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Practice Areas

INTELLECTUAL PROPERTY

We handle a wide variety of matters regarding intellectual properties (IP) including patents, utility model rights, design rights, trademarks, copyrights, trade secrets, or know-how. As advanced expertise is required in the field of IP, we have internally formed an IP Law Study Group consisting of our attorneys who are conversant with IP, including those who have been seconded to and worked at the Japan Patent Office. The Study Group studies the latest court precedents and shares knowledge gained through the process of handling actual cases we have been involved in. In addition, we actively hold seminars to provide the latest IP-related information and topics. Our specific activities include the following:

IP-Related Disputes

We have extensive experience in IP-related disputes including preparation of a warning letter against IP infringers, negotiation, infringement litigation, filing for a provisional disposition, filing of an objection, trials for invalidation and litigation seeking revocation of a trial decision. We have also provided a number of expert opinions with respect to the presence or absence of IP infringement. We also deal with IP disputes and measures against counterfeit products (including an import or export suspension at Customs) in the U.S. and Europe as well as in other countries and regions including China, the Republic of Korea and Southeast Asia. We keep close contact and work with attorneys and patent attorneys in those countries and regions so as for us to offer a prompt and appropriate services to our clients.

IP Transaction

We regularly provide legal services related to IP transactions for our clients including negotiation with counter parties of our clients and drafting various IP-related agreements such as licensing agreements, joint research and development agreements, joint application agreements and non-disclosure agreements. Also, we provide strategic advice from diversified perspectives based on our abundant experience on the matters that require legal analyses of IP in the scenes of M&A or financial investment, the matters that require expertise of tax or antitrust laws for IP transactions, and the IP-related matters in academia-industry cooperation and university-oriented start-ups.

IP Management

Following a series of the recent court cases of trade secret leakage reported in Japan, it is now generally recognized as crucially important for companies to carefully review its trade secret management system. To ensure the achievements generated from R&D activities and to encourage inventions through employee incentive programs, a company must develop its appropriate rules for inventions by employees so that it will improve the company’s technical competitive edge. In this respect, we proactively provide our clients with advice and assistance in establishing and developing their internal IP rules. We also provide advice on strategic use of IP, considering the client’s business field and size so as to maximize their IP benefits.

Unfair Competition Prevention Act

The Unfair Competition Prevention Act restricts various kinds of conducts that may prevent fair competition among business operators, regulating acts which can create or constitute, among others, i) confusion with other persons’ well-known indications; ii) abuse of other persons’ famous indications; iii) sale of imitation goods; iv) trade secret infringement; v) illegal acquisition of domain names, and vi) other acts injurious to other persons’ business reputation. We provide legal advice with respect to a number of infringement cases caused by such unfair competition acts, and have a strong track record in achieving success in legal proceedings seeking injunctive relief or damages in this regard.