Negotiating License Agreements in Japan



About the Course:

This session provides a fantastic overview of key considerations for negotiating the licensing of patents, technologies and trademarks in Japan. Valuable insight is provided into how to best negotiate licensing agreements given the Japanese timelines, corporate decision making practices, risk intolerances, emphasis on long-term relationships, and aversion to litigation.

This session answers questions such as:

  • What are the pros and cons of writing the license agreements in English or Japanese?
  • What is the division of labor like in large Japanese companies in terms of IP professionals and internal lawyers?
  • What is the Japanese view of ascending / descending royalty structures?
  • What is the Japanese view of milestone provisions in licenses?
  • What is the Japanese stance on sublicensing rights?
  • What is the level of difficulty in conducting royalty audits in Japan?
  • To what extent are there registration requirements of licenses in Japan?

Other issues discussed include:

  • Protected Subject Matter
  • Differences Between Key Japanese and US IP Laws
  • Work for Hire and Employee Rights
  • Joint Ownership and Development Issues
  • Express and Implied Warranties
  • Indemnities
  • Dispute Resolution and Enforcement
  • IP and Antimonopoly Issues
  • Stopping Counterfeits
  • Tax Issues

Course Leader: David Case, Partner, White & Case LLP

David Case is an experienced intellectual property disputes and transaction attorney. His experience in Japan and New York includes a variety of intellectual property related matters on behalf of Japanese and non-Japanese clients. He has assisted with or been lead counsel in numerous litigations and arbitrations venued in the U.S. and Japan.

David joined White & Case’s New York intellectual property practice group in 1998 and permanently transferred to Tokyo in 2002. He was a summer clerk at a Japanese law firm in Tokyo in 1996. Prior to becoming an attorney, he worked for five years in Tokyo consulting to Japanese and U.S. software vendors and content developers entering the Japanese and US markets.

David has been recognized by international publications as a leading IP lawyer in Chambers Asia (2009) and a leading disputes lawyer in Chambers Global (2010) and by Asia Pacific Legal 500 (2010).

Course Length: Approx. 2.0 hours

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