Management of Patent
How to reinforce your company's IP capacity
This is not about patent management.
This is about patent capacity
1. Business, Law & Technology BLT BLTBusiness, Law & Technology Jeonghan Eom Management Of Patent (MOP) September 24, 2013 Korea INtellectual Property Association Presentation for Division of Small & Medium Business Seminar Jeonghan Eom, patent attorney shawn@blte.kr / +82-70-4100-0102
2. BLTBusiness, Law & Technology BLT Jeonghan Eom • Graduated from Seoul National University, School of Chemical and Biological Engineering • Microsoft Certified Professional • Certificate of Industrial Engineer Information Communication (2001) • Worked at Picosoft Co., Ltd. • Patent Attorney, Republic of Korea (2006) • Instructor for ETRI Patent Coordinator (2013) • [Public Procurement Service] Panel for excellent goods designation • [Korean Intellectual Property Office] Panel for excellent inventions recommendation • [Korean Intellectual Property Office] Panel for College Creative Invention Competition • [Korea Patent Attorney Association] trainee member • Instructed at Seoul National Univ., Konkuk Univ., Inha Univ. (invention and patents, etc.) Introduction 2 Eom, Jeonghan (patent attorney) Yoo, Cheolhyun (patent attorney)
3. BLTBusiness, Law & Technology BLT Jeonghan Eom Many entrepreneurs take concerns on the MOP for improving competitiveness for the future, seeing patent disputes between Samsung and Apple. With abundant knowledge and real experience from the author, this book will provide a good guidance on the MOP. Wonil Cho, President of Onestop Solution A patent is not just a cost, but rather an investment for future earnings of an enterprise. This book contains methods of transforming into MOP companies making licensing profits, based on good inventions and strong patents creation. Jeonghwan Lee, Chief of Patent Center at LG electronics Management of Patent (MOP) 3
4. BLTBusiness, Law & Technology BLT Jeonghan Eom Patent & Trademark management system (www.ipems.com) Features of the IPEMS • Patent and trademark management system • Very Easy to Use • Due date management • Auto e-mail sending • Agent (patent office) management • Competitors analysis • An agent can access and enter information • Local installation / Cloud service both available Delivery Record • Hyundai Mobis Further information / demonstration request • Jeonghan Eom shawn@blte.kr 4
5. Business, Law & Technology BLT BLTBusiness, Law & Technology www.BLTe.kr 5 Why the dispute, Apple vs. Samsung?
6. BLT BLTBusiness, Law & Technology Jeonghan Eom Why did the Apple vs. Samsung lawsuits occur? 6
7. BLT BLTBusiness, Law & Technology Jeonghan Eom Why did the Apple vs. Samsung lawsuits occur? 7
8. BLT BLTBusiness, Law & Technology Jeonghan Eom Why did the Apple vs. Samsung lawsuits occur? 8
9. BLT BLTBusiness, Law & Technology Jeonghan Eom CREATIVE’s movement light, thin, short, and small 9
10. BLT BLTBusiness, Law & Technology Jeonghan Eom The passing over of Steve Jobs 1. A method of selecting at least one track from a plurality of tracks stored in a computer- readable medium of a portable media player configured to present sequentially a first, second, and third display screen on the display of the media player, the plurality of tracks accessed according to a hierarchy, the hierarchy having a plurality of categories, subcategories, and items respectively in a first, second, and third level of the hierarchy, the method comprising:selecting a category in the first display screen of the portable media player; displaying the subcategories belonging to the selected category in a listing presented in the second display screen; selecting a subcategory in the second display screen; displaying the items belonging to the selected subcategory in a listing presented in the third display screen; and accessing at least one track based on a selection made in one of the display screens. 10
11. BLT BLTBusiness, Law & Technology Jeonghan Eom The passing over of Steve Jobs Infringement!? 11
12. BLT BLTBusiness, Law & Technology Jeonghan Eom Apple’s lawsuits were absolutely timely Time Value Market demand for Smartphone Patents were registered with struggle Feb 2006 $100 mil settlement with Creative Concept patents (UI part) were applied in quantity Competitors made copies of its UI in quantity Apr 2011 Apr 2006 - June 2007 iPhone 2G was released Oct 2008 Apple’s Concept patents (UI part) applications were released Oct 2008 - 12 (* 너 고소 = Sue you)
13. BLT BLTBusiness, Law & Technology Jeonghan Eom Why did the Apple vs. Samsung lawsuits occur? 13 Infringement!?
14. BLT BLTBusiness, Law & Technology Jeonghan Eom Why did the Apple vs. Samsung
lawsuits occur? 14 Workarounds!?
