TMI Associates has 86 patent and trademark attorneys (benrishi) in addition to 493 attorneys at law (bengoshi). These professionals – together with 95 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.
86 patent and trademark attorneys (benrishi),
45 electronical and mechanical attorneys, 20 chemical, biotechnology and pharmaceutical attorneys 21 trademark and design attorneys; and
80 IP lawyers (bengoshi).
Out 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 2,600 trademark, 2,500 patent and 400 Design applications 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
Entertainment and sports law
Protection of know-how and trade secrets
Prevention against unfair competition
Resolution of disputes arising from IP licensing agreements
IP due diligence upon acquisition, merger or listing on stock exchange
Since the establishment of our firm in 1891, we have evolved through five generations into the oldest and one of the most experienced IP firms in Japan offering a one-stop shop solution for all IP needs. We take pride in delivering exceptionally high quality, handling both inbound and outbound cases, with more than 31 patent attorneys covering technical fields ranging from mechanical engineering, ICT to chemical/biotechnology. Our practice also covers all aspects of trademark and design matters.
Depending on each case, we appoint the right patent or trademark attorney to act on behalf of our clients to ensure that each case is successful.
We are an IP Litigation powerhouse for technology, life sciences and health technology in patents, trade secrets and commercial litigation with unparalleled trial success at all levels at each forum and venue. Our approach integrates our practices to provide businesses with comprehensive intellectual property protections. Our litigation expertise and experience also gives us an edge in advising our clients on the likely outcomes of litigation, including in the context of corporate acquisitions and portfolio management. Our approach, which supports “small firm” key partner attention with the “large firm” resources ensures our clients receive effective and efficient representation at every stage of the case. We are committed to helping clients structure the most comprehensive and workable enforcement and defense for all aspects of their intellectual property.
Bench and Jury Trials at the U.S. District Courts
We have litigated and counseled on patent and trade secrets issues across a wide range of industries, including software, hardware, electronics, chemical processes, telecommunications, consumer goods, manufacturing, sales, financial services, and pharmaceuticals.
We are also experts in §101 invalidity challenges with a near-perfect record in district court and the Federal Circuit, pursuing and obtaining attorneys’ fees, and obtaining wins in Federal Circuit appeals.
We are experts in the nuances of life sciences patent litigation, including Hatch-Waxman Act and biosimilars patent litigation under the Biologics Price Competition and Innovation Act, and the intersecting FDA regulatory regime in which these cases operate.
We have handled over 400 post-grant proceedings before the U.S. Patent Trial and Appeal Board, on behalf of both petitioners and patent owners across a wide range of industries.
Our attorneys have been hailed as ones who can be “trust[ed] . . . with crown jewels, and have been described as “PTAB mastermind[s],” “PTAB trial guru[s],” knowing the PTAB “like the back of [their] hands,” and “understand[ing] all the rules and subtleties of IPR proceedings better than anyone I’ve ever worked with.”
Our attorneys worked on the first ever PTAB proceeding on the technology side and also led the first ever successful defense of a pharmaceutical patent.
ITC Section 337 Investigations
We represent both complainants and respondents, and have been at the forefront of recent cutting-edge decisions at the ITC.
We have served as counsel in more than 60 Section 337 Investigations, and have appeared before each of the Presiding Administrative Law Judges (ALJs), including multiple successes before Customs in ensuring our clients’ products are not excluded from the United States.
We represent clients in all aspects of litigation related to arbitration, including bringing and defending motions to compel arbitration, obtaining and opposing interim and protective measures in aid of arbitration, seeking and opposing recognition of arbitral awards, seeking and opposing the annulment of arbitral awards, and disputes over the taking of evidence in the US in aid of international arbitrations and foreign litigation.
We regularly draft, advise, and teach courses on the drafting and interpretation of arbitration and forum-selection agreements in circumstances ranging from simple two-party deals to complex commercial transactions involving multiple parties, jurisdictions, and applicable laws. We recognize that each matter is unique and strive to meet our client’s objectives in the most cost-effective manner.
Supreme Court and Appellate Review
We have top-notch appellate capabilities and can handle an IP litigation matter from start to finish.
Our lawyers are skilled in the art of written and oral advocacy, as well as in simplifying technical arguments for generalist Federal Circuit judges.
We devote our practice to the craft of conceiving and presenting argument on complex, law-intensive issues, bringing to bear our many years of experience in areas of law that cut across traditional legal disciplines, such as constitutional interpretation, damages, procedure, and jurisdiction.
Hiroe and Associates has been providing intellectual property legal services since Takenori Hiroe founded the firm in 1979. Takenori Hiroe graduated from Gifu University with a degree in textile engineering in 1971, and then began working in research and development at Japan Vilene Company Ltd in Tokyo. He obtained his patent attorney’s license in 1978, and in 1979 he returned to Gifu to open his practice.
Since then, it has grown into an organization with clients and associates all over the world. With the success of its international section attributable to the individual skills of each section member, the firm’s service continues to perform and improve. In 2011, Chairman Takenori Hiroe received a Medal of Merit award from the Emperor of Japan, personally recommended by the JPO Commissioner, for his long-time services as a patent attorney.
Led by Takenori Hiroe, the team of experienced patent attorneys, technical specialists, administrative staff, and in-house translators is globally trusted by our clients due to our precision, speed, reliability, and cost performance, and is accomplished for demonstrating a skilled legal proficiency regarding all areas of intellectual property.
The firm has been voted as one of the top patent prosecution firms in Japan by various legal publications, magazines, and is continually practicing the firm’s management philosophy "to contribute to the growth and prosperity of the clients."