Introduction
Intellectual property (IP) is one of the most valuable assets in modern business, yet protecting and leveraging it demands a high degree of specialized expertise. For startups, IP constitutes the very value of the enterprise; for technology companies, it is the wellspring of competitive advantage; and for companies pursuing overseas expansion, a strategy for securing rights across borders can determine success or failure.
Beyond the traditional IP areas of trademarks, patents, copyright, designs, and trade secrets, our firm advises on the issues unique to the digital age—the ownership of AI-generated works, the handling of training data in machine learning, and the management of open-source software licenses—grounded in both Japanese and U.S. legal systems.
In recent years, the rapid spread of generative AI has driven a sharp increase in new needs, such as establishing guidelines for corporate use of tools like ChatGPT, managing confidential information contained in prompts, and assessing copyright risk in AI outputs. Our firm works with clients on these cutting-edge issues to craft solutions that are practical and do not impede business momentum. An international perspective is indispensable here as well—the appropriate use of Article 30-4 of the Japanese Copyright Act (use for information analysis), comparison with the U.S. fair use doctrine, and the extraterritorial reach of the EU AI Act.
Areas of Practice
The matters our firm handles in the IP field are as follows.
1. Trademarks - Developing domestic trademark filing strategy (class selection, distinctiveness assessment, prior-mark searches) - International trademark filings via the Madrid Protocol (U.S., EU, China, Southeast Asia, etc.) - Responding to trademark infringement (cease-and-desist letters, negotiation, litigation, customs seizures) - Brand portfolio management and support in implementing trademark watch services - Drafting and reviewing license and franchise agreements
2. Patents - Participating in invention-mining meetings and developing filing strategy - International filing strategy via the PCT (Patent Cooperation Treaty) - Patent infringement negotiations, invalidation trials, and correction trials - FRAND-terms negotiations concerning standard-essential patents (SEPs) - Designing invention-ownership clauses in joint research and development agreements
3. Copyright - Licensing agreements for software and content - Licensing of AI training datasets and rights clearance for outputs - Open-source license (GPL, Apache, MIT, etc.) compliance - Responding to copyright infringement claims and handling DMCA notices - Rights coordination for derivative and compilation works
4. Trade Secrets and Know-How - Building trade-secret management systems under the Unfair Competition Prevention Act - Responding to information taken by departing employees; litigation over breach of non-compete obligations - Drafting, negotiating, and establishing operational rules for NDAs (non-disclosure agreements)
5. Designs and Publicity Rights - Design registration strategy for product design - Agreements for the use of the likeness of influencers and public figures
Representative Matters (Illustrative Examples)
Example 1: Trademark Strategy for a Startup Eyeing Overseas Expansion
A SaaS startup that had grown to roughly 500,000 monthly active users domestically was planning expansion into the U.S., EU, and Singapore. It emerged that its service name was already registered as a similar mark in the U.S., forcing a decision between rebranding and negotiating coexistence.
Through negotiations with the prior U.S. rights holder, our firm concluded a Co-Existence Agreement that clearly delineated the goods and services classes involved. At the same time, we filed a single bundled application covering ten countries using the Madrid Protocol, cutting filing costs by roughly 40% compared with individual national filings. We further established a trademark portfolio management framework (watching, renewal management, and a license-management ledger) with a future listing in view.
Example 2: Copyright Risk Assessment for AI-Generated Content
A media company was considering a company-wide rollout of a generative AI tool for its in-house editors. The challenges centered on the copyright ownership of generated articles and images, the risk of similarity to third-party works, and exposure to infringement risk contained in the training data.
Our firm provided integrated support: (1) formulating internal usage guidelines; (2) supplying a framework for judging copyright eligibility based on the degree of human involvement in the output; (3) designing an escalation flow for cases where third-party infringement comes to light; and (4) negotiating indemnity clauses in the terms of use with the vendor. Our advice was informed by the scope and limits of Article 30-4 of the Japanese Copyright Act and the latest developments in U.S. fair use case law (such as the NYT v. OpenAI litigation).
Example 3: Responding to Technical Information Taken by a Former Employee
At a hardware startup, a suspicion arose that a departed engineer had moved to a competitor and taken technical information relating to a proprietary manufacturing process. The need for evidence preservation and injunctive relief arose.
Our firm acted swiftly: (1) directing an internal digital forensics investigation; (2) pursuing court procedures to preserve evidence; (3) issuing a cease-and-desist letter to the new employer; and (4) filing a provisional injunction under the Unfair Competition Prevention Act. In parallel, we reviewed the company's trade-secret management rules, improved access-privilege controls, and revised the departure undertaking, building a system to prevent recurrence.
How to Engage Us
- Initial Consultation (30–60 minutes / available online): We listen to your business, your current challenges, and the goals you are aiming for. A confidentiality agreement can be concluded before the consultation.
- Estimate and Proposal: Based on the consultation, we present the scope of work, an anticipated timeline, and a fee estimate. We accommodate time-charge, per-matter, and retainer arrangements alike.
- Commencement and Progress Sharing: Once work begins, we provide regular progress reports and issue analysis, escalating matters requiring a decision at an early stage.
- Completion and Aftercare: Even after a matter concludes, we can provide continued support on related issues and matters requiring ongoing management (such as trademark renewals).
Fee Guide (Reference Figures / Subject to Discussion)
- Initial consultation: Free for the first 30 minutes; time charge thereafter
- Trademark filing: Estimated JPY 80,000–120,000 per class (including filing and attorney fees; JPO stamp fees separate)
- Patent filing: Estimated JPY 350,000–600,000 (specification drafting and filing agency; JPO stamp fees separate)
- Contract drafting and review: Estimated JPY 50,000–300,000 (varies with complexity)
- Infringement response and litigation: Individual estimate (either retainer plus contingency, or time charge)
- Retainer: Estimated JPY 100,000–300,000 per month (designed according to workload)
Contact
For consultations in the IP field, please reach out via our contact form. Through an initial hearing, we will consider the optimal approach together with you.