Abe Ikubo & Katayama
Abe Ikubo & Katayama stands out for its “open-minded, creative” ethos and the breadth of its practice: it has a gleaming reputation in the contentious space, but also procures patents with verve. The firm places a premium on close client contact and has the commercial know-how to converse comfortably in business parlance. With an ability to “really get the message across to judges”, it was recently engaged by Suntory on an IP High Court appeal against Asahi Breweries. Suntory had lost the previous round of the lawsuit, handled by another firm, before the Tokyo District Court, and is now placing all its trust in Hiroshi Kobayashi
and Eiji Katayama
, who are teaming up for this battle. With over 14 years of industry experience at Dow Chemical and Pfizer under his belt, Kobayashi has “excellent pharmaceuticals knowledge and, on top of that, a really strong business perspective”. An engineer by training, managing partner Katayama is a globally minded technical whizz who is admitted to the New York Bar. Also eligible to practise in New York is outward-looking strategist Mami Hino
. “She is always of crucial help when it comes to building patent portfolios and seeking patent term extensions; diving deep into the technical details is no problem for her.”
Anderson Mori & Tomotsune
“Anderson Mori & Tomotsune is a highly knowledgeable and results-oriented firm, which provides outstanding service to US clients in particular.” While headquartered in Tokyo, the set also has overseas offices in China, Singapore, Thailand and Vietnam, making it a fine choice for Japanese businesses looking to protect their IP rights abroad and international companies seeking a single regional interface. Its skilled contentious squad fights tooth and nail when necessary, but never fails to keeps a close eye on the scope of campaigns so that matters are resolved within budget. It is also adept at exploring avenues for alternative dispute resolution. Captaining the IP practice, Yasufumi Shiroyama
is a deft enforcer of rights with a tremendous amount of transactional knowledge. He drafts technology transfer and licensing agreements that will stand up to close scrutiny in the courtroom and reap serious monetary results for clients. Another litigator extraordinaire, Yoshikazu Iwase
chairs the life sciences and chemistry practice; he is a scientific sage who understands the US business mentality, having worked in Virginia. When it comes to prosecution, biotechnology and pharmaceutical companies make a beeline to Makoto Ono
, whose consummate technical nous enables him to expertly dissect the minutiae of inventions.
Aoyama & Partners
Patent filing is the bread and butter of the nimble Aoyama & Partners. Since its establishment in 1965, the firm has processed a prodigious 155,000 applications in Japan and 125,000 abroad for a vast list of clients in all major industries. Its sophisticated docketing system means that portfolios are masterfully managed and all matters are dealt with on time and within budget. Alive to the importance of a personal bond between client and patent attorney, the firm ensures that the same individual handles every issue relating to a particular invention – from filing to grant. Material sciences specialist Mutsumi Samejima in the Osaka office is the first port of call for many businesses.
Asamura Patent Office PC
Asamura celebrated its 125 anniversary in 2016. Throughout its illustrious history, the firm has unsurprisingly forged lasting links with a range of local businesses; but word of its commercially sound, hands-on prosecution service has also travelled far and wide, attracting business from across Asia, not to mention Europe and North America. Indeed, in the last decade Asamura has filed some 12,000 applications with the Japan Patent Office for overseas clients. Loyal patrons include industrial heavyweights such as Chevron and Hexcel. Because all the firm’s practitioners have extensive foreign language skills, assembling a tailor-made team for each and every client is an effortless task. Senior managing partner Ken Kanai is a name for the contact book.
Fukami Patent Office
The “extremely knowledgeable and responsive” Fukami Patent Office has been a favourite among electrical, mechanical and material manufacturing companies for nearly half a century. Its internationally minded patent attorneys frequently participate in European and US training programmes to ensure they remain cognisant of worldwide trends in the field. Combined with a zealous, cosmopolitan attitude, this has enabled the firm to build a practice with a truly global flavour: more than half of its workload involves filing applications before the JPO for foreign companies or safeguarding the rights of Japanese patent owners overseas. Chairman Hisao Fukami is a leading light here.
ITOH International Patent Office displays real dedication to its craft; its professionals will sit down with clients to comprehensively explore potential strategies and learn everything there is to know about their markets, in order to effectively target long-term business goals. Thanks to an exceptional command of the English language, ITOH’s scientifically astute patent attorneys undertake the translation work themselves – rather than having it outsourced – eliminating the risk of mistakes due to a lack of technical expertise. Hallmarks of their service include rigour, punctuality and commercial savvy. Mechanical engineering specialist Tadashige Itoh is a compelling choice for those seeking guidance.
With an impressive number of its members having worked in R&D departments of Japanese manufacturers or as patent examiners, Kyowa Patent & Law Office possesses the technical proficiency to craft watertight applications that will pass muster at the JPO. Placing paramount priority on clients’ confidentiality concerns, it ensures that trade secrets are always kept within the specific team that is handling related matters. A dedicated China department with a nuanced appreciation of procedures before the State Intellectual Property Office has proven to be extremely popular with local companies operating in the country. Managing partner Hiroshi Nagai is a mechanical maestro with a dedicated fan base.
