Tomoki Ishiara

TOMOKI ISHIARA is the co-managing partner at Sidley Austin Foreign Law Joint Enterprise. His practice areas include legal advice on inbound investment for foreign investors (e.g., M&A, financial regulation, and compliance), regulatory advice and investigation for the healthcare industry, data security and privacy law, and commercial and IP transactions and dispute resolutions.

Tomoki is a member of the Global Life Sciences group for Sidley and has substantial experience advising on compliance programs and carrying out investigations (including assisting pharmaceutical or medical device companies in dealing with the FDA and other overseas regulatory authorities). 

Tomoki also has extensive experience in the field of inbound investment for foreign clients entering the Japanese market. He has regularly given legal and regulatory advice to foreign clients (including private fund clients) who wish to launch businesses in Japan or to invest in Japanese companies or real estate. 

Tomoki has knowledge on intellectual property law. Among other things, he was involved in a landmark trademark case where three-dimensional trademark was first recognized by Japanese court and in a patent case where a statutory reward to an employee invention with respect to fintech under Article 35 of the Patent Act was firstly disputed after the revision of Article 35. 

With regard to corporate law, his knowledge extends to legal advice and dispute resolution on employment, antitrust filing, and basic international tax matters.  

Representative matters include:

Corporate and Finance

• Representing an overseas company in acquiring the majority of shares of Japanese companies engaging in resort development activities.
• Representing an overseas commercial company in starting its business in Japan in the form of a joint venture with a Japanese major company.
• Advising an overseas investment management company in connection with the registration of a financial instruments business in Japan, which involved Japanese regulations on the sale and purchase of securities on a financial instruments exchange, filings with the Japanese financial regulatory authorities regarding the handling of private placements of foreign investment trusts, and personal information protection regulations.
• Representing a Japanese client in filing with relevant U.S. and European authorities for an international merger.
• Representing foreign clients in handling employment issues (including dispute resolution in connection with employment termination).

Restructuring

• Advising an international currency exchange service company on its financial and operational restructuring.

Compliance and Investigations

• Assisting a Japanese bio pharmaceutical company in replying to a warning letter issued by the Food and Drug Administration.
• Advising on licensing or regulatory matters for a number of pharmaceutical companies.
• Representing pharmaceutical companies in Japan in relation to numerous investigations.
• Representing medical device companies in Japan in relation to numerous investigations.
• Acting in an application for an injunction against medical activities due to the violation of a non-compete clause.
• Conducting an internal investigation in the Tokyo branch of a foreign bank after an administrative punishment order was handed down by the Financial Services Agency.
• Assisting in investigation and corrective actions for a U.S.-based accounting company in Japan with respect to violations of SEC regulations.

Intellectual Property

• Giving advice on patent, utility model, design patent, copyright, and trademark matters (including rules of reward to employee invention under Article 35 of the Patent Act).
• Engaging in negotiations and litigations (including actions to annul trial decisions at the IP High Court and trials for patent invalidation at the Japanese Patent Office).
• Dealing with rapidly increasing IT-related disputes arising out of system development or maintenance agreements (including litigation and specialized mediation).
• Representing patent holders in requesting an injunction order on the import of patent-infringing product into Japan at the Japan Customs.

• Reporter and Panelist, 2012 Annual Convention of the Copyright Law Association of Japan (50th Anniversary Convention) 
• Staff Attorney, 2013 Kyoto Convention of the International Literary and Artistic Association 
• Member, Committee on Examination of Intellectual Property Rights Violation Concerning Software, Etc., Software Information Center (SOFTIC), April 2015 
• Member, Subcommittee on License Royalty for Copyrighted Works (Cultural Agency of Japan)