15. BLT BLTBusiness, Law & Technology Jeonghan Eom When patents make fun... In which case do patents show most dramatic effect? ① New items ② Business do grow really fast - Competitors say ‘that’s cool!’ ③ You (already) have patents endurable through litigation ④ Copycats appear in short period 15
16. Business, Law & Technology BLT BLTBusiness, Law & Technology www.BLTe.kr 16 By BLT patent & law office
17. BLTBusiness, Law & Technology BLT Jeonghan Eom ① Companies do not grow further since their patent competitiveness is weaker compared with the size. ② Your competitors finished designing patent portfolio and are continually struggling to obtain essential patents even now. ③ Patent competitiveness is the key to the survival of technology companies. Your company will be relegated to an OEM unless patent competitiveness improves; you will soon be substituted with competitors. The Book’s Conclusion • Few or no patents • High productivity • Subordinate to big companies • High probability of replacement • Earnings from production are 100% most small and medium enterprises OEM company In-house production company • Small number of patents • High productivity • Emerging from dependence • Competitors may enter the market most listed companies Patent holding company MOP company • Number of patents rapidly increase • Patent competitiveness quickly grow • Have experienced getting sued • Own technology pool is built up • Patent portfolio is being developed Companies that run patent teams • Strong patent competitiveness • Licensing cases are increasing • Starts to file a lawsuit • Standard pool is formed • Innovative earnings is rapidly increasing Companies that run licensing teams features 17
18. BLTBusiness, Law & Technology BLT Jeonghan Eom • Full-time patent manager should introduce MOP (Management of Patent) to the company. MOP (Management of Patent) M O P What is patent application good for? When will it be effective? Why should patent personnel be recruited? Isn’t International application expensive? Sure, patent makes money! ① A manager himself/herself must be in confidence. ② The confidence should be delivered. ③ Think how to make money with patents. ④ Practice the method of increasing patent competitiveness. 18
19. BLTBusiness, Law & Technology BLT Jeonghan Eom • Patent competitiveness is an index that shows how the outcome of R&D from companies (universities, research labs) is well processed into powerful intellectual property (IP) and is held by companies. • Patent Competitiveness = (Patent Deterrent)+ (Patent Offense Power) Patent Competitiveness (Not contained in this book) Patent Competitiveness (patent value) (company’s size) (ability of patent manager) α • The equation is not complete (at all) Please take part in getting it done • additional factors : revenue, number of licensing, licensed patents, number of disputes, number of international application, (quality of patent??) 19 =
20. BLTBusiness, Law & Technology BLT Jeonghan Eom • Patent competitiveness of Korean companies in terms of patent number? Patent Competitiveness * Not exact numerical figures 20
21. BLTBusiness, Law & Technology BLT Jeonghan Eom Worries that makes patent manager troubled Samsung and LG will support us Sales line is more important than patents Patents cannot defense our market Are our company’s patents really useful? Excel will do for patent management Researchers are busy Just focus on production! Full-time patent manager MOP theory is needed! 21
22. BLTBusiness, Law & Technology BLT Jeonghan Eom • Japan’s Trinity strategy is a theory too abstractive, academic and difficult to apply for the practical use. Another MOP theory <1> http://blog.naver.com/PostView.nhn?blogId=wipsmaster&logNo=50156791045 22 Patent Strategy Business Strategy R&D strategy Business strategy is linked to R&D strategy, thus constructing patent strategy • Deciding either to file an application or to keep as a trade secret • Qualitative growth of patent acquisition by selection and concentration • Prior art search at the point of R&D, patent application, request for examination • Creating a patent map to investigate competitors’ move • Using the patents Connection with Business Strategy • Using patent information as the basis of business decision such as entering a new market or forming an alliance with other companies • Securing rights as offense, defense, and prevention Connection with R&D strategy • Using patent information for analyzing own technology or setting forth R&D themes • Using patent information as the basis of selecting partners for cooperative R&DTrinity Strategy
