Practices

The fundamental aim of Nakamura & Partners is to provide our clients with a wide range of highly professional services mainly in the field of intellectual property ranging from acquiring strong exclusive rights up to effectively enforcing the exclusive rights and dealing with legal work relating thereto.
Our firm mainly provides the following services, the details of which are listed below. The outline of the laws and procedures in Japan to protect Intellectual Property Rights can be found here.

• Services Related to Creation and Acquisition of Intellectual Properties
  • Counseling, search assistance, and analysis related to creation and acquisition of intellectual properties (IPs) such as inventions, utility models, designs, trademarks, new plant varieties, Geographical Indications (GIs), works, trade secrets, and big data
• Services Related to Employee Creations of IPs
  • Counseling, search assistance, analysis, regulatory document preparation, and negotiation related to employee creations of IPs such as employee inventions
• Services Related to Open Innovation, Transactions, and M&A
  • Counseling, search assistance, analysis, IP due diligence, IP value evaluation, negotiation, and contract document preparation related to industry-academia collaboration, R&D consignment, joint R&D, technological cooperation, licensing-in, M&A, external procurement, startup company investment, and other open innovation
  • Applications for registrations of transfers of patent rights, design rights, and trademark rights, licenses thereunder, and pledges thereupon before the Japan Patent Office (JPO)
  • Applications for registrations of transfers of breeder’s rights, licenses thereunder, and pledges thereupon before the Ministry of Agriculture, Forestry, and Fisheries (MAFF)
• Services Related to Industry-Specific Intellectual Property and Contract Legal Affairs
  • Counseling, search assistance, analysis, negotiation, and document preparation related to contract and legal affairs concerning fashion, entertainment, sports, media, agribusiness, and space law

• Services Related to Intellectual Property Strategy, Value evaluation, and Protection Policies
  • Value evaluation, and counseling, search assistance, and analysis related to selection and combination of protection methods, and support for protection, of IPs
  • Counseling, search assistance, and analysis for IPR mix
  • Counseling and support for legal protection of big data
• Services Related to Domestic Filings, Registrations, Appeals, and Litigation
  • Applications for patents, utility model registrations, design registrations, and trademark registrations before the Japan Patent Office (JPO)
  • Intermediate processing of the applications, and appeal trials against decision of rejection before the JPO
  • Litigation for rescission of trial decisions by the JPO before the Intellectual Property High Court (IP High Court)
  • Applications for registration of extension of patent terms, and intermediate processing, appeal trials against decision of rejection, and litigation for rescission of trial decisions related thereto
  • Applications for registration of renewal of trademark rights before the JPO
• Services Related to Applications, Registrations, and Litigation in the Agricultural, Forestry, and Fisheries Sectors
  • Applications for new plant variety registrations and geographical indication (GI) registrations before the Ministry of Agriculture, Forestry, and Fisheries (MAFF)
  • Litigation for rescission of decision of rejection by the MAFF before the court
• Services Related to Global IP Acquisition and Maintenance
  • Counseling and support for acquiring and maintaining rights abroad regarding inventions, utility models, designs, trademarks, new plant varieties, and geographical indications

• Services Related to IP Validity Evaluation and Dispute Resolution Support
  • Counseling, search assistance, analysis, expert opinion, negotiation, and foreign dispute resolution support related to validity of patents, utility model registrations, design registrations, trademark registrations, new plant variety registrations, and GI registrations
• Services Related to Oppositions, Invalidation Trials, Cancellation Trials, and Litigation
  • Oppositions to patents and trademark registrations, invalidation trials against patents, utility model registrations, design registrations, and trademark registrations, and cancellation trial against trademark registrations due to non-use before the JPO; Litigation for cancellation of decisions by the JPO before the IP High Court
• Services Related to Oppositions, Cancellation Procedures, and Litigation for New Plant Variety and GI Registrations
  • Oppositions to new plant variety registrations and GI registrations before the MAFF; Litigation for cancellation of decisions by the MAFF before the court

• Services Related to Intellectual Property Management and Information Disclosure Support
  • Support for IP information disclosure, intellectual asset management report, and disclosure and governance of IP investment and exploitation strategy
• Services Related to IP Business, Finance Utilization, and Rights Transfer Procedures
  • Counseling, search assistance, analysis, value evaluation, negotiation, and contract document preparation related to monetization such as licensing-out, sales, and trust, and collateralization such as pledge of IPs; Applications for registrations of transfers of patent rights, design rights and trademark rights, license thereunder, and pledge thereupon before the JPO; Applications for registrations of transfers of breeder’s rights, license thereunder, and pledge thereupon before the MAFF
• Services Related to Open Innovation Strategy Formulation and Execution Support
  • Counseling, search assistance, analysis, negotiation, and contract document preparation related to standardization, business alliance, joint venture, free licensing-out, corporate venturing, and other open innovation
• Services Related to Open & Close Strategy Formulation and Support
  • Counseling, search assistance, analysis, negotiation, and contract document preparation related to open & close strategy
• Services Related to Specialized Legal Affairs and Comprehensive Contract Support in Growth Industries and Frontier Businesses
  • Counseling, search assistance, analysis, negotiation, and document preparation related to contract and legal affairs concerning fashion, entertainment, sports, media, agribusiness, and space law

