Japan: Domestic

Firms: prosecution

H
Abe Ikubo & Katayama
Aoyama & Partners
Asamura Patent Office PC
Fukami Patent Office
Kyowa Patent & Law Office
Nakamura & Partners
Okuyama & Sasajima
Seiwa Patent & Law
Shiga International Patent Office
Shusaku Yamamoto Law Offices
SUGIMURA International Patent & Trademark Attorneys

Firms: transactions

H
Abe Ikubo & Katayama
Anderson Mori & Tomotsune
Mori Hamada & Matsumoto
Nagashima Ohno & Tsunematsu
Nakamura & Partners

Firms: litigation

1
Abe Ikubo & Katayama
Anderson Mori & Tomotsune
Nagashima Ohno & Tsunematsu
Nakamura & Partners
3
Mori Hamada & Matsumoto
Nishimura & Asahi
Abe Ikubo & Katayama
Full-service outfit Abe Ikubo & Katayama towers above the competition. Eminently skilled in patent litigation, prosecution and transactional work, it is a favourite of prestigious drug innovators seeking world-class representation, and also has a significant following among mechanical and electronics concerns. “After trying other firms, we moved our entire portfolio there,” reports one client. “It offers us innovation and creative solutions to problems.” “It has the structure and local relationships with the patent system to get the job done and get it done well,” agrees a peer. Holding numerous leadership roles in international legal associations, the “massively impressive” Eiji Katayama performs flawlessly in Japan’s IP courts. Multinationals habitually rely on Mami Hino’s on-point advocacy in high-stakes infringement disputes; in addition to racking up countless courtroom wins, she calls on her extensive pharmaceutical background to astutely advise on all manner of regulatory and patent issues. Former Dow Chemical and Pfizer in-house counsel Hiroshi Kobayashi makes his IAM Patent 1000 debut on the back of his deft handling of chemistry-related disputes.
Anderson Mori & Tomotsune
A distinguished member of Japan’s yondai – or Big Four law firms – Anderson Mori & Tomotsune knows how to find the back of the net in must-win patent suits and transactions. With more than 400 attorneys on hand, it boasts one of the country’s top contentious units. Well versed in the full range of technologies, it recently mounted unassailable defences of domestic electronics firms against a barrage of suits from foreign patent trolls; pharmaceutical and medical device mandates are also dispatched with vigour. The transactional nous of the IP unit is staggering, underpinned by synergies with the firm’s potent corporate and legal divisions. Its burgeoning prosecution practice is also one to watch. “Expert advocate” Yasufumi Shiroyama caters to all manner of patent owners, but has a particular knack for prevailing in bet-the-farm pharmaceutical disputes. A sure hand in electronics and biotechnology matters, Yoshikazu Iwase frequently secures victory for clients with his vast international and domestic trial experience. A standing committee member on pharmaceuticals and biotechnology for the International Association for the Protection of Intellectual Property, Makoto Ono shines on the filing side; he is especially cherished for his chemistry and life sciences expertise.
Aoyama & Partners
Located in central Japan, Osaka-headquartered Aoyama & Partners capitalises on its surrounding market to superb effect. Having passed the half-century mark, the well-established, patent-focused team boasts 70 benrishi and 50 engineers skilled in everything from life sciences to electronics. While best known for its handling of domestic applications, it is also dispenses insightful counsel to foreign clients. Chief executive officer Mutsumi Samejima helms the practice.
Asamura Patent Office PC
The oldest patent firm in Japan, 124-year-old Asamura Patent Office is popular with patrons worldwide thanks to its forward-looking, consistently innovative approach. Marshalling a robust team of 40 patent attorneys and maintaining strong links with overseas affiliates, it is routinely engaged by both foreign entities seeking to file in Japan and domestic companies in need of cross-border guidance. A sparkling client roster includes Hitachi, Texas Instruments and Asahi Kasei. Senior managing partner Ken Kanai is a key figure.
Fukami Patent Office
Sophisticated electrical and mechanical capabilities are Fukami Patent Office’s unique selling points. Operational for more than four decades, the prosecution powerhouse is favoured by local concerns for its efficient, thorough management of large patent portfolios. Based in Osaka – Japan’s industrial heartland – it has won the trust of a slew of manufacturing outfits. Alongside engineering mandates, it tackles pharmaceutical and chemical briefs with aplomb. President Hisao Fukami anchors the practice. Foreign expertise sets Itoh International Patent Office apart from the more traditional prosecution shops in Japan. Its robust team of nearly 100 patent attorneys and engineers can handle Chinese, Korean and US instructions, and excels “not only in technical specifications, but also in smart legal strategy”. Offices in Nagoya and Washington DC exemplify the Tokyo-based firm’s enviable reach and are appreciated by its high-profile clientele of electronics and mechanical engineering concerns. President Tadashige Itoh is a name for the contact book.
Kyowa Patent & Law Office
