Post on 24-Apr-2020
2015/10/26
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Introduction of IPR Management
Patent Management in General
October 19, 2015
Tokyo University
Tatsuya ("Tatsu") SAITO
Patent Attorney
Table of contents
I. Lecture (30 minutes)
1. Purpose of Patent Management
2. Elements of Patent Management
2-A. Creation Management
2-B. Prosecution Management
2-C. Exploitation Management
2-D. Dispute Management
2-E. Infrastructure Management
II. Discussions (60 minutes)
1. Patent Management in General
2. Licensing Management
1. Purpose of Patent Management
“Maximization of profit from technical ideas”
2. Elements of Patent Management
2.
Prosecution
Manage.
1.
Creation
Manage.
3.
Exploitation
Manage.
4. Dispute Management
5. Infrastructure Management
Intellectual Creation Cycle
(Yoneyama, Watanabe, “IP Management Basics”, Nikkei Inc., 2004)
2. Elements of Patent Management
2.
Prosecution
Manage.
1.
Creation
Manage.
3.
Exploitation
Manage.
4. Dispute Management
5. Infrastructure Management
Intellectual Creation Cycle
(Yoneyama, Watanabe, “IP Management Basics”, Nikkei Inc., 2004)
2-A. Creation Management
(1) Trinity Approach
(2) Sources of Technical Ideas
(3) Portfolio Management
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2-A. Creation Management (1) Trinity Approach
Business
Strategy
R & D
Strategy
IP
Strategy
2-A. Creation Management(2) Sources of Technical Ideas
a. In-house
a-1. Employee inventor
b. Outside
b-1. Joint research
b-2. Outsource
b-3. Acquisition
2-A. Creation Management (3) Portfolio Management
a. Patent Map
- Ranking Map
- Time Series Map
- Matrix Map
- Rader Map
- Etc.
2-A. Creation Management (3) Portfolio Management
ex. Ranking Map
Number of
application
in a certain year
2-A. Creation Management (3) Portfolio Management
ex. Time Series Map
Number of
application
in each year
Accumulated number
of application
2-A. Creation Management (3) Portfolio Management
ex. Matrix Map
Number of application related
to each IPC
(International Patent
Classification)
in each year
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2. Elements of Patent Management
2.
Prosecution
Manage.
1.
Creation
Manage.
3.
Exploitation
Manage.
4. Dispute Management
5. Infrastructure Management
Intellectual Creation Cycle
(Yoneyama, Watanabe, “IP Management Basics”, Nikkei Inc., 2004)
2-B. Prosecution Management
(1) Evaluation process
(2) Application process
(3) Examination process
2-B. Prosecution Management (1) Evaluation Process
Necessity Evaluation
[Original ideas]
Patentability Evaluation
[= Ideas to be claimed in patent application]
[Necessary ideas]
[Necessary & Patentable ideas]
2-B. Prosecution Management (1-A) Necessity Evaluation
“Patent is necessary or not?”
a. Possibility of Implementation
b. Ease of finding infringement act
c. Patent, Utility model, or Trade secret?
d. Overseas strategy
e. Budget
Performed by IP Dept.
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©Tatsuya SAITO (Inspire Patent and Trademark Attorneys)
Legal right What for? How?
Utility models New small inventions
Patents New inventionsApplication and
examination
Application and
registration
2-B. Prosecution Management (1-A) Necessity Evaluation
Trade secretsValuable information not
known to the public
Reasonable efforts
to keep secret
2-B. Prosecution Management (1-B.) Patentability Evaluation
“Patentable or not?”
a. Patentability requirements
b. Prior art search and it’s limitation
c. Patent or Utility Model?
d. Overseas strategy
e. Defensive application
Performed by IP dept. and Patent Attorney
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2-B. Prosecution Management (2) Application process
[Original invention]
Expansion of idea
Drafting application documents
Appl.Documents
[Expanded inventions]
[Application documents]
2-B. Prosecution Management (3) Examination process
Examination by Examiner
- Patentability Evaluation
[Expanded inventions]
Request for examination by applicant
- Necessity Evaluation
- Patentability Evaluation
[Granted inventions]
Amendment and Argument by Applicant
- Patentability Evaluation
2-B. Prosecution Management (3) Examination process
Application Publication of unexamined application
[Prosecution flow]
Request for examination
Examination
Notice of allowance
Registration
Deemed withdrawn
Notice of rejection
Reply to office action
(Amendment and/or Argument)
Decision of refusal
Appeal
Decision to grant patent
Decision of refusal
Publication of patent
Intellectual Property High Court
Supreme Court
By Japan Patent Office
By Applicant
18 months
3 years
2. Elements of Patent Management
2.
Prosecution
Manage.
1.
Creation
Manage.
3.
Exploitation
Manage.
