Akihito ("Aki") Nakamachi

Corporate and Commercial Law　 Establishing a Business Presence in Japan　 M&A　 Venture Capital　 Private Equity　 IP Licensing and Transactions　 Copyright and Entertainment　 Health Care, Pharmaceutical and Life Sciences 　 IT and Telecommunications Law and Regulation　 Distribution Issues/Premiums and Representations Act/Subcontract Act/Unfair Trade Practices Act　 Interplay of Intellectual Property and Competition Law　 Energy and Natural Resources　 Commercial Litigation　 International Litigation and Arbitration　 Alternative Dispute Resolution　 IP Infringement Litigation/Dispute Resolution　 International Trade　 Asia and Emerging Countries　 US　

Mr. Nakamachi is a fully bilingual and bicultural attorney, fully admitted to practice in Japan, New York and California. He has the rare distinction among Japanese lawyers of having served as a partner both in the United States and in Japan, and possesses over 15 years of solid experience as a practicing lawyer. He has special expertise in intellectual property/technology transactions for technology-driven clients, ranging from young start-ups to fully-matured global enterprises. Aki represents clients operating in a wide range of industries, including software, Internet, e-commerce, computer gaming, computer equipment, telecommunications, automobile, semiconductor, pharmaceuticals, biotech and medical devices. With over 10 years of work experience at first-tier national U.S. law firms across the United States, Aki has acquired exceptionally deep and practical knowledge of not only the laws but also the “business culture” of both the United States and Japan, and utilizes his expertise to assist clients in achieving successful outcomes in cross-border commercial transactions and dispute resolution matters.

＜Selected Practice Areas＞

Intellectual Property/Technology Transactions: Mr. Nakamachi delivers practical, business-oriented legal counsel to his clients in a wide range of complex, international and domestic business transactions, such as licensing, joint development, strategic alliances and spin-offs, involving a full scope of intellectual property rights, including patents, copyrights, trademarks and trade secrets.

Corporate Transactions: Mr. Nakamachi offers a wealth of experience in other types of cross-border and domestic corporate transactions, including M&As, joint ventures, private equity and venture capital financing and investments.

IP and Other General Commercial Litigation and Arbitration: Complementing his transactional expertise, Mr. Nakamachi represents clients in international and domestic intellectual property litigation as well as other general corporate and commercial litigation and arbitration.

Antitrust/Competition: Mr. Nakamachi regularly advises on antitrust and competition matters, particularly involving issues that overlap with the exercise of intellectual property rights, and assists his clients in designing structures to achieve consistency with both legal regimes.

・Intellectual Property Law Group
・Corporate Transaction Group
・Litigation Practice Group
・Competition Law Group

