Nagoya International Patent Firm is the best choice for your applications for Patent, Trademark, Design, and other IP rights.

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交渉・訴訟・契約

NEGOTIATION /
LITIGATION /
AGREEMENT

DISTINCTIVE
CHARACTERISTICS

We, at Nagoya International Patent Firm, has abundant experience in handling international and domestic negotiations, litigations, and inter-parties trials in IP fields (including those related to Copyright Act and Unfair Competition Prevention Act) and in leading to conclusion of agreements in relation to or accompanying the foregoing at the request of clients who reside in and outside Japan.  For IP matters outside of Japan, we are also highly experienced in handling many cases with powerful assistance of foreign IP law firms (local agents) who are in cooperating relationships with us.  With the experience we have built up so far, we can proudly provide our clients with services most suitable for their needs.

Examples of Past Consultations requested by Clients

Case 1
It seems that our patent rights have been infringed by a competitor.  We want some professional assistance in determining whether our rights are actually infringed.  And if it is so, we want to claim damages from the competitor.
Case 2
A competitor has demanded us to change the name of our shop saying it infringes their trademark rights.  We have been operating the shop for a long time and we do not want to change the name.  Is their demand really legitimate even when our trade areas are totally different from each other?
Case 3
We have a product protected by design registration and have found a product sold on the Internet that is very similar to our protected product.  We want some professional assistance in considering what measures we can take against the seller.
Case 4
Shortly after we started to sell one product, we found out that a competitor is selling another product which is almost the same as our product.  Are there any measures we can take against the competitor even though we have not yet obtained the design rights over our product?
Case 5
We, a company residing outside of Japan, have a plan for an international business alliance (for development, manufacturing, sales, etc.) with a Japanese company.  We want some professional assistance to examine our business alliance agreement mainly in terms of IP rights.  We also want a professional to sit with us at the table for negotiation with the Japanese company as an interpreter and a negotiator.
Case 6
We, a company residing outside of Japan, need a Japanese agent to file an infringement litigation against a Japanese company based on a group of Japanese patents we own and, at the same time, to proceed an out-of-court negotiation towards a settlement agreement in favor of us .

FLOW OF
CONSULTATION
AND
DISPUTE
HANDLING

Depending on whether you are a rights holder or you are a party alleged for infringement,
the flow of consultation and dispute handling differs largely.

If you are rights holder

If you are rights holder
First consultation
First consultation

When you find a fact or a possibility that your IP rights are infringed by goods or services sold or provided by a competitor, please contact us at Nagoya International Patent Firm.

We confirm the goal you desire and understand what demands you wish to make against the competitor (stop their manufacturing/sales of the goods or services, claim damages, conclude a license agreement, etc.).  In a process of determining whether there is a case of infringement we should take action against, we may conduct a brief analysis if necessary.

Please note that, depending on the nature of your rights and the information we are provided at the time of the first consultation, some cases may not be suitable (or immature) for a brief analysis or may require more cautious and slow approach by a thorough analysis.

Expert opinion

Our attorneys specializing in the field of your case provide you with an expert opinion (thorough analysis) on whether the goods or services sold or provided by the competitor are infringing your IP rights.  With our accumulated practical experiences, we offer highly accurate expert opinions which encompass possible counterarguments you may receive from the competitor.

Elaboration of negotiation strategy
Elaboration of negotiation strategy

We elaborate negotiation strategies including what kind of evidence to prepare, what kind of demands should be presented to the opponent (competitor) at what timing and by what means, and how to respond to expected counterarguments from the opponent.  We offer a negotiation strategy customized for your desired process and result.  If you wish to avoid litigation as much as possible, we develop one that brings you the best possible result while avoiding litigation.  If you prioritize fulfillment of your demands and allow litigation for it, we develop a rather aggressive negotiation strategy with a possible litigation in mind.  Our negotiation strategies are elaborated also through evaluations on situations and environment of your business in addition to the factors in your request.

Our service expands to additional proposals, such as for including other already-owned rights in negotiation and for acquiring other rights by filing a divisional application or a new application.

As a negotiation strategy is an important factor that has a great impact on final results, it requires a careful and thorough elaboration.  Without exaggeration, negotiation strategy elaboration is one of the services we provide with the utmost confidence and effort.