4. Dispute Management
5. Infrastructure Management
Intellectual Creation Cycle
(Yoneyama, Watanabe, “IP Management Basics”, Nikkei Inc., 2004)
2-C. Exploitation Management
a. Types of License
a-1. Exclusive license
a-2. Non-exclusive license
b. Special License Frameworks
a-1. Patent Pool
a-2. Patent Commons
2-C. Exploitation Management
Types
Exploitation
by Patent
Owner
Enforcement
by Licensee
More than two
licenses in the
same field
Exclusive
License× 〇 ×
Non-Exclusive
License〇 × 〇
[Types of Licenses]
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2-C. Exploitation Management [Patent Pools]
Licensee
A
Licensee
B
Licensee
Z
License Administrator
・・・
Licensor
1
Licensor
2
Licensor
n・・・
[License]
[Sub-
License]
[Royalty]
[Royalty]
Ex. MPEG-2
2-C. Exploitation Management
[Patent Commons]
Licensee
A
Licensee
B
Licensee
Z
License Administrator
・・・
Licensor
1
Licensor
2
Licensor
n・・・
[License]
[Sub-
License]
[Free use]
Ex. Eco-Patent Commons
2. Elements of Patent Management
2.
Prosecution
Manage.
1.
Creation
Manage.
3.
Exploitation
Manage.
4. Dispute Management
5. Infrastructure Management
Intellectual Creation Cycle
(Yoneyama, Watanabe, “IP Management Basics”, Nikkei Inc., 2004)
2-D. Dispute Management
a. Patent clearance
b. Monitoring third parties’
applications and products
c. Negotiation and Warning
d. Invalidation
e. Infringement law suites
2. Elements of Patent Management
2.
Prosecution
Manage.
1.
Creation
Manage.
3.
Exploitation
Manage.
4. Dispute Management
5. Infrastructure Management
Intellectual Creation Cycle
(Yoneyama, Watanabe, “IP Management Basics”, Nikkei Inc., 2004)
2-E. Infrastructure Management
a. In-house
a-1. IP Dept.
b. Outside
b-1. Patent firm (Patent Attorney)
b-2. Law firm (Attorney at law)
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II. Discussions
1. Patent Management in General
2. Licensing Management
1. Patent Management in General
[Story Settings]
You are a patent manager of IP dept. of a car manufacturing
company “Toyonda”. One day, at lunch time, you met a
colleague of public relations dept. and heard from him that he
was considering to announce to the media that their Tech. dept.
just created a new idea “T-system” which could improve the
productability of their factories in Japan and China. He also
mentioned that he has heard that their competitor “Nissony”
previously created the similar idea.
1. Patent Management in General
[ Subjects to be discussed]
1. In order to protect the idea “T-system” as IPR, what issues do
you need to consider and what actions do you need to take to
solve the issues?
2. If there are some problems in patent management system in
“Toyonda”, what are they?
2. Licensing Management
[Story Settings]
You are a patent manager of IP dept. of a semiconductor
manufacturing company “Outel”. Outel just obtained a patent
right X covering their product CPU X.
AMC who is one of Outel's competitors just obtained a patent
right Y covering their product CPU Y which is an improved
product of CPU X.
2. Licensing Management
[ Subjects to be discussed 1]
Outel receives a request from AMC to give AMC a
license of the right X. Under the following situation, how do you
reply?
Situation 1:
- It is expected that the market needs for CPU X will be large.
- Outel has a small manufacturing capacity for CPU X.
- Product life of CPU X is short.
2. Licensing Management
[ Subjects to be discussed 2]
Outel receives a request from AMC to give AMC a
license of the right X. Under the following situation, how do you
reply?
Situation 2:
- It is expected that the market needs for CPU X will be large.
- Outel has a large manufacturing capacity for CPU X.
- Product life of CPU X is long.
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2. Licensing Management
[ Subjects to be discussed 3]
You are instructed from your Boss to consider if Outel
should ask AMC to give Outel a license of the right Y. Under the
following situation, how do you reply?
Situation 3:
- It is expected that the market needs for CPU Y will be large.
- Product life of CPU Y is long.
- Remaining term of the duration of the right Y is short.
2. Licensing Management
[ Subjects to be discussed 4]
You are instructed from your Boss to consider if Outel
should ask AMC to give Outel a license of the right Y. Under the
following situation, how do you reply?
Situation 4:
- It is expected that the market needs for CPU Y will be large.
- Product life of CPU Y is short.
- Remaining term of the duration of the right Y is long.
2. Licensing Management
[ Subjects to be discussed 5]
What kind of factors which may affect Outel's license
policy?
Almost end... please be patient...
Any questions?
©Tatsuya ("Tatsu") SAITO, Inspire Patent and Trademark Attorneys 40
[References]
-Yoneyama, Watanabe, “IP Management Basics”,
Nikkei Inc., 2004
©Tatsuya ("Tatsu") SAITO, Inspire Patent and Trademark Attorneys 41
-Watanabe, “IP Management for Innovators”,
Hakutou.co.jp, 2012
Introduction of IPR Management
Patent Management in General
Tatsuya ("Tatsu") SAITO
Founding Partner
Inspire Patent and Trademark Attorneys
saito@inspire-ip.com
http://www.inspire-ip.com/en
- Thank you for your attention -