Publications:
“Keys to Successful Cross-Border Intellectual Property-Related Transactions” (“The Lawyers,” November 2010)
“Lessons From Strategic Use of NDAs by Advanced Foreign Companies” (“Business Law Journal” June 2010)
“Practical Checklist for Dealing with Warning Letters -- When You Are Sending One or Receiving One” (“The Lawyers,” December 2007) “Latest Developments in Intellectual Property Law, Litigation and Licensing Practice in China”(AM&T: International IP Seminar (Tokyo), May 2010)
“Role of Start-ups in Innovation - Why Japan can not become a Silicon Valley”(Anchor Business Systems: ABS 9th Venture Workshop (Tokyo),March 2010)
“Role of Start-ups in Innovation～Comparative Analysis Between Silicon Valley and Japan～”(Licensing Executive Society(LES), Japan Chapter: Monthly Seminar (Tokyo),March 2010)
“Dealing with Challenging IP Issues in M&As and Restructurings -- How to Conduct IP Due Diligence Effectively and How to Align IP Strategy with Business Strategy”(In-House Congress Tokyo 2009 (Tokyo), December 2009)
“Handling Intellectual Property issues for Mergers & Acquisitions and Spinning Off ”(LES Japan seminar(Tokyo),October 23-24, 2009)
“Drafting Licenses and Product Development Agreements in Light of the Surge in Mergers & Acquisitions” & “In-License Compliance” (joint presentation) (Japan Pharmaceutical Licensing Association（JPLA）: Monthly Seminar (Tokyo), January 2009)
“Keys to Success for International Technology Transfer by Japanese Universities” (Hokkaido University: International University Technology Transfer Seminar (Sapporo), December 2008)
“Recent U.S. Case Law Affecting International Patent License Practice” (Licensing Executive Society (LES), Japan Chapter: Monthly Seminar (Tokyo, Osaka), May 2008)
“Incorporating International Business Strategies into Collaboration Agreements ~ Japan-Related Issues & Considerations” (American Conference Institute (ACI): “Advanced Forum on Structuring, Negotiating and Managing Pharma/Biotech Collaboration Agreements” Conference (San Francisco, California), April 2008)
“Recent Major Developments and Trends in Intellectual Property Law and Corporate Law in Japan (U.C. Hastings College of the Law: Guest lecturer at Prof. Setsuo Miyazawa’s Japanese law seminar (San Francisco, California), March 2008)
“Outside Counsel’s Perspective on Current Difference Between U.S. & Japanese University Technology Transfer Practice and Future Trends”（Hokkaido University: International Technology Transfer Seminar (Sapporo), February 2008)
“Global IP Strategy to Win in U.S. and Global Market ~ In Trend Toward ‘Open Innovation’: Typical Issues Suffered by Japanese Corporations and Potential Solutions” (Osaka Chamber of Commerce: Monthly Seminar (Osaka), February 2008)
“Patent Reform Update 2007” & “In re Seagate Technology, LLC” (Shobayashi International Patent Offices:  International IP Practice Seminar (Tokyo), October 2007)
“U.S. IP Law Update: State of Patent Reform Discussion and Recent Trends in IP Case Law” (Osaka Bar Association (Osaka), October 2007)
“Current Intellectual Property Issues in Global Biotech Business” (Mitsubishi Corporation & Burrill & Co.: Japan Biotech Meeting (JBM) (Tokyo), September 2007)
“Role of Start-ups in Innovation ~ Comparative Analysis Between Silicon Valley and Japan: In Search for ‘Japan’s Own Model and Strategy’ for Innovation, IP and Alliances That Can Compete in Global Market” (Global Brain Venture Capital: Alliance Forum (Tokyo), June 2007)
“Outside Counsel’s Perspective on Current Difference Between U.S. & Japanese University Technology Transfer Practice and Future Trends” (Tohoku University: International Future Innovation Forum (San Mateo, California), April 2007)
“Global IP Strategy to Win in U.S. and Global Market: Typical Issues Suffered by Japanese Corporations and Potential Solutions” (Silicon Valley Multimedia Forum: Monthly Seminar (San Jose, California), December 2006)
“Negotiating Collaborative Agreements in the European Union and Japan” (joint presentation) (American Conference Institute: “Advanced Forum on Structuring, Negotiating and Managing Pharma/Biotech Collaboration Agreements” Conference (New York City, New York), November 2006)
“IP Trends in United States: Current State of IP Case Law, Patent Reform and Patent Valuation” (Intellectual Property Association of Japan: Annual Meeting (Tokyo), June 2006)
“Global IP Strategy to Win in U.S. and Global Market: Typical Issues Suffered by Japanese Corporations and Potential Solutions” (Japan Intellectual Property Association, June 2006)
“Recent U.S. Patent Case Decisions & Trends Japanese Companies Should Be Aware Of” (Licensing Executive Society (LES), Japan Chapter: Monthly Seminar (Tokyo, Osaka), June 2006)
“Global IP Strategy to Win in U.S. and Global Market: Typical Issues Suffered by Japanese Corporations and Potential Solutions” (Japan Business Association (JBA): Monthly Business Seminar (Los Angeles, California), October 2005)
“Current Status and Future Challenges of Start-up Activities, Business Environment and Networking by/for Japanese Entrepreneurs and Professionals in Silicon Valley” (Silicon Valley Multimedia Forum (Palo Alto, California), August 2003)
“Current Venture Capital Market in Silicon Valley” (Stanford University: Asian Student Entrepreneurship Summit (ASES) 2003 (Palo Alto, California), April 2003)
“Valuing an Early Stage Technology Company  ~ From Venture Capital Perspective~” （Win-Win Workshop (Tokyo), March 2003）
“How Do Silicon Valley Law Firms Help Entrepreneurs Start Up New Businesses? ~ How Do Silicon Valley Law Firms Support High-Tech Start-ups” (Japan Institute of Invention and Innovation (in association with Ministry of Economy, Trade and Industry and Japan Patent Office): Conference for Professionals Promoting and Supporting Creation of University-Spin-off Start-ups (Tokyo), March 2003)
“Current Status and Future Challenges and Prospects of Venture Capital and Financing in Silicon Valley” (Research Institute for Economy, Trade and Industry (RIETI): BBL Seminar (Tokyo), July 2002)
“Venture Financing in Silicon Valley and United States” (Softbank Frontier Securities: Venture Financing Seminar (Tokyo), July 2002)
“Why Do Japanese Entrepreneurs Need a SV Lawyer Who Knows How Business Works in Silicon Valley? ~ “If They Want to ‘SUCCEED’” (Keizai Society: Monthly Seminar (Palo Alto, California), October 2001)

Kyoto University (LL.B., A.B., 1991); The Legal Training and Research Institute of the Supreme Court of Japan, 1991-1993; graduate study, New York University School of Law (LL.M., 1997). Associated with Mori Hamada & Matsumoto Law Offices (formerly Mori Sogo Law Offices), Tokyo, Japan, 1993-1996. Associated with Morrison & Foerster LLP, 1997-1998. Associated with Kirkland & Ellis LLP (Chicago office), 1998-1999. Associated with Wilson Sonsini Goodrich & Rosati P.C., 1999-2003. Associated with Kirkland & Ellis LLP (San Francisco, Palo Alto and Los Angeles offices), 2003-2009, where he was a partner since January 2005.

・Japan (1993)
・California (1998)
・New York (1998)

・Tokyo Bar Association
・Intellectual Property Law Section of the American Bar Association
・Japan Federation of Bar Associations

・Japanese (first language)
・English