Kyowa Patent & Law Office is a preferred adviser to industry veterans and aspiring patent owners alike, particularly in the pharmaceutical and electronics sectors. It is now under the management of a larger team of partners, but is nurturing the next generation and actively building long-term attorney-client relationships. In operation for well over a century, the 60-strong crew effortlessly meets the increasing demands of patent protection in the region and beyond. Engineering and software guru Hirohito Katsunuma would stand out as “a true star even in a larger firm”; multilingual and a familiar face in a host of international organisations, he frequently imparts his deep wisdom through university lecturing engagements.
Mori Hamada & Matsumoto
One of Japan’s venerated Big Four firms, Mori Hamada & Matsumoto ably serves an enviable cadre of blue-chip domestic and foreign clients. Having built up an avid following among electronics patent owners, the veteran litigation team spearheads infringement battles across Asia and the Western Hemisphere. Patrons especially value its big-picture counsel, which incorporates extensive cross-border M&A and licensing expertise. No stranger to foreign legal systems and markets, the versatile Yutaka Miyoshi is often called on to fight for clients in far-flung jurisdictions.
Nagashima Ohno & Tsunematsu
Contentious and transactional titan Nagashima Ohno & Tsunematsu is “more thorough and pragmatic than most other corporates and even the boutiques”. Bolstered by the firm’s impressive range of legal divisions and practices, the IP team is the darling of many electronics and pharmaceutical multinationals. Its firepower is well distributed across multiple international offices, including bases in New York, Shanghai and Singapore. Vice president of the International Court of Arbitration Yoshimi Ohara adeptly coordinates intricate cross-border transactions. A popular choice for complex electronics licensing matters, Shunji Matsuda is dual qualified in Japan and New York. Domestic clients line up to instruct Takahiro Yamauchi, a master of dispute resolution and competition law in the pharmaceutical and chemical fields. Adding to the firm’s wealth of talent are Ryoichi Mimura and Masato Tanaka, who dispense invaluable advice informed by their previous experience as IP judges.
Nakamura & Partners
“Nakamura & Partners is one of the best firms for patent enforcement in Japan. It has had the top people for such a long time.” “The best IP litigators stay at specialist firms like Nakamura. The blockbuster cases that it constantly acts on show the level at which it is operating.” In addition to its contentious muscle, the elite boutique provides meticulous prosecution and transactional counsel. Director of the Law Association for Asia and the Pacific and prolific author Kazuhiko Yoshida is “one of the most renowned litigators on the domestic scene”. Contentious maven Yoshio Kumakura has chalked up an unparalleled track record over half a century of dispatching IP briefs. Complementing his sports and entertainment law practices, multi-talented Koichi Tsujii spars with the best in highly contested suits.
Nishimura & Asahi
With more than 500 fee earners in its stable, corporate behemoth Nishimura & Asahi maintains a “sturdy and innovative” patent litigation practice. Well equipped to act in China, Southeast Asia and the West, it is regularly summoned to do battle in tricky multi-jurisdictional spats. The IP unit’s close integration with the firm’s corporate and finance divisions keeps patent owners up to speed on the ever-changing business environment. World-class consumer electronics companies feature prominently on its client roster, but pharmaceutical entities also frequently entrust it with challenging mandates. Hitomi Iwase is a key contact. Since its inception in 2000, Ohno & Partners has attracted a diverse range of high-profile instructions thanks to its “significant expertise in all technical fields and complete understanding of complex legal details”. One of the country’s premier contenders in big-ticket patent disputes, it recently defended Asahi in a dispute with Suntory concerning non-alcoholic beverages. Outside the courtroom, it formulates detailed strategies to secure watertight patent protection. Founder Seiji Ohno is a go-to authority on all aspects of IP law; a biologist by training, he always stays one step ahead with his deep understanding of technical minutiae. Ken-ichi Katayama and Kan Otani underpin the firm’s non-contentious offering with their rigorous drafting and prosecution, especially in electronics and engineering briefs. Many of the practitioners on Ohtsuka Patent Office’s 50-strong team have notched up abundant previous experience as in-house counsel and patent examiners; clients line up to praise it for its “holistic and even-keeled” advice. Highly proficient in all areas of intellectual property, the outfit – together with associated law firm Abe, Wada and Watanabe – garners particular praise for its deft handling of IT mandates. Managing partner Yasunori Ohtsuka is an electronics sage who has authored several respected patent reference tomes.
Okuyama & Sasajima
Okuyama & Sasajima earns a spot in the IAM Patent 1000’s prosecution list on the back of its extensive work for both Japanese and foreign patent owners. Comprising 17 patent attorneys with advanced degrees from across the world, the boutique boasts wide-ranging technical capabilities in electronics, chemistry and mechanical engineering. A superb translation service ensures error-free applications and effortless communication with its overseas clientele. Shoichi Okuyama helms the group.
