We provide a variety of intellectual property-related services, which is traditional practice for intellectual property lawyers. Our firm specializes in dispute resolution in the field of intellectual property law, particularly in intellectual property litigation.

IP litigation requires the ability to practice in the specialist area of intellectual property law. In other words, IP litigation requires attorneys to be familiar with IP litigation compared to general civil litigation.

The Tokyo District Court provides highly specialized IP litigation in four IP Divisions. Divisions 29, 40, 46, and 47, hear cases, along with the appellate courts of IP litigation whilst only four divisions of the Intellectual Property High Court hear cases regarding the rescission of trial decisions.

In recent years, cases handled by our attorneys continue to be pending in all eight of these divisions. This exemplifies our extensive experience in IP litigation. As you can see, we have a system in place that allows presiding judges to take the lead in almost all IP litigation.

Additionally, presiding judges take the lead in almost all the district court cases. However, because we have experience in all IP divisions, we have been able to keep up to date with the latest trends in the litigation process of trial judges and are able to provide dedicated and responsive services to satisfy our clients’ needs.

We have jointly handled patent-related disputes with patent attorneys who are specialists in various technical fields.
Many judges who hear patent-related lawsuits do not have technical backgrounds, so it is important for them to have access to a wealth of scientific knowledge to be able to deal with disputes. We thoroughly interview company engineers and patent attorneys in charge until we can condense the specific technicalities of a case into a persuasive legal argument. We then make every effort to communicate the technical content and details to judges.

In addition, judges will interpret constituent elements with a legal and factual mindset, rather than from an engineer’s perspective and judge inventive steps. The more knowledgeable you are about technology, the more likely you are to talk about its significance as a raw fact, but it is the courts that make the decisions. In order to advance a case to its advantage in any way possible, the use of legal thinking to determine and assert facts in the right places is essential.

We have the advantage of being able to handle a high number of patent lawsuits. The question is how to organize the technical claims in terms of legal and factual requirements and convey them to the court in an easy to understand manner. We are constantly improving our methods in order to do this.

We also provide a wide range of services in relation to patent licensing, joint research, and development agreements. In addition to the above, we have brought in Shinji Hirata, a lawyer who is a former Japan Patent Office examiner, and are working to improve the quality of our services in the field of technology, such as prior art searches.

Trademark law-related litigation might be misunderstood as being easier for attorneys who do not specialize in intellectual property than patent law, where technology is at issue. However, when you look at actual trials – such as the identification of a defendant’s mark – it is not uncommon for an opposing party’s attorney to stumble on the basics from the perspective of IP lawyers.

However, judges in the IP Division naturally assume that their attorneys are experts in the field of IP, and they tend to observe more strictly the litigation activities of attorneys than judges in other Civil Divisions. If they do not follow the judge’s direction and delay the case, significant reputational damage could result and this could have an impact on your case.

We have been involved in a number of trademark law cases, and we have a thorough understanding of the progress of litigation, which allows for smooth proceedings.
In addition, we have handled trademark infringement lawsuits, trial revocation litigation at the Intellectual Property High Court, invalidation trials at the Japan Patent Office, and trials for cancellation of non-use of trademarks.

We also provide a wide range of services related to trademarks, including anti-counterfeiting, trademark license agreements, and trademark transfer agreements.

Every year Yukio Kobayashi is appointed as a lecturer at the Japan Trademark Association to lecture on litigation for revocation of trial decisions. In addition, both Mr. Kobayashi and Mr. Yugeta have written books on trademark law.

The Design Act, along with Article 2(1)(iii) of the Unfair Competition Prevention Act, protects the design of industrial products (subject to registration with the Japan Patent Office, for a period of 25 years from the filing date of the design registration for the product).

Claims in litigation must be made using language, and in the arena of design law, a unique method of expression is used to verbalize the form of the design and to handle design law cases. Attorneys are required to be highly skilled in this regard.