Mori Hamada & Matsumoto
With outposts across China, Singapore, Thailand, Indonesia and Myanmar, Mori Hamada & Matsumoto is superbly positioned to tackle cross-border mandates. Its contentious crew expertly extinguishes patent fires throughout the region, while multifaceted IP contracts are sewn up by transactional specialists who maintain close ties with Mori’s acclaimed M&A department. When clients need support – not only throughout Asia, but also further afield – they call on the versatile Yutaka Miyoshi
, who has experience coordinating fraught disputes in the United States and Europe, as well as tricky arbitrations before the International Chamber of Commerce (ICC).
Nagashima Ohno & Tsunematsu
Nagashima Ohno & Tsunematsu is a potent one-stop shop. “It leverages extensive knowledge of patent prosecution to put together creative and impactful litigation strategies.” The firm’s New York base makes it an obvious choice for US corporates, but its pragmatic and commercially aware counsel has caught the attention of patrons from the far corners of the globe. On the contentious side, Ryoichi Mimura
is a perennial client favourite; he has a sixth sense for what flies in the courtroom thanks to three decades of judicial experience. Masato Tanaka
is another fine choice, having served as a judge of the IP High Court. His analytical acuity and problem-solving abilities have helped countless patent holders to come out on top. Takahiro Yamauchi
expertly converts rigorous factual analysis into cogent and compelling arguments; his corporate sensibilities are highly prized. When smooth negotiation is needed, Shunji Matsuda
and Yoshimi Ohara
step up to the plate. The razor-sharp Matsuda knows how to get signatures on the bottom line of deals; while arbitration ace Ohara serves as vice president of the ICC’s International Court of Arbitration and keeps her finger firmly on the IP pulse.
Nakamura & Partners
Nakamura & Partners’ 61 patent attorneys make every effort to realise clients’ ambitions, before adding even more value. They probe every nook and cranny of the marketplace so that applications are appropriately filed and monetisation opportunities are never passed up. A pristine track record before the JPO and significant M&A experience are big draws for clients. When serious money is at stake, companies would be well advised to knock on the door of Kazuhiko Yoshida
, a transactional whizz who scrutinises contractual fine print with a gimlet eye. He is also incredibly adroit in the contentious arena. In total, the Nakamura patent practice has 19 attorneys at law on staff. Yoshio Kumakura
is a technically sharp litigator who has published widely in both Japanese and English. The worldly-wise Koichi Tsujii
can also bring the thunder, but equally will steer clear of skirmishes in the courtroom when it is in his clients’ best interests.
Nishimura & Asahi
Nishimura & Asahi serves up holistic and cost-effective regional support that resonates with Japanese innovators. A network of 14 offices – four locally, nine throughout Asia and one in Dubai – means it has access to the resources and contacts necessary to expand clients’ portfolios globally and safeguard their inventions in cross-border combat. Moreover, because cooperation between teams in the full-service firm is frictionless, patent practitioners reap the benefits of a tip-top corporate practice. Hitomi Iwase is a resolute and dependable ally here.
Straddling the contentious/non-contentious divide with dexterity, OHNO & PARTNERS is a streamlined boutique that offers complete IP solutions. The firm consistently breaks new ground with cutting-edge applications and ensures that thorny infringement matters are cut off at the roots when they arise. Of late, it has gone out to bat for Shionogi and Debiopharm in noteworthy pharmaceutical contests. With a PhD in electronics and an impressive background as a research engineer, Ken-ichi Katayama
has the technical competency to converse with inventors in their own vernacular. With the ability to think quickly on his feet, Seiji Ohno
counters everything that is thrown his way in the courtroom with eloquent, persuasive arguments, while never losing sight of the bigger picture – he knows it is pointless to win a battle without also winning the war.
With numerous former JPO patent examiners among its ranks and an abundance of industry experience to draw on, Ohtsuka Patent Office is a fabulous prosecution house. An intimate understanding of the application process is a key advantage; over the last five years, the firm has obtained 7,000 patents in Japan and 5,000 overseas in fields ranging from telecommunications to medical devices. Name partner Yasunori Ohtsuka
possesses rare tactical ingenuity and works tirelessly to meet clients’ cost expectations while providing exemplary support.
Okuyama & Sasajima
Home to a squad of native English speakers, attorneys with advanced degrees from US universities and in-house translators, Okuyama & Sasajima is a popular choice among foreign corporates and research institutes; in its specialist field of biotechnology, it represents the University of North Carolina on prosecution matters. No matter how demanding the mandate, Okuyama’s technically astute practitioners will execute it with flair, pragmatism and the utmost timeliness. Firm principal Shoichi Okuyama is a stellar choice for innovators.
Reflecting a notable expansion of its practice and a growing reputation in the market, RYUKA makes its IAM Patent 1000
debut this year. The firm is best known for its electronics and telecommunications work, but has also recently established a dedicated chemistry department. Offering a patent visualisation service, the creative team takes inventors by the hand and escorts them through the entire application process, exchanging and discussing ideas readily along the way; with many members having first-hand R&D experience, even arcane technical concepts can be comprehensively explored. President Aki Ryuka is an excellent contact point for interested parties.