Seiwa Patent & Law
Seiwa Patent & Law sidesteps the typical hurdles faced by large firms, providing “excellent, personalised service” while overseeing myriad massive portfolios. Home to nearly 100 patent attorneys and attorneys at law, it effortlessly assists rights holders seeking to make a name for themselves in the domestic innovation market, while also helping foreign clients get to grips with the Japanese IP system. Its sizeable life sciences, electronics, chemistry and design departments are treasured by many heavyweight players from home and abroad. Minako Mizuno joins the IAM Patent 1000 rankings as an “immensely dedicated and knowledgeable practitioner”. One peer enthusiastically commends her “meteoric rise” in a traditionally male-dominated environment.
Shiga International Patent Office
An omnipresent force in the Japanese patent realm, Shiga International Patent Office provides precision prosecution to an impressive cadre of overseas clients. A favourite of companies in the heavy industries, it manages sprawling portfolios for eminent conglomerates with utmost poise. The team comprises more than 100 patent attorneys and 300 engineers, accompanied by eight former patent office examiners. “Despite its large size, the quality and attention are always top notch.” Yoshifumi Saeki is a key contact.
Shusaku Yamamoto Law Offices
Since its was founded in 1979, Shusaku Yamamoto Law Offices has served as a reliable one-stop shop for patrons at the vanguard of their respective industries. It offers the full range of patent and commercial counsel and has prosecuted cutting-edge applications for former Nobel Prize winners. Supplementing its Tokyo headquarters, Osaka and Fukuoka offices provide seamless nationwide coverage. Firm namesake Shusaku Yamamoto is a prime pick for biotechnology concerns seeking sage advice. Although a newcomer to the IAM Patent 1000, Sonderhoff & Einsel can trace its illustrious history back to the Meiji period. Arguably Japan’s oldest foreign firm, it is a particularly popular choice for German automotive and engineering companies, given its roots. It has an sterling track record in the corporate and tax spheres, but is winning increasing acclaim for its patent service. “In Japan, it can be hard for international applicants to communicate effectively and cross cultural barriers; but Sonderhoff & Einsel has been multicultural since the beginning. It understands how to explain Japanese business culture to its clients.” Multilingual Felix Einsel is a name for the contact book.
STW & Partners
Eschewing the byzantine bureaucracy that prevails at some of Japan’s traditional legal behemoths, STW & Partners is a smart alternative for clients seeking world-class courtroom representation combined with hands-on, attentive service. In its relatively short nine years of life, the compact outfit has attracted the patronage of blue-chips across the IT and pharmaceutical fields. Comprising former Mori Hamada & Matsumoto practitioners, the litigation and transactional squads are no strangers to high-stakes briefs. Clients throughout the world uniformly laud firm co-founder Wataru Sueyoshi as “one of the best persuaders” in hotly contested patent cases; he frequently lectures at Tokyo University and is a prolific author of legal commentaries. With a wealth of contentious and consultancy experience gained at the US Federal Trade commission, commercial sage Hajime Watanabe is highly sought after in must-win spats.
SUGIMURA International Patent & Trademark Attorneys
One of the country’s most internationally minded boutiques, SUGIMURA goes to great lengths to keep its diverse foreign and domestic patrons happy. Its 61-member patent team comprises advanced degree holders in all technology fields and alumni of celebrated foreign institutions. A satellite office in Palo Alto provides an invaluable pivot point for clients in the Western Hemisphere and ensures round-the-clock readiness should pressing matters arise. President and engineering whizz Kenji Sugimura admirably continues the family tradition; his astute leadership has propelled the team to new heights and expanded markets. A quarter-century has passed since an enterprising group of IP specialists broke away from Nishimura & Associates to form TMI Associates; it has now surpassed many of its larger competitors and its star remains firmly on the ascendant. Renowned for both contentious and non-contentious patent work, it boasts an eye-catching list of Fortune 500 and zaibatsu clients. Strategic partnerships with Morgan, Lewis & Bockius and Simmons & Simmons have strengthened its international capabilities, while additional branches in China and Southeast Asia provide comprehensive regional coverage. Recently, it has been representing Nihon EVE in a fierce battle with Mentor Graphics over emulation systems that are essential to the verification of the complex systems on chips – technologies used by major semiconductor and electronic systems companies worldwide. Mechanical engineer Yoshiyuki Inaba is “a Swiss army knife” of IP know-how, with vast experience in both enforcement and prosecution; he has a knack for maximising commercial opportunities.