To elaborate an appropriate negotiation strategy, it is indispensable we closely communicate with you to comprehend and confirm your requests and goals.  For such close communications, we conduct face-to-face communications through web meetings in English in addition to letters and emails, so that we correctly comprehend your true demands and provide answers to your questions in the course of proposing negotiation strategies. We make sure you select your strategy with an absolute satisfaction.

Members in our firm are very experienced in handling international cases outside of Japan, which made us specialized in IP systems and customs of IP practices of many foreign counties, which benefits our international clients entrusting us with negotiations pertaining to Japanese IP rights.  We are capable of intelligibly explaining the differences in systems and practices between Japan and foreign countries in our proposals for practical approaches in negotiations.

We are also highly skilled in communicating with clients who have cultural backgrounds different from Japan and able to provide a smooth and comfortable interactions.  Web meetings will be attended by those of us who have a deep knowledge of patent systems, fluent verbal and written communication skills in English, and high level of intercultural communication skills to provide you with very satisfactory experiences of our negotiation support.

Negotiation
Negotiation

There are various ways you can choose from to proceed a negotiation.  You can use a professional service of a patent and trademark attorney from the beginning to the end.  In this case, you begin the negotiation by sending a content-certified mail that asks the opponent’s (competitor’s) opinion under the name of your attorney and use your attorney to represent you throughout the negotiation until you obtain results from the negotiation.  Depending on the progress of the negotiation, you may wish to make a direct contact with the opponent and set a table for a face-to-face meeting without representation of your attorney.

The basic principle of negotiation is to take a resolute attitude based on your negotiation strategy.  However, if you wish to reach a negotiated agreement with the opponent outside of the court, we hear contentions of the opponent and convey them to you and make sure you find a point of agreement where both you and the opponent can agree.  We flexibly update our negotiation strategies in accordance with surrounding factors, such as the progress of the negotiation and changes in your business conditions, and guide you through the negotiation.

Litigation / trial

If the negotiation with the opponent fails, we move forward to take a specific legal measure, namely, litigation (or arbitration).  In Japan, infringement litigation legally requires involvement of a lawyer.  We handle litigations in cooperation with affiliated lawyers specializes in IP fields and has a wealth of experience and achievements.

When the opponent files an invalidation trial or a cancellation trial with the JPO as a countermeasure, such a trial held in the JPO legally only requires a patent attorney.  We therefore handle the trial without an involvement of a lawyer.

Legal proceedings and trial procedures require a high level of expertise.  We present clear and thorough explanations of each procedure undertaken and its legal meaning, and make sure to confirm your consent in every step.   In large IP disputes, negotiation and litigation based on the family IP rights may proceed in parallel in and out of Japan.  We proceed such negotiation and litigation pertaining to Japanese IP rights while duly exchanging information and opinions with foreign IP law firms who handle the negotiations and litigations out of Japan.

Conclusion of agreement
Conclusion of agreement

Not only when the negotiation is settled but also when a decision is obtained in litigation, an agreement should be concluded with the opponent depending on the nature of the case.  We carefully draft an agreement to expressly state the rights and obligations of both parties.  For further precaution based on our past experiences, we make sure that the agreement includes clauses to eliminate future problems after the agreement is concluded and also clauses to duly solve unexpected problems should they occur.

If you are alleged for infringement

If you are alleged for infringement
First consultation / response
First consultation / response

If you receive a warning letter stating that your goods or services are infringing IP rights owned by a competitor, or if you find your goods or services may be infringing a competitor’s IP rights, please contact us at Nagoya International Patent Firm.  We assess the warning letter and ask your side of story to comprehensively understand contentions and demands of the competitor, on which we conduct a brief validity analysis.

Please note that, depending on the nature of the rights of the competitor and the information we are provided at the time of the first consultation, some cases may not be suitable (or immature) for a brief analysis or may require more cautious and slow approach by a thorough analysis.

Expert opinion

Our attorneys specializing in the field of your case provide you with an expert opinion (thorough analysis) on how likely the court determines that your goods or services are infringing the IP rights owned by the competitor, in consideration of the contentions addressed in the warning letter.

If we reach an opinion that the likelihood of receiving an unfavorable determination by the court is higher than a certain level, we move on to consider measures (workaround plans) to avoid such determination.

Invalidity search, etc.
Invalidity search, etc.

