HOW DOES THE IP MARKET IN JAPAN DIFFER FROM THE REST OF THE WORLD?
GENERALLY speaking, the IP market in Japan is not much different from other advanced countries in the world. In my opinion however there are some unique attributes.
1. Practical use of Invention in University
Many Japanese universities have produced a lot of important and valuable inventions.
But they have not been practically and usefully used in global industry. Most of these inventions are not protected by patent, utility model or design registration which is a problem especially when they are brought into the worldwide market. Recently, there has been a drive for more cooperation between universities and industrial companies who manufacture and distribute the products and application numbers for patent and other forms of IP protection have increased. These applications are filed in the name of either party or in the names of both parties. The latter ensures closer relationships between universities and industrial companies not only in the cooperation during the IP application procedures, but also in the license agreement and subsequent economical relationship.
2. Lack of professionals whose role is estimate the monetary value of IP rights such as patent, trademark and other non-registered knowhow or brand.
Other countries such as the USA have a stronger system. Economical evaluation of IP rights is very important and Japan needs to make progress in this area.
3. Concentration of the courts' jurisdiction in handling IP litigation
That is not a problem of the market, but a problem of the legal system. Reforming the legislation would galvanise the IP market in areas outside of Tokyo.
One problem is the IP application procedure. In the Japanese IP application system, if an applicant who files a patent, utility model, design or a trademark application and has that application rejected by the Japanese Patent Office, he can take an action to the high court to challenge the JPO's decision. But, in present system, the only jurisdiction in which such an action can be taken in Tokyo.
Another is a problem in IP infringement litigation. The jurisdictions for litigation on patent infringement are exclusively Tokyo district court or Osaka district court.
This system leaves the minor manufactures in areas far from Tokyo or Osaka at a disadvantage.
IS KOBAYASHI & TODO BEST SUITED TO WORKING ALONGSIDE LARGER INTERNATIONAL FIRMS OR OFFERING A BESPOKE SERVICE TO A SELECT GROUP OF CLIENTS?
I believe our firm is best suited to working alongside larger international firms on major cross-border matters or offering a bespoke service in a special field directly to local businesses in IP and antitrust.
The foreign clients of our law firm are big companies in both the USA and Europe, mainly coming from the medical industry, sporting goods industry and food industry, as well as law firms in U.S. and Europe.
As present, we advise around 15 Japanese and 10 foreign clients on a regular basis, which is not so many, but the workload is large and constant so we are very busy. Our law firm is proud of having formed long term and close relationship with our clients. We provide a strong and personal legal service and our clients have come to rely on that.
HOW DOES THE FIRM COMPETE WITH THE LARGEST JAPANESE FIRMS OR IS IT OPERATING IN A DIFFERENT MARKET?
I think the measure to evaluate the performance of a law firm is not by the numbers of the lawyers or the scale of the office, but the ability of each individual lawyer.
In hospitals, the biggest issue for the patients is whether the doctor is an able and kind doctor or not. In this regard, I think a law firm is similar to a hospital. But a law firm does need not the special medical equipment that a hospital requires. Therefore, I think the measure of a good law firm is not the number of attorneys and big offices, but splendid lawyers. In this point , our law firm has the self confidence to compete with the largest Japanese firms in the field of IP and antitrust.
WHAT IS THE FIRM'S LEVEL OF INTERNATIONAL EXPOSURE?
There is no point in us working alongside Japanese offices of international firms. As mentioned above, our firm has law firms in the USA and Europe as clients..An international firm without a Japan office is more likely to instruct a local Japanese firm on a Japanese law matter, We have international law firms instructing us as well as industrial and manufacturing companies from the USA and Europe.
IS THE IP WORK MAINLY ASSOCIATED WITH NEW TECHNOLOGY?
Yes, most of the IP and rights protection work is associated with new technology, particularly inventions coming out of university programs as I mentioned previously. That said our firm does not have specialists dedicated to specific areas, such as matters related only to computer systems. Able lawyers with that degree of specialisation are rare in the Japan market.
HOW HAS KOBAYASHI & TODO REMAINED RELATIVELY UNCHANGED IN THE 30 YEARS OF ITS LIFE WHEN SO MUCH OF THE MARKET HAS SEEN RADICAL CHANGE?
I think it is important to have a balance of many smaller boutique firms alongside the larger firms. Of course we advise on matters other than antitrust and IP, and would like to further broaden our offering with increased staff in the future. It has to be said that the key strength of the best lawyers is the ability to grasp the essence of the matter from the various issues and form the best strategy to resolve the situation. I believe our firm has established its reputation on the back of being staffed by such a group of lawyers.
HOW DO THE FIRM'S KEY PRACTICE AREAS OF ANTITRUST AND INTELLECTUAL PROPERTY COMPLEMENT EACH OTHER?
The purpose of both intellectual property legislation and antitrust legislation is to promote the development of industry and the economy while ensuring fair competition in the market. That is to say, fair use of IP rights controlled by antitrust law stimulates the ongoing production of new inventions.
At first sight it may seem as though the execution of antitrust law could only serve as a limitation on IP protection. But the execution of antitrust law has often been used to prevent the excess use, or abuse, of patent rights in Japan and the US. I think we will see more and more cases which involve the crossover of both laws, for example as a deference of defendant in the infringement of the patent right or a cancellation claim in the patent license agreement.
Toshio Kobayashi is founding partner and chief executive of boutique firm Kobayashi & Todo, which has been specializing in contentious and noncontentious IP matters, and antitrust, since its formation in 1962.
Kobayashi & Todo
Sanno Grand Building
Tel: +81 3 3580 2036
Fax:+81 3 3580 0789