Intellectual Property/Life Sciences/TMT

IP Disputes

IP Litigation

Anderson Mori & Tomotsune has substantial experience in representing both proprietors (plaintiffs) and alleged infringers (defendants) in litigation for infringement of patent, trademark and design rights, copyrights, know-how and other intellectual property rights brought before the Tokyo and Osaka District Courts and other courts.  In addition to our successful trial practice, we have achieved significant success in arbitration and other dispute resolution venues.  Our experience includes obtaining preliminary injunctions and other similar remedies.  The lawyers on our patent litigation team have in-depth understanding not only of the relevant patent laws, but also the science and technology underlying patent disputes, which aids significantly in the development of winning litigation strategies for our clients.  We handle these matters using cross-functional teams consisting of AMT's litigation attorneys (bengoshi) and patent attorneys (benrishi).

 

Advisory Opinions (Hantei) and Japan Patent Office Trials (Shimpan)

AMT has significant experience in providing advisory opinions (Hantei) as well as representing both claimants and respondents in trials before the Japan Patent Office (Shimpan) in situations where the validity of a patent is in dispute.  Our experience includes representing clients in ex parte and inter parte proceedings before the Intellectual Property High Court of Japan seeking the revocation of Japan Patent Office trial decisions.  Shimpan are administrative proceedings through which the Japan Patent Office considers and rules on the validity of a patent.   Such proceedings are often initiated during or in anticipation of patent litigation.  We have handled many matters involving Shimpan proceedings and concurrent patent infringement litigation.  One of the keys to our success in this area has been the close cooperation and strategic coordination between our IP practice team handling the Shimpan proceedings and the litigation practice teams within our Firm.

 

Customs Actions

Our Firm has 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.  In view of the acute time pressures involved in complying with Customs Office procedures, we typically assemble a team of specialist attorneys who can resolve the problem in a timely and cost efficient manner.

 

Unfair Competition Litigation

Our Firm has wide experience in representing both plaintiffs and defendants in unfair competition litigation brought in the Tokyo and Osaka District Courts and other courts.  Although we are aggressive litigators, we also counsel clients on how best to mitigate the cost and extent of litigation and, depending on the facts and circumstances, to consider other remedies, including injunctive relief, licensing arrangements and other strategies.  Unfair competition cases are often tied to alleged trademark infringement or product quality misrepresentation actions.  One of the keys to our success in this area has been the close collaboration between the teams handling unfair competition cases and the other lawyers in our Firm handling related actions either at trial or in proceedings before the Japan Consumer Affairs Agency.  By sharing resources and expertise, our multi-departmental teams are able to achieve optimal results for our clients in domestic and international unfair competition matters.

 

Inventor Remuneration Suits and IP Ownership Litigation

AMT has extensive experience with inventor remuneration litigation as well as negotiations and procedures that precede such litigation.  In this type of litigation, we primarily represent employers.  Due in part to the numerous cross-border factors (e.g., multiple and geographically diverse revenue streams underlying a disputed patent) that must be taken into consideration in determining such remuneration, our attorneys working in this area have developed a deep understanding of international licensing practices and patent systems.  We also have significant experience litigating IP ownership disputes, including claims made by former joint-development partners or former employees.

 

License Agreement Litigation/Dispute Resolution

AMT represents clients in licensing disputes, applying, as appropriate, the full range of the dispute resolution framework, such as litigation and arbitration, to resolve such disputes.  We have appropriately resolved these matters through our analyses and expertise not only of the underlying contractual issues and procedural law but also of patent infringement, patent validity, and antitrust laws.

 

Joint Development and Content Utilization Litigation/Dispute Resolution

Our Firm represents clients in joint development and content utilization disputes.  In developing an appropriate resolution for joint development and content utilization 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

AMT has considerable experience rendering opinions regarding IP infringement and/or IP validity in connection with so called "Freedom of Operation" diligence investigations, anticipated litigation, or license agreement negotiations.  We also regularly assist our Japanese clients in seeking similar opinions from attorneys in other jurisdictions.

Intellectual Property/Life Sciences/TMT