International IP Management. Toshiya Watanabe

Transcription

1 International IP Management Toshiya Watanabe

2 What is IPR?

3

4 What is patent? A patent is a set of exclusive rights granted by a state to an inventor or their assignee for a limited period of time in exchange for a public disclosure of an invention. Typically, a patent application must include one or more claims defining the invention which must be 1new, 2non-obvious, and 3useful or industrially applicable. All patent owners are obliged, in return for patent protection, to publicly disclose information on their invention in order to enrich the total body of technical knowledge in the world.. From WIPO Toshiya Watanabe 4

5 The world first patent law : The patent Statute of Venice (March 19 th 1474) 1. A patent is defined as a right to exclude 2. The aim of the system is to give incentive of invention and import of new techniques 3. Patented techniques should be new to Venice(not necessary to be new to entire world) 4. The invention should be practical: No patent shall be given on mere ideas or scientific discovery 5. There is examination of patent application. The usefulness of the invention to the Venetrian economy is the primary criterion for assessing its patentability 6. The duration is standardized (to ten years) 7. In case of alleged infringement, the patentee will go to court. Important features of later patent systems are already present in the Patent Statute of Venice D. Guellec et.al. European Patent System, Oxford Press Toshiya Watanabe 5

6 Diffusion of Patent System 1791:France Patent Law Lead to Patent System of European country and Latin America 1790:Constitution of the US, Article 1, section 8, clause 8 To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries 1811:Spain Patent Law 1815~1877:Germany Patent Law 1817:Dutch Patent Law First to invent principle First to file principle 1836:US Patents and Trademarks Office(USPTO) 1852:UK Patent office 1888:Switzerland Patent Law 1871:Japan:First Patent Law Toshiya Watanabe 6

7 WIPO Member states

8 Do you know recent topics about IPR?

9 IP Business Congress in Japan Sep.4 Tokyo World-class corporate IP management strategies Moderator Toshiya Watanabe, Professor, Research Centre for Advanced Science and Technology, University of Tokyo Speakers: Paul Fehlner, Global Head IP, Novartis Dan Lang, Vice President of IP, Cisco Micky Minhas, Chief Patent Counsel and IP Strategist, Microsoft Fumihiko Moriya, Senior General Manager, IP Division, Sony Kenichi Nagasawa, Director, Group Executive, Corporate Intellectual Property and Legal Headquarters, Canon

10 Explosion of IPR s

11 International Patent Application(PCT) Toshiya Watanabe 11

12 Patent application to local patent office (WIPO statistics) 700, ,000 China Germany 500, ,000 Japan 300, , ,000 US 中国 米国 日本 France UK 0 Canada 12

13 More litigations

14 Apple vs. Samsung Apple Samsung claimable amount date Japan No US $1.05 billion Korea both England No injunction Germany No injunction Austlia No injunction

15 Patent Troll Who? The term patent troll The term patent troll was coined in the late 1990s by Peter Detkin, assistant general counsel at Intel, to refer to patent owners who hide under bridges they did not build to pop out and demand money from surprised passers-by. Other expressions Patent extortionist, Patent parasite, Patent pirate, Patent speculator, What company like? An unusual company that makes money by partnering with investors and patent owners, then licensing the patents to corporate users, which is a nice way to say that they are patent trolls, who invent little but litigate much.

16 Even in technology standard

17 SEP Standards Essential Patents (SEP) are believed to be licensed for everyone. An enterprise has a business plan using SEP by paying reasonable royalty. If the injunction is enforced suddenly by SEP holder, the enterprise must stop making and selling the products and might have large damage. Last August in U.S.A, President Obama refused the injunction of importing Apple products which infringe Samsung s FRAND Patent. For the purpose of spreading standard technology, and for guarding consumer.