• Services Related to IP Infringement, Unfair Competition, and Other Dispute Resolution Support
  • Counseling, search assistance, analysis, expert opinion, negotiation, and foreign dispute resolution support related to infringement of patent rights, utility model rights, design rights, trademark rights, breeder’s rights, copyrights, neighboring rights and publicity rights, ownership and compensation of employee inventions, illegal use of GIs, and misappropriation of trade secrets and big data, and other violations of the Unfair Competition Prevention Act
• Services Related to Online IP Infringement, Defamation, and Other Countermeasures
  • Counseling, search assistance, analysis, negotiation, and countermeasures related to counterfeit goods, pirated goods, harm to reputation, defamation, and disclosure of identification information, on the Internet
• Services Related to Court Litigation and Legal Proceedings
  • Litigation related to infringement of patent rights, utility model rights, design rights, trademark rights, breeder’s rights, copyrights, neighboring rights and publicity rights, ownership and compensation of employee inventions, illegal use of GIs, misappropriation of trade secrets and big data, and other violations of the Unfair Competition Prevention Act, harm to reputation, defamation, and disclosure of identification information before the court
• Services Related to Disputes on IP-Related Contracts
  • Research development (R&D) consignment, joint R&D, and licensing contracts
  • Contracts related to fashion, entertainment, sports, media, agribusiness, and space law
  • Counseling, search assistance, analysis, expert opinion, negotiation, and foreign dispute resolution support related to disputes on other IP-related contracts
• Services Related to Border Enforcement and Advisory Opinions
  • Goods infringing patent rights, utility model rights, design rights, trademark rights, breeder’s rights, copyrights, and neighboring rights before the Customs
  • Import and export border enforcement procedures against prescribed goods violating the Unfair Competition Prevention Act
  • Advisory opinions before the JPO regarding infringement of patent rights, utility model rights, design rights, and trademark rights, and essentiality of patent rights for standard specifications
• Dispute Resolution through Arbitration and Mediation
  • Arbitration of domain name disputes
  • Arbitration of FRAND licensing of standard essential patents (SEPs)
  • Other IP-related arbitration and mediation before arbitration and mediation institutions

• Consulting and Training
  • Support for corporate innovation and/or brand management and other IP strategy and tactics by IP consulting and other measures
  • Support for corporate IP-related education and enlightenment by dispatch of lecturers and other measures
  • Support for corporate IP-related activities by dispatch or secondment of professionals and other measures

• Corporate Legal Affairs
  • Counseling, search assistance, analysis, legal due diligence, expert opinion, negotiation, document preparation and foreign dispute resolution support related to corporate legal affairs including international transactions, tax matters, contracts for manufacturing and supply, sales, outsourcing, agency, franchise, business alliance, and joint venture, and labor issues
  • Litigation related to corporate legal affairs including international transactions, tax matters, contracts for manufacturing and supply, sales, outsourcing, agency, franchise, business alliance, and joint venture, and labor issues, before the court
  • Commercial arbitration and mediation
  • Counseling and support for compliance including personal information protection laws, risk management and other crisis management, and other corporate governance
  • Counseling, search assistance, analysis, negotiation, and document preparation related to antitrust laws, Subcontract Act, and Act against Unjustifiable Premiums and Misleading Presentations, and other competition laws
  • Support of startup company legal affairs such as shareholder agreement, financing, exit strategy, and alliance with large company, university, and research institute
• General Civil Cases
  • Counseling, search assistance, analysis, negotiation, document preparation, and litigation related to general civil cases

Patent attorneys and attorneys-at-law at Nakamura & Partners actively participate in public interest activities. We believe that such activities not only contribute to society but also help enhance and deepen our professional expertise.
These public interest activities include:

• Educational and academic activities at universities and other educational institutions;
• Participation in domestic and international intellectual property organizations and related bodies;
• Activities involving government agencies, such as the Japan Patent Office and the courts;
• Activities within professional organizations, including Japan Patent Attorneys Association and Japan Bar Association; and
• A range of other activities through which the professional expertise and experience of our staff members contributes to society as a whole.