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 -