18 Buying and Selling

19 Google Buys Nortel's Patents for 4:50 PM - April 4, 2011 $900 Million Google may have simple been tired of lawsuits that are being filed against it. Fortunately, the company is sitting on a pile of cash to deal with this problem: It simply buys patents. Nortel said that it has agreed to transfer its remaining 6000 patents to Google for $900 million in cash. According to the company, the patents cover "wireless, wireless 4G, data networking, optical, voice, internet, service provider, semiconductors and other patent portfolios. The extensive patent portfolio touches nearly every aspect of telecommunications and additional markets as well, including Internet search and social networking." Google's announcement did not reflect the excitement at Nortel, but indicated that it was a required purchase to protect its innovations. It clearly wasn't something Google was eager to do from the very beginning, but given its disadvantage of being a relatively young company that is exposed to lawsuits and potentially bogus lawsuits, a patent portfolio is a requirement. I doubt this was the last patent purchase at Google. Source :Notel

20 Japan

21 Trades Secret Manager Training Toshiya Watanabe 21

22 Trades Secret Manager Training Toshiya Watanabe 22

23 Experience of technical secret information leakage Have experiences of clear technical secret information leakages Have experiences of suspected technical secret information leakages Have no experiences of leakages Others Toshiya Watanabe 23

24 Japan-Korea China IP Conf. in Seoul Trades Secret Manager Training Toshiya Watanabe 24

25 ERIA* Project on Intellectual Property Policies for Investment Promotion in ASEAN * ERIA: Economic Research Institute for ASEAN and EAST ASIA Subject of Research: [Intellectual Property and the ASEAN Economy: Investor s Perspective] The research to identify business or investment opportunities for multinationals (MNCs), especially Japanese MNCs, in the ASEAN economy in terms of the region s intellectual property development. How could and should ASEAN further develop its IP-related policies in order to create value proposition to these MNCs. WG member Japan,China,Korea,Singapore,Thailand,Vietnam,Indonesia 1 月 30 日の WG 模様 Trades Secret Manager Training Toshiya Watanabe 25

26 Trade secret Copyright Utility model Design Trademark Patent Consideration on the IP system after establishment After Scope (N=25) Development of enforcement procedures (N=25) Operation of enforcement (N=25) Scope (N=23) Development of enforcement procedures (N=25) Operation of enforcement (N=25) Scope (N=25) Development of enforcement procedures (N=25) Operation of enforcement (N=25) Scope (N=23) Development of enforcement procedures (N=23) Operation of enforcement (N=23) Scope (N=21) Development of enforcement procedures (N=21) Operation of enforcement (N=20) Technology know-how protection (N=25) Trade secret protection (N=23) Trades Secret Manager Training Toshiya Watanabe 26

27 The Trend of Percentage of Intangible Asset in Corporatee 100% 80% 60% 40% 20% 0% 50% 70% value of tangible asset value of intangible asset 80%

28 IPR is important! Understanding the role of IP for R&D activity Understanding the role of IP for Innovation Understanding the role of IP in business development process

29 Orientation

30 Information of Class

31 1 Purpose The "International IPR Management" course covers the fundamental aspects of intellectual property from business perspective. The course is organized by combining series of lectures, case study programs and workshops by guest speakers for better understanding the IPR management through real issues in business scene. In order to facilitate effective interactive process in case based teaching, a number of enrolled students could be restricted. In this process, students in the TMI departments as well as those in TMI sub-major have some priority.

32 3. Time and Place From 18:30 to 20:10 at Lounge Lecture of Faculty of Engineering Building No.2 The location of Faculty of Engineering Building No.2 is shown l

33 4. Complementary e-leaning Program Students who register this course are required to study e-learning program IP Panorama. Web site is IP panorama was developed jointly by the Korean Intellectual Property Office (KIPO), the Korea Invention Promotion Association (KIPA), and the World Intellectual Property Organization (WIPO). IP PANORAMA was designed to help enterprises to utilize and manage Intellectual Property (IP) in their business strategy and deals with IP issues from a business perspective. It is helpful for students who know little about IP and how to utilize it in business scene. For this class, seven modules from 12 modules open on the site are selected as followings. All students are requested to study them for modules until final examination. IP PANORAMA 01: Importance of IP for SMEs IP PANORAMA 02: Trademarks and Industrial Designs IP PANORAMA 03: Invention and Patent IP PANORAMA 04: Trade Secrets IP PANORAMA 06: Patent Information IP PANORAMA 07: Technology Licensing in a Strategic Partnership IP PANORAMA 11: Valuation of IP Assets

