Intellectual Property

We have extensive and broad achievements and experience in intellectual property (IP). We provide our clients with professional and comprehensive advice and counsel services that suit their respective circumstances and objectives in relation to international and domestic disputes (i.e., litigations, arbitrations, trials, etc.), various transactions, patent and trademark applications, and other matters. As globalization of corporate activities progresses, and the planning and implementation of IP strategies that make the most of each company’s strengths is required both domestically and internationally, we support the preparation and execution of global IP strategies, utilizing our long-standing close cooperative relationships with top firms in each country.

IP Dispute (litigation, arbitration, customs action)

IP Litigation We have substantial experience in representing both proprietors (plaintiffs) and alleged infringers (defendants) in litigation and preliminary injunction proceedings preceding or concurrent to that, for infringement of patent, trademark, and design rights, copyrights, know-how, and other IP rights brought before the Tokyo and Osaka District Courts and other courts. We handle these matters using cross-functional teams consisting of litigation attorneys (bengoshi), patent attorneys (benrishi), and other specialists inside and outside AMT in accordance with the relevant technical fields. Advisory Opinions (hantei) and Trials (shimpan) before the Japan Patent Office We have significant experience in representing both claimants and respondents in advisory opinion proceedings (hantei) as well as in trials (shimpan) before the Japan Patent Office. Our experience includes representing clients in ex parte and inter parte proceedings before the Intellectual Property High Court of Japan seeking the revocation of trial decisions rendered by the Japan Patent Office. During these procedures, it is important to keep in mind the relationship with patent infringement litigations that take place in court. Customs Actions We have considerable experience in representing claimants and alleged infringers (respondents and/or importers) in customs actions and border detentions where an injunction has been sought from the Japan Customs Office to halt the importation of products that allegedly infringe on IP rights. Unfair Competition Litigation We have vast experience in representing both proprietors (plaintiffs) and alleged infringers (defendants) in unfair competition litigation brought before the Tokyo and Osaka District Courts and other courts, as well as negotiations that precede such litigation. Inventor Remuneration Litigation and IP Ownership Litigation We have extensive experience in representing employers in inventor remuneration litigation along with the negotiations that precede said litigation. Furthermore, we have significant experience litigating IP ownership disputes as well as the negotiations that precede such litigation. License Agreement, Joint Development, and Content Utilization Litigation/Dispute Resolution We have substantial experience in representing clients in litigation and arbitration regarding license agreements, joint development, and content utilization. In developing an appropriate resolution for these disputes, we take into consideration not only the underlying contractual issue and procedural law but also analyze antitrust and other relevant laws. IP Infringement and/or Validity Opinions We have a wide range of experience in rendering opinions regarding infringement and/or validity of IP rights, including patents. Our opinions are provided to ensure so called “Freedom of Operation,” and prepare for anticipated litigation and license negotiations. Moreover, we regularly assist our clients in seeking similar opinions on foreign patents from attorneys in other jurisdictions.

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IP Transaction, M&A (License, IP Due Diligence)

We have decades of experience in advising our Japanese and international clients on the drafting and negotiation of license and other transaction agreements for patents, trademarks, designs, copyrights, and other IP. Recently, as the number of mergers and acquisitions where the core assets involve IP have increased, our IP law group, in collaboration with our corporate transaction group, has strengthened its ability to conduct IP due diligence investigations and to draft and negotiate M&A agreements, in order to ensure smooth progress of transactions.

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Tradesecret/Know-how

We have notable experience in dispute resolution, the drafting of transaction agreements, and negotiations in relation to trade secrets and know-how. In recent years, the importance of companies’ technical information and data has increased due to advances in technology. At the same time, as companies accelerate their overseas expansion, cases of trade secrets and know-how being leaked have also occurred, and it has become essential to properly manage technical information and data. We provide effective support to ensure the superiority of companies by providing advice on the effective protection and utilization of trade secrets and know-how through collaboration between specialists with extensive experience and industry knowledge.

