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CONTACT

HARAKENZO
WORLD PATENT & TRADEMARK


OSAKA
HEAD OFFICE

DAIWA MINAMIMORIMACHI BLDG.,
2-6, 2-CHOME-KITA, TENJINBASHI,
KITA-KU,OSAKA 530-0041 JAPAN
TEL:+81-6-6351-4384
(Main Number)
FAX:+81-6-6351-5664
(Main Number)
E-Mail:

TOKYO
HEAD OFFICE

WORLD TRADE CENTER BLDG. 21 F,
2-4-1, HAMAMATSU- CHO, MINATO-KU,
TOKYO 105-6121,JAPAN
TEL:+81-3-3433-5810
(Main Number)
FAX:+81-3-3433-5281
(Main Number)
E-Mail:


HIROSHIMA
OFFICE

NOMURA REAL ESTATE HIROSHIMA BLDG. 4 F, 2-23 TATEMACHI, NAKA-KU, HIROSHIMA CITY, HIROSHIMA 730-0032, JAPAN
TEL:+81-82-545-3680
(Main Number)
FAX:+81-82-243-4130
(Main Number)
E-Mail:


In the background of the HARAKENZO trademark is a global map wherein countries/regions are sized according to the number of patents registered there in 1991.

Privacy policy


Contract Consultation
Chief of the Contract Consultation : Patent&Trademark Attorney Kazunori TAKEDA
OSAKA HEAD OFFICE : Patent&Trademark Attorney Akinori HACHIYA
TOKYO HEAD OFFICE : Patent&Trademark Attorney Tomoharu ISHIGURO
TOKYO HEAD OFFICE : Patent&Trademark Attorney Yuki YAMAZAKI
HIROSHIMA OFFICE : Patent&Trademark Attorney Shinji IMANO
HIROSHIMA OFFICE

: Patent&Trademark Attorney Naoyuki TAKENO
TOKYO TEL
: 03 - 3433 - 5810
OSAKA TEL
: 06 - 6351 - 4384
TOKYO FAX
: 03 - 3433 - 5281
OSAKA FAX
: 06 - 6351 - 5664
E-mail
:
E-mail
:
HIROSHIMA TEL
: 082 - 545 - 3680
 
 
HIROSHIMA FAX
: 082 - 243 - 4130
 
 
E-mail

 

1. Greeting

Quite some time has passed since Japan's initial push to become a leader in intellectual property. Since then, in addition to the actual obtaining of IP rights, a focus has been also placed on the effective protection and utilization thereof. Contracts play an undeniably important role in all three of these - the obtainment, protection, and utilization of IP rights.

Contracts are an essential part of our society. While we might not draw up a contract for simple transactions at a convenience store, for example, we do enter into contracts for large purchases, such as when buying a car or house. In the field of IP as well, where effective utilization of IP can yield immense earnings, written contracts are crucial. When licensing or transferring IP rights, failure to put a contract into writing can lead to a multitude of problems - just one example being the inability to receive one's rightfully deserved benefits.

In order to avoid such problems, it is necessary to utilize contracts that are optimized to one's unique business goals and which maximize one's benefit in each IP-related endeavor, whether it be obtainment, protection, or utilization. This requires legal advice which not only facilitates the realization of one's business goals, but which also helps one circumvent potential legal disputes and ensure that damages are kept to a minimum even if problems should arise.

Our firm's services do not stop at support mere legal consultation. Our experts strive to serve as business strategy advisers, providing individually-tailored advice from an IP strategy standpoint in order to help our clients succeed in realizing their unique business goals.

Our firm has previously established a "Technology Transfer & Licensing Service Consultation" service to provide advice on various contracts involved with technology transfer. However, utilizing a company's IP to its fullest potential requires comprehensive analysis and an integrated approach that accounts for patents, trademarks, and design, as well as the Unfair Competition Prevention Law and Copyright Law. To this end, we have also established a separate "Contract Consultation" service.






2. What Are Contracts?

2.1. Definition

A contract can be defined as a voluntary agreement between two or more parties which creates obligation therebetween*1.

  • A. Agreement (congruence of expressed intent)
  • B. Creates obligation

*1 Obligation means that an obligee has a right to demand, for example, a specific amount of payment from a specified obligor, and the obligor has a duty to pay the specified sum to the obligee.




2.2. The purpose of contracts:

・ To render an agreement legally binding.

  • "Legally binding" means that a person who fails to keep an agreement can be forced to do so by a court of law. The basis for this legally binding power lies in the modern liberalist value judgment that a person should be obliged to keep an agreement entered into by his/her own free will*2.

*2 Agreements determined to have not been entered into by free will not be acknowledged as legally binding.




2.3. Establishment of contract
  • ・ Congruence of intent is sufficient to establish a contract, and thus a written document is not necessarily required*3.
  • However:

  • ・ With no written record, proving the details of the contract will be difficult should a dispute arise later.
  • Therefore:

  • ・ Normally, an agreement is put in some form of writing, regardless of whether the document is titled with the word "Contract."*4

*3 Some contracts, such as guarantees, are required to be in writing (Japan's Civil Law, Article 446(2))

*4 Courts of law have shown a tendency to deem a contract as nonexistent unless it has been written in some form.