34 5. Homework assignment Students are required to do homework assignment to prepare for some of classes. The homework assignments will be a combination of questions and exercises asking students to draw on readings, and internet resources. These assignments will be designed to foster interactive discussion and better understanding of the each topic. After the class, the homework assignment will have to be submitted.

35 6. Class reports Students are requested to submit a class report at the end of each class. In the class report, write the important points which you have studied in the class into a onepage summary

36 7. Final Examination Final Examination is a paper test regarding issues you learn in the classes and some of questions in IP PANORAMA

37 8. Evaluation Evaluation will be made by weighted average of the following items Class Participation : 30 % Class Report : 30% Final Examination :40%

38 Monday 18:30-20:10 1 Mon th Date Categories Topics 6(Monday) Fundamental IPR management Overview of IPR Management: Utilizing IPR as Organizational Management (Monday) Fundamentals IPR Issues: Patent Management 3 27(Monday) Fundamentals IPR Issues: Utilization of IPR :Use Exclusive Right or License Teachers and Guest speakers Prof. Toshiya.Watanabe Mr. Tatsuya Saito, Patent Attorney Prof. Toshiya Watanabe 4 10(Monday) Japan Patent Policy Mr. Ruji Maki, JPO 11 Advanced IPR Mr. Yoichiro Yamaguchi, 5 17(Monday) IPR Management : IP Litigation Managemnet management Attorney at law Dr. Hiroshi Morita, Astelas 6 1(Monday) IPR management: IPR Issues in Pharmaceutical and Biotech Pharma 7 8(Monday) Fundamentals IPR Issues: Study on IPR Prof. Toshiya Watanabe 12 Mr. Hisao Yamasaki, 8 15(Monday) IPR management: IPR transaction. Syndefense LLC Dr. Yoshito Tsunoda, Past 9 22(Monday) Comparative study of IPR strategy between US and JP large firm CEO of Hitachi Maxwell 10 5(Monday) IPR Management by University Prof. Toshiya Watanabe (Monday) IPR issuues in Asian Regions 12 26(Monday) Wrapup and Examination Wrap UP Mr. Katsunuma Yoshihiro,Ajinomoto Prof.Toshiya Watanabe (Monday) Examination Prof.Toshiya Watanabe

39 Mr. Yoichiro Yamaguchi Attorney at law Office: Washington DC Practices:Patents, Technology and E-Commerce, Trademarks, Copyrights, Trade Secrets Mr. Yoichiro Yamaguchi began his career examining patent applications as an Examiner in the electrical field and later working as an Appeal Examiner at the Board of Appeals in the Japanese Patent Office. He is an expert in Japanese intellectual property law and has testified at trials as an expert witness. Mr. Yamaguchi had examined numerous patent applications in Japan before coming to the United States. He currently advises and counsels many Japanese companies on patents, trademarks, trade secret matters, copyrights, licensing and infringement matters. Mr. Yamaguchi was a Lecturer on Japanese Patent Law and Policy at the George Washington University National Law Center. He is Research Professor of the University of Tokyo, Research Center for Advanced Science and Technology. He is also teaching Japan-U.S. comparative patent laws for Japanese Patent Office examiners at National Center for Industrial Property Information and Training, and for intellectual property professionals from Asian countries at the Asia-Pacific Industrial Property Center, Japan Institute of Invention and Innovation. He has authored and co-authored over 30 articles on U.S. Intellectual Property Laws and Japanese Patent Laws including US Intellectual Property Court Document Retrieval Manual, 1993 (in Japanese), Crisis to Japanese Patent Attorney System Caused by US Attorney-Client Privilege/Proposal of Changes to the Patent Attorney Law, 1994 (in Japanese), Commentary on Revised U.S. Patent Law and Rules, Japan Machinery Center for Trade and Investment, 2001 (in Japanese). Co-Author: Official Commentary of Industrial Property Laws 1986 (in Japanese), Discovery and Strategy, 1994 (in Japanese). Mr. Yamaguchi holds an LL.B. (1974) from the School of Law of Waseda University (Japan), and an LL.M. (1992) from George Washington University. He was admitted in the Japanese Courts as a Patent Counsel and was registered to practice before the Japanese Patent Office. He is admitted to practice in the New York State Bar (1994), the District of Columbia Bar (2000), and the U.S. Court of Appeals for the Federal Circuit (1994).

