Silicon Valley, Singapore, Yangon

Recommended individuals at this firm

Yoshiyuki Inaba
Japan: Domestic

Close

Register for more free content

  • Read more IAM blogs and articles
  • Receive the editor's weekly review by email
Register now  
Issue 87