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Silver - Individuals: prosecution
With the recent opening of a Chinese office in Beijing, Tokyo-based one-stop IP firm Sonoda & Kobayashi continues to demonstrate that it has a global mindset. Its in-house translation squad provides services not only in Japanese, English and Chinese, but also in German and French. The team of patent experts comprises several PhD holders, researchers and former JPO experts. Managing partner and doctor of structural engineering Yoshitaka Sonoda has strengthened his technical know-how and knowledge of English and French during his time at Saclay Nuclear Research Centre. Now the litigator handles cases in the United States and Europe. “Doctor Sonoda has a spotless reputation, especially among international clients.”
As Sonoda & Kobayashi Intellectual Property Law’s primary patent litigator, Yoshitaka Sonoda handles appeals, invalidations and infringements before the Tokyo Intellectual Property High Court and the Supreme Court of Japan for companies and organisations in Europe and the United States. He is also the firm’s primary negotiator of licensing and trade secret agreements.
Dr Sonoda regularly gives seminars abroad on developments in IP practices in Japan at IP organisations and association meetings.
Dr Sonoda spent several years in France conducting research for the French Atomic Energy Commission. He has more than 30 years’ experience in intellectual property in Japan, including 10 years as a director of a major Japanese IP firm before founding Sonoda & Kobayashi. Under his leadership, the firm has gained an international reputation of reliability, high-quality work and smooth communication, and handles patent applications for many global companies.
Dr Sonoda holds a PhD in structural engineering from the University of Tokyo and a BS in structural engineering from Yokohama National University. He has expertise in nuclear technology, thermodynamics, electrical and mechanical engineering, liquid crystals, fluid mechanics, optics, computing, aeronautical and automotive engineering and electromagnetism.
He speaks Japanese, English and French.
Dr Sonoda’s publications include:
- “Comparing patent validity standards in invalidation actions at the EPO and JPO” (with Alison Santino), Patent Lawyer Magazine, March/April 2020;
- “Avoiding the Perils of Collaboration” (with Natalie Crick), World Intellectual Property Review, Annual 2017 Edition;
- “Japan’s IP High Court Takes a Stand Against Violation of Public Order and Morality for Trademarks” (with Diane Beylier), World IP Review, September/October 2012;
- “Amendments to Japanese IP Laws”, World IP Review, September/October 2011;
- “Drastic Changes Made to the Patent Law” (with Diane Beylier), Managing Intellectual Property, Asia-Pacific & Middle East 2010;
- “Controversy over Patent Term Extension”, Managing Intellectual Property, Asia-Pacific & Middle East 2009;
- “Speeding Up Patent Applications in Japan”, World IP Review, September/October 2009; and
- “Coping with the Latest Examination and Appeal Practices”, Managing Intellectual Property, February 2009.
Sonoda & Kobayashi Intellectual Property Law is a leading Japanese IP firm established in 1998 and located in central Tokyo. The firm was founded with the specific intention of creating a Japanese IP law firm with a global mindset, to foster stress-free communication and provide exceptional services. Since then, Sonoda & Kobayashi has stayed true to this goal. A unique philosophy and high standards have allowed the firm to exclusively represent leading global and domestic companies in a wide spectrum of cases, and to become one of the most trustworthy firms in Asia for the prosecution and enforcement of IP rights. In 2021 Sonoda & Kobayashi opened an office in Beijing, from where it directly presents global corporations in front of the China National Intellectual Property Administration (CNIPA).
Sonoda & Kobayashi understands the importance of protecting clients’ IP rights, and the impact that these rights have on international business. It offers one-stop services for the full range of IP matters, including patent drafting and prosecution, patent litigation, utility model application, design and trademark prosecution, as well as prior art searches and strategic patent portfolio analysis. Sonoda & Kobayashi’s high patent grant rate and litigation success rate highlight the firm’s dependability for IP protection in Japan and China. Further, the firm is committed to obtaining the strongest protection possible during prosecution, not merely settling for a grant.
Sonoda & Kobayashi specialises in electronics, physics, mechanical engineering, software and artificial intelligence, as well as chemistry, biology and pharmaceutical sciences. With clients spanning from individual inventors and start-ups to Fortune 500 companies, Sonoda & Kobayashi represents some of the most recognisable brands across the telecoms, industrial manufacturing and pharmaceutical industries.
Team
Sonoda & Kobayashi believes that reliable and excellent legal services in intellectual property can be provided only by having a deep understanding of complex technologies and legal issues, and this is reflected in the firm’s staff. Sonoda & Kobayashi employs more than 100 people, including 20 Japanese patent attorneys, 19 patent engineers, US and Chinese patent attorneys, former US patent examiners, US and Chinese attorneys at law, as well as many other specialised translators and support staff.
The majority of patent attorneys, engineers and technical staff at Sonoda & Kobayashi have advanced degrees in a wide range of technical fields, including 14 PhDs from prominent Japanese, Chinese and international universities. They possess technical expertise obtained from a range of backgrounds and sectors, in roles as researchers, engineers and in-house counsel at large international or Japanese corporations. Many patent attorneys and engineers also have hands-on experience, often gained directly on factory floors, which can make a crucial difference in difficult cases.
Sonoda & Kobayashi has a dedicated in-house translation team, including 23 technical translators, many of whom have specialist backgrounds. They provide swift and thorough translations between Japanese and English, French, German and Chinese and have implemented checking systems to ensure consistency with the high quality of the firm’s original work. Further, Sonoda & Kobayashi’s team consists of members from 13 different countries and can offer communication in nine languages, including Japanese, English, Chinese, French, German, Italian, Dutch, Russian and Uzbek.
International perspective
Foreign clients face significant legal and linguistic barriers when prosecuting and enforcing IP rights in Japan and in China. In order to help clients overcome these barriers, Sonoda & Kobayashi encourages an open-minded, culturally and linguistically unbiased approach underpinned by a thorough knowledge of international patent law and technology.
In response to the issues encountered by international companies that choose to protect their intellectual property in Japan and in China, Sonoda & Kobayashi has formed a dedicated international affairs department, which comprises international attorneys and businesspeople who bridge the gap between Asian and Western cultures and practices. The international affairs department ensures that international clients benefit from clear communication and transparency, fostering mutual understanding through a client-focused and adaptable service.
Sonoda & Kobayashi is committed to continually ensuring that clients understand their IP protection situations in Japan as well as in China and benefit from the best possible patent strategy. To that end, the firm provides an annual patent portfolio analysis for clients, comparing their patents with those of competitors and offering valuable business insights.