Tomohiro Yoneyama is a partner at Abe, Ikubo & Katayama, where his practice focuses on matters involving intellectual property as well as restructuring and insolvency/bankruptcy. Especially, he has been engaged in the following matters for both Japanese and non-Japanese clients.
1. Dispute resolution involving patents
・Representing clients in infringement lawsuits before the courts, invalidation trials before the Japan Patent Office and appeals to the Intellectual Property High Court, and import suspension proceedings before Japanese customs
・Representing clients in the above matters involving a variety of technology areas and industries, including mobile telecommunication devices, semiconductors, optical lenses, optical media and pharmaceuticals
2. Countermeasures against counterfeits
・On behalf of clients, sending cease and desist letters, asserting infringement of trademark rights or unfair competition.
3. Assistance on contract negotiations involving intellectual property
・Drafting license agreements
4. Restructuring and insolvency/bankruptcy
・Serving as trustees in bankruptcy proceedings (similar to those under U.S Chapter 7) and deputy trustees in restructuring proceedings (similar to those under U.S. Chapter 11), and filing petitions for commencement of bankruptcy proceedings
Japanese (first language), English
New York (2014)
Japan (2006)
- Litigation － The Best Lawyers in Japan for 2 consecutive years (2024 – 2025)
- Bronze – Individuals: litigation (Japan: Domestic) – IAM Patent 1000 for 2 consecutive years (2023 – 2024)
- Tier 3 (Recommended)－Dispute resolution (Japan) － Legal 500 (2024)
AIPPI
IPO (Intellectual Property Owners Association)
Network of Japanese Restructuring Lawyers
2013
New York University School of Law, LL.M.
2003
Keio University, LL.B.
2021 to date
Lecturer at Japan Intellectual Property Association (WU2 course)
2016 to date
Lecturer at Kobe University Graduate School of Law
2013-2014
Kirkland & Ellis LLP (Chicago), Visiting Attorney
2008-2009
Seconded to the Department of Justice of Japan, serving under the Counselor of Civil Affairs Bureau, as a fixed-term government employee
- April 2017
JP Supreme Court rendered decision on doctrine of equivalents (Abe, Ikubo & Katayama IP Newsletter) - April 2016
Protection of trade secrets by the Unfair Competition Prevention Act revised in 2015 (Patents & Licensing (Vol.45, No.6 (Issue No. 262))) - March 2016
Risks of lawsuits to be instituted by foreign shareholders in case stock prices fall due to scandals (Junkan Shoji Homu, No. 2095) - March 2015
Study of the Bankruptcy Act Vol. 3 - June 2014
Practice of drafting contracts and contract forms - August 2009
Interpretive issues after the commencement of the electronic book-entry transfers of shares (Junkan Shoji Homu, No. 1873) - August 2009
Summary of the Japanese State Immunity Act (Gekkan Minjiho Joho No. 275) - July 2009
Summary of the Japanese State Immunity Act (NBL No. 908)
- March 2024
Intellectual Property Symposium [JAPAN] (participated as a panelist, seminar hosted by DLA Piper) - February 2022
IP court’s decision update: Osaka District Court judgment dated September 28, 2021, which found directors’ liabilities for patent infringement caused by companies (seminar hosted by Abe, Ikubo & Katayama) - October 2020
Report on IP High Court Grand Panel judgment dated February 28, 2020 which applied Article 102, Para. 1 of the Patent Act awarding damages (seminar hosted by AIPPI) - July 2020
IP court’s decision update: IP High Court Grand Panel judgment dated February 28, 2020 which applied Article 102, Para. 1 of the Patent Act awarding damages (seminar hosted by Abe, Ikubo & Katayama) - October 2019
Trends and Updates in US IP Litigation (seminar hosted by Latham & Watkins and Abe, Ikubo & Katayama) - April 2019
IP court’s decision update: a case where indirect infringement was found (seminar hosted by Abe, Ikubo & Katayama) - July 2018
IP Court’s decision update: construction of antibody claims functionally recited (seminar hosted by Abe, Ikubo & Katayama) - May 2018
Recent amendment to IP laws and systems relating to big data (seminar hosted by Lee & Ko and Abe, Ikubo & Katayama) - July 2016
Preparation for securities litigation to be filed by foreign investors (seminar hosted by Financial Facsimile News) - October 2015
Tips on drafting Contracts (seminar hosted by Shoji Homu) - February 2011
Contract drafting 101 (seminar hosted by Nihon Keiei Kyokai)