    Characteristics of a Written Contract

  • 1. A document expressing a business agreement between two or more parties (mainly corporations)
    Cf. the recorded minutes of a meeting - merely a record and not an agreement
  • 2. Creates legal obligations
    Cf. a written expert opinion - merely a statement of opinion
    Thus, a written contract is a means of directly proving the existence of the contract (i.e., the agreement between parties) in the event that a party is in breach thereof. A written contract makes it possible to request a court of law to enforce observance or demand payment of damages from a violating party.





3. Contracts and Intellectual Property

A company's business activities and IP are related as in the diagram below illustrating the cycle of IP creation. Listed on the right side of the diagram are IP-related contracts that become important at each stage of the cycle. It is important to note that confidentiality contracts regarding IP-related technical matters and trade secrets are an absolute must. (It is possible to stipulate confidentiality requirements in each individual contract, but establishing a confidentiality contract in the initial stages of negotiations is an effective strategy.)







4. Points of Caution When Drafting Contracts

4.1. From a business risk management standpoint:

First, clarify the intended business relationship.

  • For market expansion:
    Use local subsidiary, or license to business partner?
  • For market entry:
    Receive IP assignment, or licensing?

Analyze of potential business risks prior to contract

  • Market analysis, selection of contract partner, confirmation of status of patent rights in intended country of operation, etc (operational risks)
    – Risk of information leaks, loss of market
    – Clearly distinguish what should and shouldn't be divulged
  • Identify potential future problems (legal risks)
    – Clarification of burdens of respective parties in the event that problems arise
    – Consideration of necessary obligations (obligation of various notifications, prohibition of sublicensing, etc.)



    The contract drafting process

  • 1. Establishing specific clauses based on the business goals (from the aforementioned standpoint of risk management)
  • 2. Addition of necessary general clauses (cancellation conditions, period of contract, governing law and judicature, nondisclosure clauses)
  • 3. Confirmation that all conceivable risks are addressed



4.2. Binding Effect of Contract
  • A contract must be worded clearly. Unclear wording could cause later disputes over the meaning thereof or cause one to be held to terms and conditions differing from those originally intended
  • Regarding wording
    As a basic rule, wording that can be construed in multiple ways is to be avoided.
    Wording that can be understood only by the involved parties should also be avoided.



4.3. Relations between contract terms and laws
  • With regards to binding effect of a contract, matters that are not specified in the contract are handled in accordance with the provisions of relevant laws and regulations, such as patent law or civil law.
  • As a general rule, a contract may include terms that differ from the stipulations of relevant laws and regulations. Caution is necessary, however, as there are compulsory provisions, such as antimonopoly laws, which must be observed.


    Partial list of Japanese laws and compulsory provisions related to IP contracts:

  • Patent Law, Article 73 (Jointly owned patent right)
  • Patent Law, Article 127 (Licensee consent to request trial for correction)
  • Antimonopoly Law, Article 21 - Application of Antimonopoly Law with regards to acts deemed as being an exercise of the Patent Law in form but not in substance.*5

*5 Types of acts to which the Antimonopoly Law applies are (i) private monopoly, (ii) improper restriction of trade, and (iii) unfair business practice.



  • Necessity of Considering Tax Agreements

    In a licensing agreement between a Japanese and non-Japanese corporation, the burden of tax withheld upon payment of royalties becomes an issue. This issue requires consideration of any tax agreements between the respective countries of the parties to the licensing agreement.*6

*6 Note that parties to a contract must abide by tax provisions, whether stipulated in international tax agreements or domestic law.




4.4. Governing law (in cases where Japanese law serves as governing law)
  • Governing law refers to which country's laws apply in case of a dispute etc. over juristic relation pertaining to private law (e.g., contracts) wherein international dealings are involved. In contracts, the parties thereto are, as a general rule, allowed to select the governing law voluntarily.
  • In a contract between a Japanese and non-Japanese corporation, the laws of Japan may be chosen as the governing law. In such a case, it becomes necessary to confirm whether the contract may be in violation of the Japanese Antimonopoly Law or other compulsory provisions. It is also important to identify what legal issues may arise in the case of a breach of contract. Our firm can perform thorough confirmation of these issues to help you avoid potential legal trouble.





5. Types of IP-Related Contracts Our Firm Handles

For details, please see the relevant linked page.