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Patent Prosecution

Anderson Mori & Tomotsune's patent prosecution team has extensive experience with the filing and prosecution of patent applications with the Japan Patent Office, covering a wide variety of technologies including biotechnology, chemical technology, electric engineering, telecommunications technology, software, machine technology, and artificial intelligence. We also regularly assist our Japanese clients with respect to international patent prosecution. In addition, we have a broad range of experience with transfers and other IP registrations. As a further added value, our patent attorneys and lawyers often collaborate in teams in patent infringement suits, trials before the Japan Patent Office, and related research and opinion work, thus contributing to more sophisticated and prompt handling of cases.

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Trademark/Design Prosecution

Anderson Mori & Tomotsune's trademark prosecution team has decades of solid experience representing our international and Japanese clients in the filing and prosecution of trademark and design applications before the Japan Patent Office, including follow-through on clearance, filing oppositions and providing post-filing maintenance, monitoring and enforcement assistance. In addition, through our extensive international network of local firms, we regularly assist Japanese clients in registering their trademarks and designs in foreign jurisdictions and we have considerable experience handling applications filed pursuant to the Madrid Protocol. We add further value through our trademark attorneys working in collaboration with lawyers in trademark infringement suits, trials before the Japan Patent Office and related research and opinion work, thus contributing to more sophisticated and prompt handling of cases.

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Copyright and Entertainment

Anderson Mori & Tomotsune provides clients in the music, film and video game industries with comprehensive legal services in the copyright and entertainment areas, including legal advice regarding the use and development of contents, drafting and negotiations of standard and bespoke entertainment contracts, and representation of clients in dispute resolution.

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Health Care, Pharmaceutical and Life Science

Anderson Mori & Tomotsune has a long history of advising international and Japanese health care and life sciences clients on IP acquisition and utilization. We also provide advice in other substantive legal areas, including pharmaceutical regulations (e.g., the Pharmaceutical and Medical Device Act and the Chemical Substances Act). We also conduct due diligence investigations both as part of stand-alone health care and life sciences transactions and as part of larger M&A transactions. Our health care and life sciences attorneys are engaged in proactively assisting clients in the drafting and negotiation of contracts, taking into consideration the uniqueness of the health care and life sciences industries and the nuances of Japanese practice.

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INSIGHTS

PROFESSIONALS

Yasufumi Shiroyama
YasufumiShiroyama
Tokyo
Partner
Tokyo

Partner

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Yasufumi Shiroyama is a partner who heads all aspects of the firm's intellectual property group practice, including: ・Drafting and arguing complaints, motions, answers and other pleadings for patent, trademark, copyright and know-how infringement litigation in district and appellate courts in Japan, on behalf of both Japanese and foreign companies; ・Drafting and arguing complaints, motions, answers and other pleadings for litigation arising in relation to technology transfer agreements, compensation for employee's invention, and allegedly defective products, etc. in district and appellate courts in Japan, on behalf of both Japanese and foreign companies; ・Drafting and negotiating various technology transfer agreements on behalf of both Japanese and foreign companies; ・Managing written discovery in cooperation with U.S. counsel for a Japanese client in patent license related litigation in U.S. federal court; ・Managing appellate litigation matters seeking nullification of decisions of the Japanese Patent Office; ・Drafting and arguing complaints, motions, answers and other pleadings in invalidation trial and opposition procedures before the Japanese Patent Office; and ・Advising on regulatory matters for pharmaceutical products, medical devices, chemical products, and personal data etc.
Yoshikazu Iwase
YoshikazuIwase
Tokyo
Partner
Tokyo

