KENSAKU YAMAMOTO Attorney-at-Law, is the Owner of the Firm. He joined the Firm in 2011. His legal practice includes intellectual property litigation, appellate, health regulatory, technology contracts and licensing and other IP-related commercial matters. he also advises clients on all types of commercial and contract contentious and non-contentious matters, including complex commercial and contract disputes, licensing, merchandising and transactional, patent, trademark, design and other commercial and IP litigation, and research and technology collaboration.
Professional Experience
Mr. YAMAMOTO has represented clients in patent litigation proceedings before the Supreme Court of Japan, the Intellectual Property High Court of Japan and the Tokyo and Osaka District Courts. Some of his representative infringement cases include a patent infringement suit before the Tokyo District Court and the Intellectual Property High Court regarding medical products on behalf of an international pharmaceutical company, a patent infringement suit before the Osaka District Court on recombinant DNA on behalf of an international biotechnology company, and a trademark infringement suit before the Tokyo District Court on behalf of an international PC manufacturer.
Mr. YAMAMOTO has also represented patent & trademark clients in de novo reviews of JPO Board of Appeals' decisions at the Intellectual Property High Court.
Mr. YAMAMOTO counsels clients on intellectual property matters including the strategic development of patent and trademark portfolios, technology licensing, risk assessment, for example, via clearance surveys, non-infringement and invalidity analyses, and the enforcement of patent and trademark rights. He has extensive experience in the Japanese, United States, European and worldwide patent, trademark and intellectual matters in all areas of biotechnology, chemistry, biopharmaceuticals, medical devices, and electronics.
Ken also has expertise in complex contract and commercial legal matters where he provides advice and guidance to purchasers, vendors, lessors or lessees of goods and services when disputes arise as to quality, price, compliance with specifications, warranties, merchantability or delivery issues while a transaction or exchange is ongoing. He advises both plaintiffs and defendants in a wide variety of contractual and commercial disputes, including those involving general business; manufacturing; electronic parts; OEM; pharmaceuticals; energy; hardware and software technology; Internet-based and new media businesses; and wireless communications; confidentiality and professional service industries.
Ken also has experience in counseling and representing corporate clients on all of their Japanese legal needs arising out of their day-to-day business and corporate operations as well as internal management issues. He advises on general corporate governance & corporate compliance issues with a particular focus on technology start-ups, joint ventures, health regulatory, intellectual property, and technology-related transactions and corporate matters.
He also leads our Corporate, Commercial & Trade Practice with expertise in Agency & Partnership, International Corporate Transactions, Civil Rehabilitation, Internal investigations, Commercial Agreements, Litigation, Corporate Insolvency & Recovery, Privacy and Security, Compliance, Corporate Finance, Venture Capital, Project Finance, Corporate Reorganization & Insolvency, Product liability & Safety, Creditor/Debtor Representation Projects – Public/Private partnerships Cross-border Insolvency Special Liquidation, Distribution, Franchise & Dealership, Sports, Travel & Leisure, Employment & Labor, Tax Export & Import controls, Trade regulation and Government approvals.
He also leads our Regulatory – Healthcare, Energy, Food & Consumer Practice with expertise in Accreditation, Licensing and Certification, Antitrust, Advertising & Labeling, Clinical Trials, PMDA, Compliance, Import & Labeling regulations, Contracting, Corporate Governance, Cleantech and renewables, Due Diligence, Energy, Environment, Food, Beverage, Cosmetics & Dietary Supplements, Fraud and Abuse, Government Investigations, Health Care Compliance/Regulatory Counseling, Health claims, nutrient content claims, Litigation, Life cycle management, Pharmaceutical Affairs, generics, Mergers, Acquisitions, Privacy and Security/Compliance, Product liability, Reimbursement and Tax-Exempt Organization Issues.
Prior to joining the Firm, he also previously an Intellectual Property and Corporate Attorney (from 2005 to 2011) with a leading general practice which had approximately 300 Japanese lawyers (bengoshi), where he primarily handled intellectual property litigation, counseling and licensing matters, health regulatory, technology contract, advertising, marketing, premiums, representations and promotions, labeling, technology, media, telecommunications, anti-monopoly and general IP-related commercial matters for life sciences, pharmaceutical, semiconductor and electronics industry clients.
After obtaining a Masters of Law degree from University of Southern California School of Law (LL.M.) in May 2012, he gained U.S. legal practice experience at one of the U.S. largest law firms headquartered in Northern California.
Representative Matters
Individual v. Hitachi (Tokyo District Court and IP High Court, 2012), a suit for compensation for an employee's invention on integrated circuits on behalf of Hitachi;
Prosite v. Hewlett-Packard (Tokyo District Court, 2011), a trademark infringement suit on behalf of Hewlett-Packard;
Kureha v. Mylan (Tokyo District Court, 2009), a patent infringement suit on medical products on behalf of Mylan;
In re Wyeth (IP High Court, 2009), a revocation suit against the JPO trial decision on a patent term extension on medical products;
Mizuno v. Louisville Slugger (Tokyo District Court, 2008), a patent infringement suit on sports equipment on behalf of Louisville Slugger;
Euroscreen v. Ono Pharm. (Osaka District Court, 2008), a patent infringement suit on recombinant DNA on behalf of Euroscreen;
In re Chiron (IP High Court, 2008), a revocation suit against the JPO trial decision on the patentability of a patent on cultivar improvement;
Trace Storage Technology v. Nippon Light Metal (Tokyo District Court, 2008), a suit for damages based on a violation of a supply agreement on behalf of Trace Storage Technology;
In re Agrigenetics (IP High Court, 2007), a revocation suit against the JPO trial decision on patentability of a patent on genetic recombination; and
In re Heart (Tokyo District Court, 2007), a revocation suit against the administrative disposition on agrichemicals by the Japanese Ministry of Agriculture, Forestry and Fisheries.
Representative Settlements
A patent infringement suit before the Tokyo District Court in 2010 on genetic recombination on behalf of an international biotechnology company;
A preliminary injunction action before the Tokyo District Court in 2010 based on a violation of the Anti-Monopoly Act on behalf of a Japanese major chemical company;
A patent infringement suit before the Tokyo District Court in 2009 on facsimile machines on behalf of a Japanese major consumer electronics manufacturer;
A trademark infringement suit before the Aomori District Court in 2007 on behalf of a major Japanese convenience store chain;
A suit for damages arising from an violation of the Food Sanitation Act before the Tokyo District Court in 2007 on behalf of a Japanese major food company; and
A suit for a request for the confirmation of the right to receive a patent on integrated circuits before the Tokyo District Court in 2006 on behalf of an international microelectronics product manufacturer.
Publications
Mr. YAMAMOTO has contributed articles that have been published in leading IP law journals and publications like Dai-ichi Hoki, Seirin Shoin, and Managing Intellectual Property.
Conferences & Professional Activities
He has participated extensively at numerous domestic and international law conferences in United States, Asia and Europe.
Memberships
- Japan Federation of Bar Associations (2005)
- First Tokyo Bar Association (2005 - 2012)
- Osaka Bar Association (2012)
- Japan Patent Attorneys Association (2011)
- International Association for the Protection of Intellectual Property (AIPPI JAPAN) (2009)
Bar & Court Admissions
- Japan (2005)
- Japan Patent Office (2011)
Education
- Kyoto University, Bachelor of Pharmaceutical Science (1997)
- Kyoto University, Master of Pharmaceutical Science (1999)
- University of Southern California, Master of Laws (2012)