1995–1998 Defending French Patent Rights in Japan (Breaches of Contract Resolutions)

Tadaaki Kimura’s mission to help foreign SMEs protect their IP in Japan was inspired, in no small part, by his first international client. In the mid-1990s, Kimura worked in a large Japanese IP law firm and was assigned to serve a French noncorporate inventor.

He turned out to be a famous architect who specialized in stages for theatres and opera houses. He had graduated from the faculty of architecture at the Sorbonne and oversaw the Scala Theater’s renovation in Milan.

When starting businesses in Japan, he sought to file his patents related to unique architectural technology. However, he became involved in a dispute with a couple of Japanese companies in the construction industry. Furthermore, his concept was used without authorization in the name of improvement technology.

The Japanese company imitated this French inventor, who had initially trusted Japanese companies and been ready to start businesses together. Since these incidents occurred, he developed a strong distrust of Japanese people and became quite cynical. While serving this client, there were several heated and passionate exchanges. However, Kimura understood the client’s frustrations and sympathized with his plight.

Kimura worked with the client to win the breach of contract through the reconciliation at the Tokyo High Court by receiving compensation for damages of nearly 100 million yen. However, although the concept of his invention was used, we could not, unfortunately, pursue the patent right infringement suit, even though we applied the doctrine of equivalents.

This case and many since have given Kimura and his team a keen awareness of how some Japanese companies can lack ethical awareness and international sensibilities.

Over the years, Kimura developed a friendship with this French inventor and visits his residence whenever he is in Paris.

Success Stories

2007-2009 Prevention of American Patent lawsuit and Invalidation Trial (Damages Settlement)

2018-2020 Utility Model Invalidation Defense at Three Levels Of Court (Damages Settlement)

2018–2020 Protecting Local Companies’ Trademark Rights in Japan

2000–2001 Defense of Japanese Company’s EPO Patent Opposition