Seiwa Patent & Law
Seiwa Patent & Law runs an accomplished prosecution practice, with approximately 100 patent attorneys on hand to support businesses of all stripes in all technical fields. The internationally focused firm also employs a number of full-time US and European consultants to ensure smooth and unhindered communication with foreign clients, and works hand in hand with search and translation shop Patro Information. Formerly a chief examiner at the JPO, Minako Mizuno
knows all the ingredients that go into an airtight patent application, and how best to get swift and effective results.
Shiga International Patent Office
Versatile and dynamic, Shiga International Patent Office is home to just shy of 130 patent attorneys who offer services in six languages across myriad technical disciplines. One of the most prolific filers in Japan, it recently celebrated its 50-year anniversary. Shiga’s native English speakers ensure that all correspondence is crystal clear, while a streamlined back office keeps procedures on track and clients happy. Its precision prosecution is a particular claim to fame and has earned it the repeat patronage of many universities. Yoshifumi Saeki is the key port of call here.
Shusaku Yamamoto Law Offices
Shusaku Yamamoto’s penetrating advice is ably dispensed across the full spectrum of IP and technological matters, including all ancillary commercial concerns. Proficient in both contentious and non-contentious instructions, the firm also manoeuvres deftly through the regulatory landscape. Its inclusive, polished offering has attracted a long list of all-star clients, including Fortune 500 blue chips, Nobel Prize winners and universities and research institutes. The eponymous Shusaku Yamamoto
is a trusted ally of major patent holders who has tackled numerous landmark prosecution and litigation issues throughout his illustrious career.
Sonderhoff & Einsel Law and Patent Office
With practitioners fluent in German and English, as well as Japanese, Sonderhoff & Einsel strikes a sonorous chord with European patent owners – especially those in the mechanical engineering domain – which are looking to make their mark in the local market. The German outfit effortlessly crosses geographical and cultural barriers and sits proudly among Japan’s oldest foreign firms. In addition to its IP expertise, the group’s acclaimed corporate division provides further firepower to all transactional and licensing negotiation. Managing partner Felix-Reinhard Einsel is the man to see with any queries.
STW & Partners
Formed by an agile division of lawyers from Mori Hamada & Matsumoto, STW & Partners supplies big-law knowledge in a flexible and cost-efficient manner. It opened its doors a decade ago and has gained the patronage of a host of juggernauts from a variety of industries. The discerning set garners particular acclaim for its courtroom acumen. Wataru Sueyoshi
is a seasoned enforcer of IP rights with over three decades of experience. He has also authored a plethora of legal publications – as has colleague Hajime Watanabe
. Qualified to practise in Japan and New York, Watanabe is another shrewd litigator whose silver-tongued arguments resound with judges.
SUGIMURA & Partners
With offices located just a stone’s throw away from the JPO, SUGIMURA & Partners is the preferred choice of rights holders seeking meticulously prepared patent applications. In recent years, developments have pointed to a flourishing practice at the bustling boutique: it has increased its headcount, expanded its physical office space and drawn in a number of new big-name clients. Firm president Kenji Sugimura can be credited with this phenomenal growth. Formerly a leading architect, he has a particular flair for mechanical engineering mandates.
The Tokyo-Marunouchi Law Offices
The Tokyo-Marunouchi Law Offices counts former IP judges and US-qualified attorneys among its talented cadre of practitioners. Its compact size belies its international experience and immense contentious prowess, and it wins many plaudits for its superb courtroom performances on behalf of international heavyweights. Lately, it has been making the rounds in a slew of hotly contested pharmaceutical suits. An ex-judge of the Tokyo High Court IP Division, Yukio Nagasawa
is “a walking encyclopaedia of IP law”. He is “always responsive and provides very thorough strategic insight”.
A recruitment drive in 2016 brought TMI Associates’ total number of patent attorneys to 70; this is on top of its full-bodied crew of IP lawyers, engineers and paralegals. No patent problem is too obscure or difficult for the outfit, while a web of outposts across Asia – plus a branch office in Silicon Valley and several strategic business partnerships with US law firms – means it can address regional and international concerns with composure. As evidence of its outstanding capabilities, it recently secured an important victory for Nihon EVE in a substantial, long-running infringement suit in Japan, while simultaneously coordinating the corresponding cases in the United States. Yoshiyuki Inaba
helms the IP group; utilising 40 years of contentious/non-contentious wisdom, he oversees an array of portfolios, infringement cases and invalidation procedures.
Established over a century ago, YUASA and HARA boasts a sparkling track record in patent prosecution, litigation and transactional work. Intellectual property is the core of the firm’s practice, but it runs first-class corporate and tax departments to boot. Its global reach is emphatic, thanks to close affiliations with both TerraLex and Unilaw, whose far-reaching legal networks bolster its already impressive services for multinationals. Kazuaki Okimoto
has notched up decades of in-house and private practice experience, and takes charge of all things chemical. An esteemed name on the IP scene, Kozo Yabe
has held various eminent positions in the legal community. He currently serves as an adjunct professor at the University of Illinois.