Partner

Contact
Yoshikazu Iwase joined Anderson Mori & Tomotsune after working with an intellectual property firm in Tokyo for three years. His litigation experience involves a number of patent infringement trials and revocation suits against the trial decisions of the Japanese Patent Office concerning patentability/validity of patents over various technologies. He has also been involved with a wide range of trademark/trade dress and copyright infringement suits, licensing and IP assets transfer transactions, and dispute resolution. Mr. Iwase has provided a wide range of advice regarding U.S. patent infringement issues in Japan. His experience also includes drafting and negotiating licensing, patent and various intellectual property transfer agreements, transactions and due diligence of intellectual property in the course of M&A deals.
Miki Goto
MikiGoto
Tokyo
Osaka
Partner
Tokyo
/
Osaka

Partner

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Mr. Goto has an exceptional background as a Japanese lawyer with an academic background in both science and engineering, and professional experience working in the intellectual property department of a major electronics company. Mr. Goto’s practice covers a wide range of complex intellectual property and technology/data related matters, including disputes concerning patents, licensing, trade secrets, trademark and technology related antitrust claims, as well as various data privacy/protection issues. He also has broad experience in various regulatory matters as well as product liability issues involving chemical substances, pharmaceutical products and other industrial products. Mr. Goto is recommended for: ・Intellectual Property (Japan) - Chambers Global (2019-2026) ・TMT (Technology, Media, Telecom) - The Legal 500 Asia Pacific (2021-2026) ・Intellectual Property (Japan) - Asialaw Profiles (2021-2026) Since 2017, Mr. Goto has been serving as the vice chair of Standing Committee on Trade Secret of AIPPI. In addition to being admitted to the bar in Japan (2008) and the state of New York (2014), he passed the Japanese Patent Attorney Examination in 2003.
Masayuki Yamanouchi
MasayukiYamanouchi
Tokyo
Partner
Tokyo

Partner

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Masayuki holds a master's degree in science, and has been engaged in a number of patent infringement lawsuits and other IP related matters since he became a lawyer. His main focus is on the pharmaceutical industry, in patent infringement actions as well as licensing negotiations, joint development projects, and technology transfer projects. He also has expertise and experience in other forms of intellectual property, including trademarks, copyrights, and trade secrets. In addition, with his experience in the U.S. (both in law school and at a law firm focusing on patent matters), he also provides advice to clients involved in patent lawsuits in the U.S.
Yuta Oishi
YutaOishi
Tokyo
Partner
Tokyo

Partner

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Yuta Oishi has engaged in a wide range of IP related matters, including patent, copyright, and trademark infringement lawsuits, licensing negotiations, as well as technology related projects. Moreover, He specializes in data related business and has provided an extensive variety of advice regarding data protection, cyber security, and trade secrets. In addition, he possesses a vast array of experience in assisting with transactional, regulatory, and other legal matters in fields that pertain to and expand across the pharmaceutical, healthcare (including digital healthcare), IT, and entertainment industries.
Ryo Murakami
RyoMurakami
Tokyo
Partner
Tokyo

Partner

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Akihito Ishii
AkihitoIshii
Tokyo
Special Counsel
Tokyo

Special Counsel

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Tomokazu Takahashi
TomokazuTakahashi
Tokyo
Patent Attorney (benrishi)
Tokyo

Patent Attorney (benrishi)

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Tomokazu Takahashi is an experienced trademark attorney, regularly represents both local and international clients for a wide range of trademark proceedings. His practice covers trademark prosecution; clearance searches; opposition, cancellation and invalidation proceedings; enforcement; design prosecution; and IP licensing and assignment.
Takahiro Aoki
TakahiroAoki
Tokyo
Osaka
Patent Attorney (benrishi)
Tokyo
/
Osaka

Patent Attorney (benrishi)

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Mr. Aoki is a registered and qualified patent attorney (benrishi) at Anderson Mori & Tomotsune. He has been involved with various intellectual property matters centering around patent issues and he is well versed in intellectual property strategies, patent filing, providing support for start-ups and intellectual property due diligence.
Takaaki Yamazaki
TakaakiYamazaki
Tokyo
Patent Attorney (benrishi)
Tokyo

Patent Attorney (benrishi)

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