Followed by the negative outcome of thorough analysis, we start an investigation and discussion to find possibilities to invalidate the opponent’s (competitor’s) rights and/or to make legitimate claims such as a claim of prior user’s rights.  Our invalidity search is conducted as required.

PATENT SEARCH DO SERVICE
Elaboration of negotiation strategy

If you already received a warning letter, let us analyze it and make a professional assumption of real demands of the right holder that do not appear in the text of the warning letter.

We also consider how to respond to the warning letter and what to claim depending on the counter-response from the right holder in addition to immediate claims.  We also consider how to collect evidence that supports your claims and conduct the collection of the evidence, for which we may need your help.

To elaborate an appropriate negotiation strategy, it is indispensable we closely communicate with you to comprehend and confirm your requests and goals.  For such close communications, we conduct face-to-face communications through web meetings in English in addition to letters and emails, so that we correctly comprehend your true demands and provide answers to your questions in the course of proposing negotiation strategies. We make sure you select your strategy with an absolute satisfaction.

Members in our firm are very experienced in handling international cases outside of Japan, which made us specialized in IP systems and customs of IP practices of many foreign counties, which benefits our international clients entrusting us with negotiations pertaining to Japanese IP rights.  We are capable of intelligibly explaining the differences in systems and practices between Japan and foreign countries in our proposals for practical approaches in negotiations.

We are also highly skilled in communicating with clients who have cultural backgrounds different from Japan and able to provide a smooth and comfortable interactions.  Web meetings will be attended by those of us who have a deep knowledge of patent systems, fluent verbal and written communication skills in English, and high level of intercultural communication skills to provide you with very satisfactory experiences of our negotiation support.

Negotiation
Negotiation

A general action in response to receiving a warning letter is to respond to the warning letter.  We cautiously formulate a response to make your claims comprehensible for the right holder.

The basic principle of negotiation is to take a resolute attitude based on your negotiation strategy.  However, if you wish to reach a negotiated agreement with the opponent outside of the court, we hear contentions of the opponent and convey them to you and make sure you find a point of agreement where both you and the opponent can agree.  We flexibly update our negotiation strategies in accordance with surrounding factors, such as the progress of the negotiation and changes in your business conditions, and guide you through the negotiation.

It is our absolute principle that you do not sign for an unreasonable agreement.  We may propose to stop the negotiation when we find that the contentions of the right holder are far beyond reasonable limits or the demands of the right holder are too excessive to agree.

Litigation / trial

Although it should be avoided as much as possible, if the right holder takes a legal measure, namely, litigation (or arbitration), you are required to make a response.  In Japan, infringement litigation legally requires involvement of a lawyer.  We handle litigations in cooperation with affiliated lawyers specializes in IP fields and has a wealth of experience and achievements.

As a countermeasure against the right holder, we may file an invalidation trial or a cancellation trial.  Such a trial held in the JPO legally only requires a patent attorney.  We therefore handle the trial without an involvement of a lawyer.

Legal proceedings and trial procedures require a high level of expertise.  We present clear and thorough explanations of each procedure undertaken and its legal meaning, and make sure to confirm your consent in every step.   In large IP disputes, negotiation and litigation based on the family IP rights may proceed in parallel in and out of Japan.  We proceed such negotiation and litigation pertaining to Japanese IP rights while duly exchanging information and opinions with foreign IP law firms who handle the negotiations and litigations out of Japan.

Conclusion of agreement
Conclusion of agreement

Not only when the negotiation is settled but also when a decision is obtained in litigation, an agreement should be concluded with the opponent depending on the nature of the case.  We carefully draft an agreement to expressly state the rights and obligations of both parties.  For further precaution based on our past experiences, we make sure that the agreement includes clauses to eliminate future problems after the agreement is concluded and also clauses to duly solve unexpected problems should they occur.

名古屋国際特許業務法人

Nagoya Main Office

Meishin Bldg. 2F&3F,
20-19 Nishiki 1-chome, Naka-ku,
Nagoya, Aichi 460-0003 JAPAN

+81-(0)52-203-1001

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Tokyo Branch

Nagata-cho Hoso Bldg. 9F,
2-21 Akasaka 2-chome,
Minato-ku, Tokyo 107-0052 JAPAN

+81-(0)3-3568-3023

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