40 Mr. Tatsuya Saito Patent Attorney Founding partner of a Tokyo based patent firm, Inspire Patent and Trademark Attorneys. More than 18 years, he has worked as a patent attorney for patent prosecutions for variety of technical fields as well as design and trademark prosecutions. He is a member of JPAA, AIPPI, APAA and INTA. He has a B.E. in Mechanical Eng., a Master of IP (Franklin Pierce Center) and a Juris Doctor (Concord School of Law) and is qualified as an U.S. Patent Agent (exam passed), a 1st class software engineer and a 3rd class electric chief engineer. He is a author of "Patent Systems in Foreign Countries [Asian Edition]" and "Introduction of U.S. Patent Law". Key words -patent prosecution -claim construction -invention development method -patent attorneys

41 Mr. Ruji Maki JPO Biography April 2002, Japan Patent Office(JPO), July 2007-June 2009, Japan International Cooperation Agency (JICA) July 2010-June 2011 Visiting sclolar,aalto University School of Science and Technology (Finland) July 2011-June 2013 Ministry of Economy, Trade and Industry(METI) July2013-JPO Key words JPO(Japan Patent Office), patent examination system, patentability, Patent utilization, etc.

42 Dr. Hiroshi Morita Vice President, IP Division Astellas Pharma Inc. Patent Attorney, Vice President, Intellectual Property of Astellas Pharma Inc Astellas Pharma Inc. (Yamanouchi Pharmaceutical Co., Ltd. and Fujisawa Pharmaceutical Co., Ltd. merged in April 2005) Yamanouchi Pharmaceutical Co., Ltd. Membership :IP Committee of Japan Pharmaceutical Manufactures Association, Key words IPR management of pharmaceutical industry

43 Mr. Hisao Yamasaki Syndefense Corp CEO Hisao Yamasaki is the founder and managing director of Syndefense. Before founding the company, Mr Yamasaki served as the president of RPX Asia, a leading provider of patent risk management solutions. Previously, Mr Yamasaki had a 25-year career at Hitachi, Ltd as general manager of IP business development and licensing, where he directed business aspects of the electronics conglomerate s IP assets, including licensing strategies and operations, and patent portfolio balancing transactions. He holds several law degrees and served as a professor at the Graduate School of Intellectual Property at the Osaka Institute of Technology. Key words IPR Transaction - Integrating IP Strategies with Business Strategies - Harmful Patent Assertion Businesses /Patent Privateering - Effective Patent Transactions - Global Patent Transaction Trends Home work assignment 〇

44 Dr. Yoshito Tsunoda Past CEO of Hitachi Maxell Ltd Researcher, Central Research Laboratory, Hitachi Ltd Senior Executive Vice President, Fujitsu Hitachi Plasma Display Ltd 2003 CEO, Urban Planning and Development Sysytems, Hitachi Ltd President and CEO, Hitachi Maxell Ltd Policy Advisor to Governor, Yamanashi Prefecture Key words Business model and IPR strategy of Japanese digital consumer electronics industry,comparative study of business model and IPR strategy between Japan and US,Entrepreneur and IPR strategy