And, as with trademark law, the sensory issue of similarity and dissimilarity is a point of contention. Therefore, attorneys must persuade judges in a visual sense and be able to quantify such effects, etc.

Disputes over design rights in Japan are less common than disputes over patents and other intellectual property litigation. However, we have a wealth of experience in this area.

In addition to disputes, we also provide advice on the filing of related designs and partial designs, as well as on points to keep in mind when filing applications – practical consulting based on litigation experience. We also prepare various design-related contracts, such as design development contracts with domestic and international design firms and confidentiality agreements.

The Unfair Competition Prevention Act (“UCPA”) lists the types of conduct that are considered as unfair in terms of business practices. The law contains various elements under a single law.

Article 2(1)(i) and (ii) is often used to protect well-known or famous indications even if they are not registered at the Japan Patent Office. Article 2(1)(iii), does not allow imitations of the form of goods for three years after the sales date in Japan. Article 2(1)(iv) to (x), protects trade secrets acquired wrongfully and Article 2(1)(xxi), prohibits actions that harm the business reputation of other companies.

There are a wide range of issues governed by the UCPA. It is unlikely that there are many lawyers with experience in each of the cases mentioned above. In addition, since no registration is required to exercise the UCPA, unfair competition must be proved in detail. We have extensive experience in all the above cases.

Copyright law protects creative expression, including novels, music, paintings, and films. Moreover, copyright arises simply from the creation of a work and does not require registration with the Japan Patent Office.

Therefore, any document, material that exists on the Internet, small illustration, etc. can be copyrighted. Rights can arise in all sorts of situations and for all sorts of things, including the copying and pasting of documents and electronic copying. It is now easier for businesses to conduct business and be exposed to copyright infringement due to the ease with which files and documents can now be converted, copied, and transferred, etc.

Litigation between large companies is widely reported, and it is understood that differences of opinion are likely to arise but, the act of copyright infringement is primarily an act of imitation. There is no way to stop a right holder from filing a lawsuit, and as a general rule, all intellectual property litigation is published.

Due to the public nature of the Internet, any copyright infringement will be exposed semi-permanently if a case is lost. In order to limit these risks, you should be prepared to seek professional help if you feel that you are in any danger and a system should be in place to allow for consultation and communication.

In addition, whether it is legal or illegal under copyright law, receiving a warning letter may be a problem in itself. For example, if you are an advertising agency, there is a need to create ads that reflect the trends of the times. However, you must avoid a situation where your client receives a warning letter.

In such case, no matter how much research you do into technical books and case laws, it is difficult to determine the likelihood of receiving a warning letter. You should rely on professional experience.

We are well versed in copyright law and have had numerous consultations regarding art, music, maps, photographs, programs, etc., from our clients. We provide not only consultations on whether violations of copyright law have occurred, but also offer advice on the possible likelihood that you may receive a warning.

Art law focuses on the art industry and covers a wide range of laws to help participants in the art world. Art law has a long history in Europe and the United States, but this field is not yet well established in Japan.

Kodai Kimura advises artists, art galleries, art related startups, curators, art consultants, collectors, and various companies involved in art projects.

Since there is a wealth of case law and literature related to art law in Europe and the United States, we are able to gather information, including information in English, and are able to draft contracts that are customized to Japanese practices and customs, as well as meet the needs of our clients.

We aim to provide advice not only within a legal framework, but also in the context of art history.

We also continuously provide legal advice for entertainment industries, including music, movies and games.

In the entertainment industry, new legal issues arise every day as business models continue to change with the development of technology.

Our goal is to work together with our clients to provide optimal solutions to these new issues, based on our extensive experience in the field of intellectual property.

We also provide legal services to clients in the entertainment field, ranging from contract negotiation to dispute resolution in Japan and abroad.

Since Yukio Kobayashi, a pioneering attorney with a patent/trademark attorney background, established the firm, we have worked with many patent firms on dispute cases.

