Legal Opinions

We have very extensive experience in expert opinions on validity of patents and patentability of applications, and whether an item of interest is within the scope of the claims of a certain patent (patent application). Additionally, we have actively contributed to third-party organizations.   For example, we were assessors for MPEG IV, ARIB and the One-Blue license.

Furthermore, we offer not only expert opinions, but also business advice on intellectual property. We also provide second opinions on intellectual property cases that were handled by other firms.

Licensing

The differences between business culture in Japan and abroad is particularly prominent in license negotiations. Knowing the decision-making mechanisms in Japanese companies and reading between the lines are examples of essential skills in conducting successfully negotiation.  We provide advice on key social differences with assistance or representation of clients in negotiations and drafting agreements.

Note that we accept transfer of cases from other firms.

Due Diligence

We provide assistance, particularly relating to Japanese patents and patent applications, in carrying out due diligence for contracts and corporate M&A. The high level of technical and legal expertise of our patent attorneys and specialists allows us to provide assistance in appropriate risk assessments, including intellectual property status confirmation, evaluations of likelihood of grant and validity, evaluations of scope, and review of licensing agreements and employee invention-related rules.

Note that we accept transfer of cases from other firms.

Search

Our highly skilled patent attorneys and researchers have detailed knowledge of commercial databases and work together to perform searches. Searches of entire fields, including patent documents worldwide and non-patent documents, are possible.  We perform searches of prior art to assess patentability, infringement, and invalidation.  We provide simple reports that only show search results to highly detailed reports with analysis and expert opinion.  In our detailed reports including analyses and expert opinions, Japanese law is explained in an easy-to-understand manner.   We also handle simple requests, such as confirmation of status of a Japanese application or the monitoring of an application.

Annuity Payment Services

What do we offer?

Sonoda & Kobayashi can act as your payment agent for the payment of annuities/renewal fees in Japan.
These are fees that need to be paid to the Japan Patent Office (JPO) periodically in order to keep a patent, utility model, design or trademark active after it has been granted.

We can process large orders with hundreds of payments simultaneously, but also take care of a small number of cases on a systematic basis.
Our established procedures allow for efficiency and speed, while also adapting to the needs of individual clients.

What sets us apart?

  • Scalability
    For the most efficient and cost-effective processing of annuity/renewal payments, Sonoda & Kobayashi works with lists containing payment information. We can quickly scale-up to meet changes in the number of annuity payment requests sent by our client.
  • Reliability
    Using our software and qualified staff, we run a countercheck of the provided data against a database reflecting the JPO`s official data, to ensure all information is up-to-date. We report and correct differences between your order list and the third-party database.
  • Transparency
    We will send the client our initial payment confirmation, after which we will provide official receipts in digital or physical form, and offer our clients an overview of their monthly spending on official fees.

What does that mean for our clients?

Our clients benefit from a payment agent that reduces payment errors caused by incorrect data, and that clearly communicates the status of the payments.

Most importantly, our clients can profit from reduced prices the more cases they file with us.
The larger the volume of cases you ask us to handle, the better the price we can offer you.
Depending on the format provided, we can even give further discounts.