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LAWYERS

Naoko NAKATSUKASA Partner
OSAKA
Admitted in Japan and New York

Practice AreasInternational transactions, intellectual property law, commercial law, civil law
EducationNorthwestern Pritzker School of Law, LL.M 2005 Kyoto University, Faculty of Law, LL.B 1992
LanguagesJapanese/ English
 

The 15th edition of The Best Lawyers in Japan™

Professional Experience and Expertise

Handles dispute resolution, negotiation and litigation related to corporate matters. Has significant experience in litigation and dispute resolution in intellectual property matters. Provides practical legal advice on cases involving patent, trademark, copyright, design and unfair competition law related issues. Has accumulated experience in international transactions, including building strategies and contracts drafting. Has worked as a board member for several listed companies at Tokyo Stock Exchange. Legal advice for various clients such as banks, financial institutions, pharmaceutical companies, real estate companies, trading companies and manufacturers.

Cases and Matters Handled

・ PD-1 Patent dispute and litigation as a leading attorney representing Ono Pharmaceutical Co., Ltd. against Professor Honjo, a Nobel Prize Winner in Physiology and Medicine (settled in Nov. 2021)
・ Representation in intellectual property infringement litigations, trials for invalidation and suits against decisions made by JPO
・ M&A cases under both Japanese and US
・ Drafting of various international transaction contracts
・ Drafting of various ship finance related documents
・ Japan-side discovery in US patent infringement litigation
・ Advice, negotiations relating to distributorship, licensing, joint research & development and other international transactions
・ Investigation of alleged corruption as a member of an independent committee

Professional Career

Sep,2024 to Present
Member, Compliance Committee of Kobe Steel, Ltd.

May 2023 to Present
Board Member (Director) of WADA KOHSAN Corpo

Jun. 2021 to Present
Mediator of Financial Instruments Mediation Assistance Center (FINMAC)

Jun. 2020 to Present

Board Member (Director) of YAMAZEN CORPORATION

Jun. 2012 to Present

Board Member (Director) of NAKABAYASHI Co. Ltd.

Apr. 2008 to 2021

Adjunct Instructor at Kyoto University Law School

Nov.2005

Passed New York State Bar

Aug.2005

Visiting attorney at Leydig, Voit & Mayer,Ltd (Chicago Office) ( – Jul. 2006)

May 2005

Graduated Northwestern Pritzker School of Law (IL, USA), LL.M

May 2002 – 2022

Board Member (Director) of SPK CORPORATION

Apr. 1994

Joined Chuo Sogo Law Office

Publications

Publication
“Chambers Global Practice Guides: Patent Litigation 2024 – Japan - Trends and Developments” (2024; co-author, CHAMBERS AND PARTNERS)
Publication
“How to consider an Invention’s effect on its intended uses in the examination of non-obviousness“ (IP Prism, 2020)
Publication
“Legal Consultation on Patents” co-author (Seirin Shoin, 2019)
Publication
"The International Comparative Legal Guide to: Patents 2022" (ICLG) Japan Chapter
Publication
"Legal Consultation on Unfair Competition " co-author (Seirin Shoin, 2016)
Publication
"Equivalent Infringement and Dismissal of Allegations Advanced Out of Time (IP Prism, 2015)
Publication
"Indirect Infringement on Non Exclusive Use Products and Exercise of An Injunction (IP Prism, 2014)
Publication
"6000 Lessons for Dealing with Legal Issues at the Bank Teller" co-author (Kinyu Zaisei Jijo Kenkyuka,2022)
Publication
"A Legal Guide to Doing Business in the Asia-Pacific" co-author (ABA, 2010)
Publication
"Trademark Licensing and Transfer Tax Taxation" co-author (Japan Licensing Association)
Publication
"United Nations Convention on Contracts for the International Sale of Goods and International Transactions" (Business Homu)
Publication
"Tax & Law: Transfer, Corporate Division, Share Transfer, Merger, Rehabilitation, Reorganization and Liquidation " co-author (Daiichi Hoki)
Publication
"Debt Collection Handbook, Execution Trouble Q&A " co-author (Keizai Horei Kenkyukai)
Publication
"Before You Enforce! Q&A on the Revised Mortgages and Charges Execution Law" co-author (Kinyu Homu Jijo, issue 1700)

Seminar

Seminar
Lecture at Japan Intellectual Property Association (JIPA) Tokyo and Osaka Area S1 Course ”Trade Secret Protection and Corporate Management”
Seminar
Spoke as a coordinator at JIPA Intellectual Property Symposium (February 27, 2015 at Tokyo International Forum)
Practice AreasInternational transactions, intellectual property law, commercial law, civil law
EducationNorthwestern Pritzker School of Law, LL.M 2005 Kyoto University, Faculty of Law, LL.B 1992
LanguagesJapanese/ English
 

The 15th edition of The Best Lawyers in Japan™