45 Mr. Katsunuma Yoshihiro Ajinomoto Co. Actually in charge of licensing and trademarks of Ajinomoto Co. Group. Graduated from Southern California Univ., attorney at New York State. Joind with Ajinomoto Co., in 1987, and belonged to Legal Section for 9 years, taking in charge of the issues of contracts, corporate laws and antitrust laws. Thereafter, moved to Ajinomoto Peru for 4 years worked as a sales manager. Speaks English, Spanish and Chinese. Key words IPR in consumer business, IPR issues in Asia, know-how, Trademard, Counterfeiting products

46 IP classes 知的財産経営 ( 東京大学工学系技術経営戦略学専攻 : 知財戦略実行のための秘匿 公開 出願権利化のマネジメント 実施の自由と技術の独占のための知財マネジメント 技術の不確実性と知財マネジメント ライセンス知財マネジメント 大学の知財マネジメント アライアンスのための知財マネジメント 特定の複数組織に対する知財マネジメント 不特定多数に対する知財マネジメント 新興国における知財マネジメント 著作権 コンテンツ知財マネジメント デザイン ブランド知財マネジメント ) International IP Management(The University of Tokyo:Orientation,Patent System,Patent Management,Strategic Patent Management for Innovation,IP Litigation Case 1&2,IPR Management in IT Industry,IPR Management in Pharma Industry,Patent Licensing Management,University Patent Management,Counterfeiting and Pirates Issue, North South Issue of IP, IP Business Case Study 1&2,Examination)

47 Our Curriculum Project works (case studies, group works, international study tour) Technology Management Studies (Master thesis project) Technology Development ( group A) Tech. and Product Mgt. Program/Project Mgt Tech Road-mapping Organizational Mgt. for Innovation History of Technology Strategy/Discussion on Society of Future Science & Tech. Policy & Industrial Policy Innovation Mgt. R&D management in Asia Management Science ( group B) Business Management Corporate Strategy Mgt Information. Systems Enterprise Systems Modeling and Simulation Methods for Mgt. Risk Management Principles of Economics Finance/Accounting Global Business Intellectual Property ( group Manage. (C Knowledge Management. Innovation & IP Valuation of IP IP mgt. International IPR mgt.

48 Introduction of Watanabe Lab. Toshiya Watanabe Takeshi Ueno Maho Furuya Toshiya Watanabe 48

49 Watanabe laboratory We are studying and teaching Intellectual Property Management for innovation strategy, profiting from various organizational management resources as well as management of uncertain technology by 1) Empirical analysis using statistical data and/or questionnaire survey, 2) Case study 3) Project study collaborating with companies, government and international organizations. Member Prof. Dr. Toshiya Watanabe Project Researcher Dr. Maho Furuya Visiting Researcher Dr. Koichi Ogawa,Dr. Nahoko Ono,Dr. Yoshito Tsunoda,Dr. Li Ryu,Dr. Yuri Hirai,Kaori Minami,Nishio Kei,Toshifumi Futamata,Kotaro Yamano Collaborative Researcher, Yoshifumi Okuda,Shigeharu Matsushita Graduate Student, (D3) Hiroshi Oyamada, (D3)Ayano Fujiwara, (D2)Toru Yoshioka-Kobayashi, (D2)Li Shenghao (D1) Shin Ito, (D1) Wei Hu (M1) Yoshinori Kosaka Foreign Researcher, Chihyun Kwon Secretary Yasue Ohya,Yuko Rikitoku Current Topics of our research are 1) Mechanism of Unused technology and Disempowerment of IPR Open Proprietary IP management Standardization and IP management IP transfer, IP licensing market, IP fund University Industry Cooperation Academic Industry social networking Technology leakage and Technology acquisition by human mobility Design driven innovation and IP management Organizational productivity of invention Government IP Contract FDI and IP system in emerging country Interaction between inbound and outbound open innovation

50 Location of lab.