Japan: Foreign

Firms: litigation and transactions

  • Highly recommended
  • Hogan Lovells
  • Morrison & Foerster LLP
  • Orrick, Herrington & Sutcliffe LLP
  • Quinn Emanuel Urquhart & Sullivan LLP
  • Recommended
  • Baker McKenzie
  • Finnegan, Henderson, Farabow, Garrett & Dunner, LLP 
  • Foley & Lardner LLP
  • Jones Day
  • Paul Hastings Foreign Law Joint Enterprise

Baker McKenzie

With an extensive foreign network as one of the firm’s biggest draws, it comes as no surprise that Baker McKenzie’s Japan office is a close partner to massive local patent practices and global players. The team regularly handles licensing activities and joint ventures as well as patent portfolio assignments and is currently providing legal advice on Japanese regulatory requirements to GlaxoSmithKline KK. “A smooth communicator with a good reputation, Kei Matsumoto is prompt to offer excellent strategy planning.” A domestic counterpart reports, “I regularly work with Kei on many IP cases and I am impressed by the quality of his work. He is very diligent and I am sure that any foreign client who works with him is lucky – he has experience handling IP litigation cases and can guide them in realising their goals in Japan.”

Finnegan, Henderson, Farabow, Garrett & Dunner, LLP 

Full-service IP boutique Finnegan needs no further introduction in the IP space. Led by Naoki Yoshida, the Japanese branch is the only one in this chapter with a full suite of patent offerings, from prosecution and litigation to transactions. In particular, it is known for its strength in pharmaceutical-related matters. By dividing his time between Japan and Silicon Valley, Yoshida ensures peace of mind for Japanese companies (eg, Nikon) experiencing patent problems in the United States. Alongside his Atlanta counterpart John D Livingstone, he represents Kaken Pharmaceutical in Hatch-Waxman (abbreviated new drug application) litigation against more than 15 competitors. He also just settled an International Trade Commission (ITC) matter for VAIO and Transcosmos against BiTMICRO.

Foley & Lardner LLP

For its “very convenient services to Japanese companies”, Foley & Lardner LLP is popular among local corporations that require general legal services and solutions to IP problems. Through close collaboration with its US branches, the Japanese team simplifies complicated cases by offering “prompt and reliable advice that can provide deep insight”. Also of note is “its ability to present the perspective of pharmaceutical regulatory experts”. US-Japanese lawyer Etsuo Doi is indispensable to the outfit’s close relationship with domestic pharmaceutical giants. He acts as an essential interface for Japanese companies – “he is excellent at picking up substantial issues that need to be evaluated within a short period of time and coordinating with his US counterparts” and “he is a highly efficient person to connect clients with the right expert in the United States.”

Hogan Lovells

International behemoth Hogan Lovells maintains that top-level technical expertise and easy access to its global network are integral to its patent offering in Japan. By working closely with offices around the world, the local outpost serves both foreign service users with patent issues in Japan and domestic businesses in their foreign matters. Although patent litigation on behalf of patrons in the life sciences and pharmaceutical industries is at the core of the practice, it is developing its patent transactions and licensing work. Further, the team has grown to nine thanks to the addition of two US-qualified bilingual lawyers. With a PhD in medical science, former Oxford University research scientist Frederick Ch’en represents Merck Sharp & Dohme in global patent disputes and Hiroto Imai advises AbbVie on multiple patent litigation matters in Japan alongside him. The pair also successfully finalised a patent licensing agreement for Recordati Industria Chimica E Farmaceutica SPA on the exclusive orphan market rights of Juxtapid (lomitapide) in Japan. The Japanese office is also an avid participant in diversity and inclusion initiatives in a conservative country – it celebrated International Women’s Day last year as well as supporting Pride+ Tokyo in 2018.

Jones Day

From its Japanese centre, Jones Day counsels foreign and domestic clients across industries in various patent matters, ensuring that their IP rights are protected from east to west. Japanese companies in particular enjoy easy access to the service’s broad global network thanks to bilingual lawyers. Experienced in litigating before the ITC and Federal Circuit during his time in Los Angeles, Japanese-speaking US litigator Maxwell Fox now defends Japanese companies in multi-patent suits. After practising in New York, Shogo Asaji continues to represent his patrons in US courts, while also counselling international companies on patent issues in Japan.

