TMI Associates

TMI Associates has 96 patent and trademark attorneys (benrishi) in addition to 630 attorneys at law (bengoshi). These professionals – together with over 480 paralegals and other support staff members – form a unique organizational structure that enables the firm to respond in a highly effective and efficient manner to the needs of clients across a wide variety of businesses and technologies from all around the globe.

History

Since its establishment in 1990, TMI has grown rapidly and achieved its goal of becoming a full-service law firm that offers valuable and comprehensive legal services of the highest calibre at all times, while placing great importance on exercising unparalleled legal judgement in areas including intellectual property, litigation, general corporate, corporate finance, antitrust and bankruptcy law. Intellectual property – including patents, designs and trademarks – has been an integral part of the firm’s practice since its establishment, and TMI boasts an unrivalled level of experience and achievements in this area.

Collaboration

Thanks to its patent/trademark attorneys and IP lawyers working together as a team, TMI offers its clients high-quality IP services that are unlike those of any other international law firm in Japan.

IP team

• 96 patent and trademark attorneys (benrishi),
• 46 electronical and mechanical attorneys,
• 27 chemical, biotechnology and pharmaceutical attorneys
• 23 trademark and design attorneys; and
• 110 IP lawyers (bengoshi).

One of the ‘Big Five’ law firms in Japan, TMI has currently the largest benrishi group by far, which supports the reputation of its strong IP practice in all technical fields.

IP practice

TMI’s practice covers all aspects of intellectual property, including patent and trademark prosecution, transactions (eg, patent sales, acquisitions and licensing), litigation, pre-litigation analysis, invalidation trials and oppositions, freedom-to-operate analysis, due diligence and import suspension at Customs. The firm files approximately 4,150 trademark, 4,400 patent and 610 Design applications, domestically and overseas included, and over 20 IP lawsuits per year.

Ability to resolve IP disputes

Our strong litigation team is made up of highly experienced IP litigation lawyers and patent/trademark attorneys with a track record of successful cases, including in infringement litigation and invalidation proceedings against decisions of the Japan Patent Office. In order to strengthen its litigation practice, TMI has also recruited lawyers who were previously high-profile judges, including former Supreme Court judges and a former presiding judge of an IP high court division.

High-quality services in related areas

• Anti-counterfeiting projects involving civil, criminal and customs procedures to prevent importation of counterfeit products
• Copyright
• Entertainment and sports law
• Protection of know-how and trade secrets
• Prevention against unfair competition
• Contract drafting
• Resolution of disputes arising from IP licensing agreements
• IP due diligence upon acquisition, merger or listing on stock exchange
• Financing collateralized with IP rights

Key IP Areas

Copyright & related rights, Designs, Intellectual property (contentious), Intellectual property (prosecution), IP transactions, ITC litigation, Life sciences IP, Patent, Patent contentious, Patent prosecution, PTAB litigation, Trade mark, Trade mark contentious, Trade mark prosecution

Key Sector Expertise

Aerospace, Advertising, Agriculture, Artificial intelligence, Arts, Automotive, Biotechnology, Chemical, Computer technology & services, Construction & materials, Defence, E-commerce, Electrical, Electronics, Fashion & luxury goods, Film, Financial services, FMCG, Food & beverage, Furniture, Gaming, Hospitality & leisure, ICT & software, Industrials, Instruments, Internet, Life sciences, Logistics, Manufacturing, Mechanical, Media, Medical device, Music, Nanotechnology, Not-for-profit, Oil & gas, Optics & photonics, Pharmaceutical, Mining, Professional services, Publishing, Real estate, Renewable energy, Retail, Robotics, Semiconductors, Sports, Technology hardware, Telecommunication, Tobacco, Transport, Universities & research, Utilities