  • 1. Non-Disclosure agreements
  • 2. Joint development agreements
  • 3. Software development entrustment contracts
  • 4. Joint patent application contracts
  • 5. Patent & know-how licensing agreements
  • 6. Software licensing agreements
  • 7. Trademark/design licensing agreements
  • 8. Copyrighted work licensing agreements
  • 9. Character licensing agreements
  • 10. Patent assignment contracts
  • 11. Trademark/design assignment contracts
  • 12. Copyright assignment contracts
  • 13. Contracts regarding rights/permission to publish copyrighted works





6. Why Choose HARAKENZO for Contract Drafting/Review?

  • ・ Expert knowledge in technical fields
    Contracts involving complex technical content require a proper understanding of specialist terms and wording used in the relevant field. HARAKENZO has on staff a large number of experts in fields such as mechanics, chemistry, biotech, physics, medicine, and more.
  • ・ Strategically effective clauses
    Strategic effectiveness is an essential element of every contract. Our experienced "business strategy advisers"*7 remain constantly mindful of this fact in order to provide our clients with strategically sound contractual clauses.
  • ・ Multilingual Translations by Our Fully Staffed Translation Department
    Our firm employs an in-house team of translators - including non-Japanese native speakers and Japanese staff who have graduated from foreign universities - who can handle English, Japanese, Chinese, Korean, French, and German translations.
  • ・ HARAKENZO's Legal Department
    HARAKENZO also includes a Legal Department to handle IP-related work outside the technical fields of patents and utility models. Not limited to just trademark and design applications, our Legal Department utilizes its expertise in Japanese civil law and civil procedure to handle a large number of cases involving copyright infringement, unfair competition, and all manner of IP-related issues.

*7 Our firm has registered the term "ビジネス戦略参謀" (meaning “business strategy advisers”) as a Japanese trademark.






7. Fees

Since fees will vary from case to case, our firm will provide an estimate based on your individual needs. Alternatively, if you inform us of a general budget beforehand, we can also provide services within your indicated range.





Staff


Chief of the Contract Consultation
Osaka Legal Department Trademark Division Manager
Legal Department
Patent&Trademark Attorney / Specially Qualified Attorney For Infringement Litigation
Researcher
Kazunori TAKEDA
Kazunori TAKEDA Majored in science of business law.
Specialized in design, trademark, copyright, computer program registration, semiconductor circuit layout-design registration.

As a patent attorney, I feel a great responsibility for establishing and protecting our clients’ important intellectual property rights.
I will make every effort to be of great assistance to our clients.
Osaka Legal Department General Manager
Patent&Trademark Attorney / Specially Qualified Attorney For Infringement Litigation
Adviser
Akinori HACHIYA
Akinori HACHIYA Akinori HACHIYA, born in 1978, graduated from the Law Department of Doshisya University. His specialty covers Design, Trademark, Copyright and Unfair Competition Prevention Law. He is presently a member of JPAA.

Intellectual property becomes more and more important these days. Under the circumstances, I窶冦 doing my best everyday with responsibility and pride in handling IP cases.
I will make every efforts to meet the demands of our clients.
Tokyo Legal Department General Manager / Tokyo Legal Department Design Division Manager
Patent&Trademark Attorney
Researcher
Tomoharu ISHIGURO
Tomoharu ISHIGURO Mr. ISHIGURO, born in 1980, is a bachelor of economics
He is mainly in charge of Trade Mark, Design, and Unfair Competition Prevention Act.

I would like to build such a relationship with clients that the clients can ask for consultation without hesitation, by maintaining mutual exchange of views on regular basis. I will continue to devote myself to:

窶「 Speedy commitment for satisfaction of clients
窶「 Result truly desired by clients

Tokyo Legal Department Trademark Division Manager / Legal Department
Patent&Trademark Attorney
Adviser
Yuki YAMAZAKI
Yuki YAMAZAKI Born 1987
Majored in law at Nihon University
Specialties: Design & Trademark

The environment surrounded by intellectual property is increasing daily on a worldwide scale. Bearing that in mind while always in accordance with the expectations of the client, I will work hard to grow and improve my skills.
DEPUTY DIRECTOR GENERAL << in charge of physical fields >>
In charge of Hiroshima Office
Patent&Trademark Attorney / Specially Qualified Attorney For Infringement Litigation
Specialist
Shinji IMANO
Shinji IMANO Shinji IMANO, BS in Mechanical Engineering from the University of Tokyo, researched in Mechanical Engineering and Combustion Engineering of diesel engines.
After graduating from the university, he worked for a private automotive company and involved in technical management of production facilities.

Following this, he joined HARAKENZO WORLD PATENT & TRADEMARK, and began to be involved in the prosecution of domestic and foreign patent cases in the field of Physics.
After qualifying as a Patent & Trademark Attorney and becoming a Specially Qualified Attorney For Infringement Litigation, he widened his field of practice to include expert testimony, and consulting services and so on.

"As a high school student, I made up my mind to provide the technologies useful for people. To accomplish the goal, I believe it is essential to provide long-term satisfaction to all of our clients. I'll do my best with honesty to combine all of the abilities of each staff member of our firm, in order to provide excellent services that cannot be obtained through mere combination of individuals窶・abilities."
Representative of Hiroshima Office
Patent&Trademark Attorney
Researcher
Naoyuki TAKENO
Naoyuki TAKENO Mr. TAKENO, born in 1970, holds a bachelor’s degree in material engineering.
He is mainly in charge of machinery, control, electricity & electronics, and information technology.

With the recent growth of importance of intellectual property right, it has been essential to construct an appropriate intellectual property strategy from the technical and legal points of view. Under this circumstance, I will continue to develop myself in order to be able to sincerely respond to our clients’ requests.

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