Yuasa and Hara has been a fixture on the Japanese IP scene through every technology cycle of the modern era. While its corporate and tax counsel is widely feted, patent litigation, prosecution and transactional work remains at the heart of this celebrated practice. It is a member of the TerraLex and Unilaw international legal networks and has a stellar reputation among multinationals: “All the lawyers and technical staff communicate clearly and transparently. They make sure that they not only grasp the small details, but also get the big picture.” Formerly an in-house patent engineer at petroleum titan Idemitsu Kosan, Kazuaki Okimoto “exudes expertise” in chemistry-related matters. “Magnificent” in contentious and transactional dealings, Kozo Yabe is a household name in the IP community.

Individuals: transactions

Yoshikazu Iwase - Anderson Mori & Tomotsune
Eiji Katayama - Abe Ikubo & Katayama
Eiichiro Kubota - KUBOTA
Shunji Matsuda - Nagashima Ohno & Tsunematsu
Yoshimi Ohara - Nagashima Ohno & Tsunematsu
Seiji Ohno - Ohno & Partners
Hideo Ozaki - City-Yuwa Partners
Kozo Yabe - YUASA and HARA
Kazuhiko Yoshida - Nakamura & Partners

Individuals: prosecution

Highly recommended
Mami Hino - Abe Ikubo & Katayama
Hirohito Katsunuma - Kyowa Patent & Law Office
Yasunori Ohtsuka - Ohtsuka Patent Office
Recommended
Yoshiyuki Inaba - TMI Associates
Ken-ichi Katayama - Ohno & Partners
Minako Mizuno - Seiwa Patent & Law
Kazuaki Okimoto - YUASA and HARA
Makoto Ono - Anderson Mori & Tomotsune
Kan Otani - Ohno & Partners
Yoshitaka Sonoda - SONODA & KOBAYASHI Intellectual Property Law
Kenji Sugimura - SUGIMURA International Patent & Trademark Attorneys
Shusaku Yamamoto - Shusaku Yamamoto Law Offices

Individuals: litigation

Eiji Katayama - Abe Ikubo & Katayama
Yoshio Kumakura - Nakamura & Partners
Ryoichi Mimura - Nagashima Ohno & Tsunematsu
Seiji Ohno - Ohno & Partners
Yasufumi Shiroyama - Anderson Mori & Tomotsune
Wataru Sueyoshi - STW & Partners
Yoshikazu Iwase - Anderson Mori & Tomotsune
Masato Tanaka - Nagashima Ohno & Tsunematsu
Koichi Tsujii - Nakamura & Partners
Hajime Watanabe - STW & Partners
Kozo Yabe - YUASA and HARA
Kazuhiko Yoshida - Nakamura & Partners
Yoshiyuki Inaba - TMI Associates
Hiroshi Kobayashi - Abe Ikubo & Katayama
Harumi Kojo - Sakurazaka Law Offices
Eiichiro Kubota - KUBOTA
Yutaka Miyoshi - Mori Hamada & Matsumoto
Yukio Nagasawa - Tokyo-Marunouchi Law Offices
Yoshimi Ohara - Nagashima Ohno & Tsunematsu
Yuichiro Takahashi - Takahashi Hayashi & Partners
Takahiro Yamauchi - Nagashima Ohno & Tsunematsu
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Issue 83