Japan’s strong manufacturing history and appetite for consumer products make for a dynamic licensing marketplace, with significant activity in the in-licensing, out-licensing and cross-licensing of patents and technology. Japanese companies are traditionally nonconfrontational, preferring to settle with a licence rather than litigate. Until recently, they have also been reticent in enforcing their IP rights. However, many sources report a change in recent years, with companies becoming increasingly aggressive in seeking to monetise their patents. This is partly as a result of Japan’s stagnant economy and the global financial crash. Also, while manufacturing standards remain high, Japanese companies are facing increasing competition in terms of quality, particularly from China. Large general practice firms dominate, although a number of smaller boutiques are doing impressive work. The bigger firms tend to have two departments that deal with licensing: a corporate or transactional division and a litigation team. Although some Japanese firms tend to handle mainly domestic clients, this is not always the case. Unlike in China, for example, there is no clear division between domestic and international players, and a number of commentators spoke of Japanese firms and individuals “working at an international level”.
Founded in 1959, this general practice firm has maintained a focus on IP matters, which it strengthened further with the addition of a patent prosecution division in 2000. The licensing practice is well regarded in the marketplace and encompasses technological development agreements and know-how. Eiji Katayama covers corporate and commercial law with a focus on intellectual property, including advanced technology in chemistry, electronics and machinery. He is “right up there at the highest level as an excellent Japanese technology lawyer”.Anderson Mori & Tomotsune
This large and well-established Japanese firm has a significant IP group covering all areas of intellectual property for domestic and international clients. Licensing agreements and IP transactional work comprise a significant part of the practice of partner Yoshikazu Iwase, who has delivered a number of lectures on the subject of licensing and other IP issues.Finnegan Henderson Farabow Garrett & Dunner LLP
The global network of experts at this IP ensemble gives its Japanese lawyers access to the expertise of their US counterparts on international licensing deals. Most recently, the firm has been active in the software and electronics sectors. In the Tokyo office, Naoki Yoshida is the senior person dealing with licensing; he is “accomplished in all areas of intellectual property”. Clients are mainly domestic companies involved in international matters; for example, he recently represented a major Japanese semiconductor company in a licensing negotiation.Foley & Lardner LLP
The Tokyo office of this international outfit was established in 2003, enabling the firm to enhance its pre-existing relationships with Japanese clients. Major domestic corporations continue to represent the majority of its clientele. Etsuo Doi enjoys an excellent reputation in the licensing field, where he handles inbound and outbound work for international and domestic clients. Having worked for eBay when ecommerce was still in its infancy, he is particularly knowledgeable on this subject.Hogan Lovells Horitsu Jimusho Gaikokuho Kyodo Jigyo
A diverse range of internationally qualified lawyers from countries including the United Kingdom, France and Australia is a feature of the Tokyo branch of this global outfit. It mostly represents Japanese clients; however, the firm recently worked with PepsiCo in a strategic alliance with Japanese food manufacturer Calbee. Eiichiro Kubota is a partner in the IP, media and technology department; his practice focuses on IP litigation, although he also has considerable experience in licensing. “Extremely commercial and competent”, he is an up-andcoming lawyer to watch. Lloyd Parker is the managing partner of the Tokyo office. He is one of five lawyers on Hogan Lovells’ international IP in commercial transactions group and regularly liaises with colleagues around the world regarding licensing issues for Japanese clients. He speaks fluent Japanese.Morrison & Foerster LLP
With “the largest presence and an excellent reputation”, this international firm has one of the biggest IP departments in Japan. The technology transactions group focuses on noncontentious work including licensing, while the firm’s litigators also handle licensing that arises out of dispute settlements. Since opening its Japan office in 1987, the firm has mostly undertaken outbound work for Japanese clients; however, it also now represents a number of western companies. Masato Hayakawa is singled out as a rising star of note: he is “relatively junior, but he really knows what he is doing”. His work includes negotiating technology transfers, licensing agreements and joint development deals. Chairing the litigation practice is Max Olson, “an excellent lawyer and a wonderful person”, who works on adversarial licensing deals as well as litigation. He is particularly active in the electronics, computer and software sectors. Stuart Beraha heads the technology transactions group, dealing with M&A and standalone deals in the life sciences and electronics sectors, among others. His practice takes in the negotiation of technology-focused joint venture and strategic alliance transactions.Nagashima Ohno & Tsunematsu
Nagashima Ohno & Tsunematsu is one of Japan’s leading commercial law firms. Its IP, IT and entertainment department is split into two practices, one handling litigation and the other dealing with transactional work. The firm acts for Japanese and foreign clients in technology and patent licensing negotiations, including a number of semiconductor manufacturers. Yoshimi Ohara’s practice focuses on domestic and international IP transactions and dispute resolution, including complex cross-licensing agreements. She previously worked in-house in the technology sector, so has a deep understanding of the technical and scientific aspects of her work.Nakamura & Partners
An IP firm with almost 100 years of history, the “fantastic” Nakamura & Partners handles an extensive range of IP matters, including licensing transactions, joint ventures and M&A deals. “The number one purely Japanese firm”, it fields practitioners who are noted for having the skills to deal with both foreign and domestic clients. The firm’s superb reputation rests partly on the shoulders of Kazuhiko Yoshida. A qualified attorney at law and patent attorney, he is an exceptionally well-regarded licensing expert. As one complimentary source put it: “He is one of the best practitioners; if I had to recommend a Japanese lawyer, I’d definitely recommend him.”Ohno & Partners
Established in 2000 and with around 20 patent attorneys and attorneys at law, IP boutique Ohno & Partners is relatively small and new to the marketplace. However, the practice is already well established and is noted for its “excellent IP knowledge”. Managing partner Seiji Ohno is a highly reputed litigator who also handles licensing and transactional matters.Orrick Herrington and Sutcliffe LLP
Lawyers across two of Orrick’s Tokyo departments share responsibility for licensing matters. The corporate team is highly experienced in life sciences, particularly in the agrochemical industry, while the IP group represents technology and software companies for mostly Japanese clients, including start-ups and distressed businesses. Managing partner Mark Weeks heads the corporate practice at the firm. He has extensive experience of joint ventures and technology transfers in the IT, life sciences and telecommunications sectors.Quinn Emanuel Urquhart & Sullivan LLP
This US-based global firm is dedicated to business litigation, mostly regarding patents, and therefore deals with licensing work as a result of settlement negotiations. The Tokyo office was opened in 2010; however, it is growing rapidly and has “extremely capable lawyers”. Recently arrived from Hogan Lovells, Wayne Alexander “has an excellent reputation”. He previously worked in-house for major electronics corporations and this remains an important sector in his current practice. His industry expertise also takes in medical devices and high technology.Ropes & Gray LLP
This large general practice firm set up shop in Tokyo in 2007. Its practitioners have considerable experience of licensing work, particularly in the life sciences and technology sectors. James S DeGraw handles commercial and corporate matters, including M&A transactions, joint ventures and complex licensing agreements. Hiroyuki Hagiwara is an “excellent lawyer” who is particularly focused on representing international IT companies in cross-border licensing and litigation. He also handles ongoing work for major clients in the semiconductor, automotive and electronic sectors.Yuasa and Hara
Founded in 1902, Yuasa & Hara is a significant IP boutique on the Japanese marketplace. Although best known for its patent prosecution side, the firm also has a corporate law practice that represents international and domestic clients. A partner in the law division, Kozo Yabe deals with licensing and litigation, as well as corporate and M&A work. He is particularly well versed in the IT and biotechnology sectors.