Nakamura & Partners

The firm: Nakamura & Partners, established in 1914, is one of the leading and largest international patent and law firms in Japan. At the firm approximately 180 staff members, including around 65 patent attorneys and 20 lawyers, work to provide various legal services. The scope of the firm’s practice is very extensive and includes both the prosecution of industrial property rights and litigations and other legal affairs centering on intellectual property law. Specifically, the firm handles patent applications, utility model applications, design applications, trademark and service mark applications, oppositions, and trials before the Japanese Patent Office, and renders expert opinions relating to these industrial property rights. The firm’s legal practice also includes a wide range of counselling and infringement litigations and other types of litigations related to intellectual property laws (patent, trademark, design, utility model, trade secret, unfair competition prevention, copyright, etc), drafting and negotiations related to joint ventures, licensing, mergers and acquisitions, international business transactions and general corporate affairs.

Main areas of practice

• Patent, utility model and design
• Prosecution
• Trade mark prosecution

• Intellectual property
  – Litigation
  – Opinion
  – Antitrust
  – Anti-counterfeiting licensing of technologies and trademarks
  – R&D contracts
  – Joint venture and distributorship contracts
  – International commercial dispute
  – International transactions
  – General corporate

• Acquiring and maintaining IP rights:
  – Counselling, search and assistance in acquisition of rights for an invention, utility model, design, trademark and new plant varieties

– Filing applications for patent, utility model, design and trademark registrations with the JPO; intermediate prosecution for these applications and appeals against examiner’s decisions for refusal/rejection of applications

– Prosecution for international patent applications under the PCT; prosecution for international trademark registrations under the Madrid Protocol

– Filing Court appeals for revocation against appeal/trial decisions made by the JPO

– Filing applications for renewal of trademark registrations with the JPO

• Taking of opposition, invalidation and cancellation procedures:
  – Counselling and providing expert opinion concerning the validity of IP rights

– Filing oppositions against trademark registrations, trials for cancellation of trademark registrations based on non-use, etc. with the JPO

– Filing trials for invalidation of patents, utility models, designs and trademark registrations with the JPO

– Filing court appeals for revocation against decisions in oppositions and trial decisions issued by the JPO

• Counselling and enforcement of IP rights:
  – Counselling and providing expert opinion concerning infringement of IP rights, violation of the unfair competition prevention law, and assistance in international dispute settlement

– Litigation in court concerning infringement of IP rights

– Taking a procedure for injunction against export and import of articles infringing IP rights in the customs office

– Domain arbitration, intellectual property related arbitration and mediation, and commercial arbitration and mediation in arbitration and mediation centres

• Assigning, licensing and other exploitation of intellectual property rights, others:
  – Counselling, negotiating and drafting of agreements for intellectual property-related contracts including transfer agreements, licensing agreements, and security interest agreements for IP rights, agreements for a joint research and development and entertainment related agreements

– Evaluation of IP rights

– Counselling, negotiation and document preparation concerning general corporate legal affairs which includes legal matters related to international transactions

– Litigation in court concerning general corporate legal affairs, which includes intellectual property-related agreements and legal matters related to international transactions