We have represented foreign companies in infringement suits, invalidation trials, anti-counterfeiting measures in Japan, sending out warning letters, and other litigation matters.

We work closely with patent firms to negotiate license agreements, conduct domestic regulatory searches for foreign companies, etc. We work on cases in a variety of fields in close communication with our clients.

In addition, we also deal with consultations with many patent firms and advise them on matters that go beyond the core business of a patent attorney, such as drafting contracts, copyright law and unfair competition law cases.

In addition, a patent law firm is an entity, and we have to deal with a variety of issues in maintaining and operating it such as debt collection and labor issues.

We are proud of the fact that we are able to provide our clients with the best possible solution to their issues. We are committed to being a good partner with whom patent firms feel free to consult.

Antitrust law, which contributes to economic development by encouraging competition, similarly promotes industrial development and intersects with patent and other intellectual property laws that recognize a monopoly on technology as a means to an end.

License agreements and collaborative research agreements are typical examples. In addition, although there are not many cases, there are rights based on antitrust violations against injunction claims based on intellectual property rights, such as those asserting the defense of abuse of rights.

In addition, Article 24 of the Antimonopoly Act permits the filing of a request for an injunction against violations of the Act. If an action for an injunction under Article 24 is filed, the court shall notify the Japan Fair Trade Commission (“JFTC”).

There is a great deal of pressure on the part of small and medium-sized companies to use the antitrust laws as a weapon in lawsuits and to place large companies in the public eye. According to the JFTC’s annual report, it is also possible to file an action for an injunction under Article 24 and claim of damages under Article 25 of the Act. Even in the past ten years, there have been only about 40 lawsuits.

We have been involved in three lawsuits for injunctions under Article 24 of the Antimonopoly Act in the last ten years.

In June 2019, the JFTC released an “Investigation Report on Abuse of Superior Bargaining Position by Manufacturers of Know-How and Intellectual Property Rights”, which indicates that more and more small and medium-sized companies will use the antitrust law as a weapon to protect their intellectual property rights from large companies and to regain the profits they have lost.

As mentioned above, we have handled many intellectual property cases and have gained experience from the intersecting of IP and antitrust law, which enables us to provide accurate advice based on this experience acquired from a different perspective of IP law.

Universities are public institutions and should not be driven simply by a desire to make money, but rather should pursue “research activities and contribute to society” – this principle itself should be upheld.

However, a university’s research activities, which go beyond its private interests as an academic institution to contribute to the advancement of academia, have led to the development of a new generation of researchers. In order to help many people, research funding is necessary. To give back to society as much as possible from the research activities at a university, we need to establish joint research agreements with companies on an equal footing.

We need to create a cycle of signing licensing agreements and using the results of our research to benefit the next academic research.

In cases where there is a model widely used by academia, such as the Uniform Biological Material Transfer Agreement (UBMTA) in a Material Transfer Agreement, we can greatly shorten the time required to conclude a contract by negotiating a contract based on this model.

We negotiate and advise our clients from the perspective of a university, respecting the mission of academia by utilizing our experience in negotiating contracts between universities and companies in Japan and abroad, especially in the field of intellectual property.

We are experienced in a variety of IP-related matters in addition to IP litigation. In addition to handling a relatively large number of cases such as invalidation trials, we have experience in IP mediations, advisory opinion proceedings at the Japan Patent Office, requests for arbitration at the Japan Intellectual Property Arbitration Center (in addition to representation, Yukio Kobayashi is a member of the arbitration panel at the JIPAC) and JP domain dispute resolution proceedings, as well as rare cases such as dealing with IPR border enforcement proceedings at Japan Customs. We are able to handle all kinds of IP-related work.
We are also engaged in giving training and lectures to patent/trademark attorneys, who are experts in intellectual property law, as well as lecturers of corporate training, law schools, and design universities and graduate schools of design.