Oh-Ebashi LPC & Partners

IAM Research

The Patent 1000 focuses exclusively on patent practice and has firmly established itself as the definitive 'go-to' resource for those seeking world-class legal patent expertise.

Recommended - Firms: transactions

Bronze - Firms: litigation

For its second appearance in the IAM Patent 1000, Oh-Ebashi LPC & Partners remains preoccupied with pharma-related patent disputes on behalf of a largely domestic clientele. Supported by 28 IP lawyers stationed in the Osaka headquarters and Tokyo outpost, IP captain Takamitsu Shigetomi and his right-hand man Toshiya Furusho make a formidable duo. Having successfully obtained a favourable decision from the IP High Court for B Braun against CR Bard, Inc, they continue to represent Genentech in a pioneer case regarding patent infringement litigation that involves biosimilar products. Their patent disputes practice is not limited to Japan either – they advised Ono Pharmaceutical against the Dana-Farber Cancer Institute on US proceedings. Shigetomi is a member of the AIPPI standing committee on standards and patents, while Furusho is a new face in the Japan: domestic chapter who currently leads as vice chairman of Osaka Bar Association’s IP committee.

Firm Profile

Oh-Ebashi LPC & Partners is a full-service law firm with over 150 attorneys. It was originally established in Osaka in 1981 and now has an equivalent-sized operation in Tokyo. Oh-Ebashi was the first Japanese law firm to open an office in China. With its Nagoya office, Oh-Ebashi currently has offices in four locations. Oh-Ebashi has been providing its clients with the best legal advice and solutions for decades and is committed to consistently exceed its clients’ expectations and be their ideal legal partner.

IP practice group

Oh-Ebashi strategically supports its clients, from planning/executing contracts to filing or defending against lawsuits. It also assists in drafting and negotiating contracts relating to licensing of copyright, trademarks, patents, know-how and other IP rights. Oh-Ebashi has extensive experience in handling many types of transaction, both internationally and domestically, in various fields of business. Our highly specialized lawyers are able to provide quality legal services and competently assist clients in achieving their objectives.

IP transactions

Oh-Ebashi has extensive experience in various fields of business, including chemistry, pharmacy, biotechnology, electrical machinery and other machinery, IT, sports and entertainment. In addition, Oh-Ebashi has substantial experience in handling IP transactions such as M&A and finance projects, in disputes involving antitrust laws or the Companies Act, or in tax matters.

Unfair competition

The Unfair Competition Prevention Act aims to protect credibility, trade secrets and other such commercial assets by regulating acts of unfair competition and should be complied with regardless of industry or business type. Oh-Ebashi has handled a large number of counselling activities, negotiations and lawsuits where unfair competition was an issue and has a track record of handling noteworthy cases. In addition, Oh-Ebashi is engaged not only in disputes concerning unfair competition, but also in providing advice on internal information management to properly protect trade secrets.

Licence and franchise

Licence agreements cover various matters, including patents, utility models, design rights, trademarks, copyright, publicity rights and know-how. In franchisee agreements, various elements are organically integrated such as the purchase of goods or materials, licensing of trademarks and know-how, and managing consultations provided by the franchisor. These matters relate to the Civil Code, the Commercial Code, the Trademark Act, the Unfair Competition Prevention Act, the Anti-trust Act and the Act on Specified Commercial Transactions.

We have advised well-known franchisors in many projects and have extensive experience in drafting and reviewing legal documents on franchise and supply agreements, and in providing advice on the franchising business. Oh-Ebashi also has expertise in dispute resolution relating to franchise agreements, including disputes on the management consultations provided by the franchisor to the franchisee, and the termination of franchise agreements.

We have achieved considerable success advising on licence agreements in M&A transactions and in other corporate transactions. These licence agreements cover domestic as well as cross-border matters. Oh-Ebashi is capable of providing legal support to its clients in the execution of contracts or resolution of disputes, according to their needs, both domestically and abroad, through our extensive network of law firms all over the world.

IP dispute resolution

For domestic IP disputes, various types of proceedings, such as infringement lawsuits, trials before the Japan Patent Office, litigation rescinding trial decisions and injunctions on importations at customs, may occur. In addition to our accomplishments in infringement lawsuits, we have also achieved considerable success in handling disputes on inventions developed by employees, disputes over who the inventor is and litigation relating to extensions in the duration of the registration of pharmaceutical products, litigation or arbitration arising from licence agreements, and litigation under unfair competition prevention laws.

For international IP disputes, we provide comprehensive legal support to companies involved in various cases, such as patent lawsuits that are simultaneously filed overseas (including in the United States and Europe), as well as IP enforcement actions (litigation/administrative enforcement) and trademark invalidation litigation in Asia. In handling cross-border disputes over intellectual property, which occur in the global business developments of companies, we assist in resolving such disputes effectively and strategically, making use of our strong network of law firms all over the world.

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