Intellectual Property Rights (dispute resolution, contract negotiation, and establishment of company rules with regard to intellectual property rights)

(1)Dispute resolution regarding intellectual property rights

Our firm has extensive experience and excels at resolving disputes over the ownership and infringement of various intellectual property rights (patent rights, utility model rights, trademark rights, copyrights, etc.). We also have a proven track record of handling disputes relating to the wrongful acquisition and unauthorized use of trade secrets and the unauthorized use of product indications. In a lawsuit over the wrongful acquisition of trade secrets, we were able to obtain a judgment that awarded damages of a significant amount by Japanese standards.

(2)Prosecution of intellectual property rights and negotiation of license agreements, joint development agreements, system development agreements, and other agreements involving intellectual property rights

Our firm has considerable experience in intellectual property matters, ranging from prosecution (application) to various transactions including domestic and cross-border license agreements.

In license transactions and joint research and development between companies, we analyze the potential legal risks based on the specific nature of the intellectual property rights at issue and the actual business conditions, and then provide advice from a strategic perspective, negotiate with the other party, and draft and/or review the relevant agreements.

(3)Establishment of company rules

It is important to implement and maintain an internal system for handling employee inventions to ensure proper management and use of intellectual property rights within the company. In recent years, there have been many high-profile incidents where valuable trade secrets (technical and business know-how, etc.) accumulated through great cost and effort have leaked out, and to prevent such incidents from occurring, there is a need to develop an internal system for handling confidential information in the appropriate manner.

Our firm can provide comprehensive support that is tailored to our client’s type of business and company size by leveraging the experience and knowledge that we have acquired through our involvement in many disputes relating to intellectual property rights. We can develop a system that meets our client’s needs, prepare internal rules such as employee invention rules and rules regarding the handling of confidential information, advise on the operation of the system, and conduct training sessions for employees.

Representative matters in which our attorneys have been involved

• Worked on launching a new business of a well-known pharmaceutical company by executing and negotiating material license agreements (in English).
• Obtained a favorable judgment that awarded over ¥500 million in damages in a lawsuit over the wrongful acquisition and unauthorized use of trade secrets.
• Obtained a favorable settlement in a lawsuit over the unauthorized use of product indications.
• Obtained many favorable judgments and settlements in actions seeking damages and injunctive relief for the infringement of intellectual property rights.
• Extensive experience in drafting and negotiating license agreements and joint research and development agreements.
• Drafted and revised many intellectual property-related rules, such as employee invention rules and trade secret management rules.

Publications

• New Annotated Unfair Competition Prevention Act [new edition] Vol. 1 & 2 (Seirin Shoin) (co-author)
• Proving infringement in a trade secret misappropriation case and the level of secrecy – How to deal with the outflow of technology (Chizai Kanri, October 2012)
• High Court ruling rejecting the secrecy of technical know-how (trade secrets) (Chizai Kanri, September 2002)
• Trade Secrets (Patent, January 2002)
• Criteria for determining whether packaging, containers, and product designs are well-known under Article 2(1)(i) of the Unfair Competition Prevention Act (Chizai Kanri, January 2001)
• Infringement of Japanese patent rights by multinational corporate groups and international jurisdiction in Japan (L&T, No. 18)
• India Law Report (1): Patent Law – Increase in the exercising of compulsory licenses! (Teikoku Databank, Foreign Market Specialists Newsletter Seminar, 2013)
• Defending against the outflow of Japanese technology: Protection of technical information in East Asia (Teikoku Databank, Foreign Market Specialists Newsletter Seminar, 2012)