Toranomon Chuo Law Firm

Practice Areas

Intellectual Property Rights(dispute resolution, contract negotiation, and establishment of company rules with regard to 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 Unfair Competition Prevention Act, such as actions seeking damages and injunctive relief in connection with 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.

Our firm also has considerable experience in various intellectual property 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 the relevant agreements.

It is also 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 been leaked, 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 provides comprehensive support that is tailored to our clients’ 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 clients’ 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. We also handle many urgent matters (e.g., when there is unauthorized use of trade secrets, we would promptly investigate and file a criminal complaint).

Representative matters in which our attorneys have been involved

  • 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.
  • Drafted various agreements to retain intellectual property rights in the case where university provides another university with big data which had been obtained for industrial use purpose.
  • 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.