Morrison & Foerster LLP

With more than 30 lawyers dedicated to intellectual property, Morrison & Foerster LLP boasts one of the largest IP departments among foreign practices in Japan and the highest number of ranked individuals. Among them are eight partners with patent trial experience, four US patent attorneys, a former USPTO patent examiner and three Japanese patent attorneys. By working closely with their US counterparts, they handle a host of multi-jurisdictional patent matters for massive domestic corporations. A peer contends that “the firm not only has a longstanding reputation in the Japanese market, it is a key player and competitor in the IP disputes space”. Star litigator Max Olson successfully defended Nikon Corporation in US patent disputes initiated by Carl Zeiss and ASML. Often defending multinationals in big-ticket patent disputes, sharpshooter Chie Yakura is a familiar face in courts throughout the country. On the transactions side, Masato Hayakawa offers years of experience advising on the IP aspects of M&A to assist patrons in patent licence negotiations.

Oblon 

One of two outfits ranked in this chapter for its patent prosecution practice, Oblon assists Japanese businesses with US patent problems by working closely with its Virginia headquarters. Central to the firm’s local operations is the co-head of the chemical practice group, Yuki Onoe. “Yuki is very well acquainted with the preparation and prosecution of US patent applications and always gives very effective advice based on her abundant experience. Not only is she able to convey what clients want to say and take their situation into consideration, she creates a very friendly working atmosphere.” Further, “her explanations are easy to understand and her responses are quick – I am satisfied with her legal advice.”

Orrick, Herrington & Sutcliffe LLP

Orrick, Herrington & Sutcliffe LLP stands out as one of the few groups that can provide both domestic and international representation for patrons embroiled in multi-jurisdictional patent disputes and transactions. Through its global platform, it offers access to a broad network of colleagues in the United States and Europe, with US-qualified lawyers and Japanese patent attorneys stationed in Tokyo. Patent litigation partner Shinsuke Yakura makes his debut in this year’s IAM Patent 1000. Besides assisting both Japanese and foreign corporations in concurrent patent litigation cases in Japan and overseas, he regularly advises the Japan Patent Office and the Ministry of Economy, Trade and Industry on law and regulatory reforms.

Paul Hastings Foreign Law Joint Enterprise

Paul Hastings Foreign Law Joint Enterprise excels in resolving high-stakes ITC cases and the Japanese arm can often be found defending its impressive roster of local and foreign corporations against competition in the US market. While clientele includes businesses in a diverse range of industries, the pharmaceutical field is its forte and it has also become increasingly involved in arbitration matters involving intellectual property in Japan. Top patent practitioner Hiroyuki Hagiwara and his right-hand man Kyotaro Ozawa make a formidable duo. They are representing famous companies such as Canon, Align Technology and Xtera in multiple ITC and US district court proceedings involving patent enforcement and licensing.

Quinn Emanuel Urquhart & Sullivan LLP

Renowned in the dispute resolution space, Quinn Emanuel Urquhart & Sullivan LLP is one of the top choices for companies embroiled in multi-jurisdictional patent disputes. The litigation powerhouse offers “ease of access and contact as well as excellent client interface” through its Japanese outpost, which is “committed to results and providing speedy and quality service”. It recently expanded its team with the addition of a patent expert in the pharmaceutical space and an arbitration attorney. Given his “excellent credentials and enthusiastic interest in cooperating with Japanese corporations”, Ryan Goldstein is a trusted ally of domestic heavyweights like Canon, as well as key industry players such as Samsung and Opticon – he is currently involved in representing Qualcomm in their worldwide dispute against Apple in multiple courts. “He always listens carefully to requests and puts in a great amount of effort to identify their underlying needs and obtains favourable results.”

Other recommended experts

Stuart Beraha swapped Morrison & Foerster LLP for Latham & Watkins LLP in May 2019. Through the firm’s extensive global platform, he continues to serve Japanese companies on outbound IP transactions.

Individuals: litigation

  • Ryan S Goldstein - Quinn Emanuel Urquhart & Sullivan LLP
  • Hiroyuki Hagiwara - Paul Hastings Foreign Law Joint Enterprise
  • Max Olson - Morrison & Foerster LLP
  • Shogo Asaji - Jones Day
  • Frederick Ch'en - Hogan Lovells
  • Maxwell A Fox - Jones Day
  • Hiroto Imai - Hogan Lovells
  • Kyotaro Ozawa - Paul Hastings Foreign Law Joint Enterprise
  • Chie Yakura - Morrison & Foerster LLP
  • Shinsuke Yakura - Orrick, Herrington & Sutcliffe LLP
  • Naoki Yoshida - Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

Individuals: prosecution

  • Yuki Onoe - Oblon
  • Naoki Yoshida - Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

Individuals: transactions

  • Stuart S Beraha - Latham & Watkins LLP
  • Frederick Ch'en - Hogan Lovells
  • Etsuo Doi - Foley & Lardner LLP
  • Maxwell A Fox - Jones Day
  • Hiroyuki Hagiwara - Paul Hastings Foreign Law Joint Enterprise
  • Masato Hayakawa - Morrison & Foerster LLP
  • Kei Matsumoto - Baker McKenzie