TMI Associates

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.

Highly-recommended - Firms: transactions

Gold - Firms: prosecution

Gold - Firms: litigation

For top-notch patent services in prosecution, litigation and transactions at “competitive charges”, clients need look no further than TMI Associates. One of the Big Five law firms in town, it is the only entry in the Japan: domestic chapter to sweep up the top spots in all the tables for its comprehensive patent offering enjoyed by multinational corporations around the world. Satisfied clients cannot help but gush: “TMI has always shown the utmost dedication and professionalism. Their speed and quality of service is excellent too. I highly recommend them.” “Attentive, competent and pleasant to work with, TMI is one of our favourite teams for SEP cases in the telecom field.” The firm just opened its sixth office in Fukuoka to accommodate its arsenal of 200 patent professionals, including 65 patent attorneys and 80 IP lawyers, who file 2,500 patent applications and over 20 IP lawsuits a year. Managing partner Yoshiyuki Inaba is an old hand at all things intellectual property, with “unique insight of Japanese patent law through more than 45 years of experience. It is great to cooperate with him.” Familiar faces in Japanese courts, Hiroshi Nemoto and Makoto Okada are occupied with resolving IP disputes for foreign and domestic entities. Where New York-qualified Nemoto shines for his high-profile cases, Okada successfully defended Digi-Key Corporation and RayVio Corporation in a cross-border patent infringement dispute against Nitride Semiconductors. “Makoto may not have an engineering degree but he understands the gist of technology well enough, and with the support of an excellent team, he has represented us to our satisfaction.” On the licensing front, Toyotaka Abe wins plaudits: he is “prompt and very well versed in local patent laws”. Japanese patent attorney Yukio Oishi is singled out as “another notable partner”.

Firm Profile

TMI Associates has 85 patent and trademark attorneys (benrishi) in addition to 493 attorneys at law (bengoshi). These professionals – together with over 90 paralegals and other support 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 in 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.

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

IP team

  • 85 patent and trademark attorneys (benrishi), 45 electronical and mechanical attorneys, 19 chemical, biotechnology and pharmaceutical attorneys and 21 trademark and design attorneys; and
  • 80 IP lawyers (bengoshi).

Out of the ‘Big Five’ law firms in Japan, TMI has currently the largest benrishi group by far, which supports the reputation of 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 files approximately 2,500 patent, 2,600 trademark and 400 design applications each year, as well as over 20 IP lawsuits.

Prosecution

Among the firm’s 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 and software, telecommunications, semiconductors, chemicals, biotechnology, pharmaceuticals and mechanics. Key features of the prosecution practice include:

  • prosecutions handled by patent attorneys with years of experience in drafting patent applications;
  • prosecution strategies provided from a business and corporate perspective;
  • high-quality translations provided by staff members with relevant 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 and 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 and 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.

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