23. BLTBusiness, Law & Technology BLT Jeonghan Eom • Patent creation/protection/utilization model contributed to systemization of contents needed for IP strategy. Another MOP theory <2> http://www.bioin.or.kr/board.do?cmd=view&bid=patent&num=188422 23
24. BLTBusiness, Law & Technology BLT Jeonghan Eom • Patent competitiveness can be enhanced through 4-step MOP strategy. • Unlike the existing theories, time-series approach is emphasized. 4 Steps of MOP Introductory stage Quantitative Expansion Qualitative Expansion Management of Patent (MOP) 24
25. BLTBusiness, Law & Technology BLT Jeonghan Eom • Licensing team dealing expert • infringers are constantly analyzed (compensation is paid for the discovery of infringement) • researchers are paid with compensations for the licensing or disposal of patents • patent task force team + CIPO • patent analysis • international application • competitors are constantly analyzed • patent map competition(!!!) • full-time personnel, patent team • a written notice for invention is mandatory • compensation for employee invention • advanced patent education for researchers and • additional patent post is assigned to the existing manpower • Invention technique education • basic patent training • prior art search training for researchers, etc. • In 4 steps of MOP, tasks to be focused on differ in each step. 4 Steps of MOP – mission for each step MOP Qualitative Expansion Quantitative Expansion Introductory Stage Invention creating Patent creating Patent analyzing Market dominating 25
26. BLTBusiness, Law & Technology BLT Jeonghan Eom • A 4-step strategy to become an MOP company is as follows. (for details, refer to the book) Growth strategy in MOP • Dominating ability is reinforced • Licensing strategy • A notice of warning is sent to latecomers • regular monitoring • active litigation • Consilience of patent/planning/ strategy • Analyzing ability is reinforced • Analysis of competitors • Analysis of own patents • Improving own patents • International application • Actions against core patents • Application ability is reinforced • Patent application is promoted • Even class C patents! • Merit system is introduced • Employee invention compensation • Inventing ability is reinforced • Creativity led culture • Thinking of trend • Concealment • Invention Workshop Management of Patent (MOP) Qualitative Expansion Quantitative Expansion Introductory Stage 26
27. BLTBusiness, Law & Technology BLT Jeonghan Eom • A 4-step strategy to become an MOP company is as follows. Growth strategy in MOP • Dominating ability is reinforced • Consilience of patent/planning • Analyzing ability is reinforced • Actions against core patents • Patent application ability is reinforced • Employee invention • Invention ability is reinforced • Invention workshop Management of Patent (MOP) Qualitative Expansion Quantitative Expansion Introductory Stage OEM company In-house production company Patent holding company MOP company • Few or no patents • Subordinate to big companies • High probability of replacement most small and medium enterprises • Small number of patents • Competitors may enter the market most listed companies • Number of patents rapidly increase • Own technology pool is built up • Have experienced getting sued Companies that run patent teams • Strong patent competitiveness • Licensing cases are increasing • Innovative earnings is rapidly increasing Companies that run licensing teams 27
28. BLTBusiness, Law & Technology BLT Jeonghan Eom • Multinational companies achieved lawful market dominance throughout the 4-step Management of patent (MOP) process. • MOP companies can retain sustainable growth. • Through the MOP, companies can know which (formidable) latecomers they should acquire by means of M&A. Pin Point Patent Analysis Like Microsoft, Apple Effect of MOP 28
29. BLTBusiness, Law & Technology BLT Jeonghan Eom • NPEs already transcended the 4 steps of MOP and possessed lawful weapons. • NPEs can sustainably grow since they are specialized in MOP. • Through the MOP, companies can know which (formidable) latecomers they should acquire by means of M&A. Pin Point Patent Analysis Like Intellectual Ventures, Rockstar Bidco Revolution of MOP = NPE 29
30. BLTBusiness, Law & Technology BLT Jeonghan Eom • NPEs could jump over the 4 steps of MOP since they escaped from
31. Business, Law & Technology BLT BLTBusiness, Law & Technology www.BLTe.kr 31
32. BLTBusiness, Law & Technology BLT Jeonghan Eom Worries that makes patent manager troubled Patent Manager 32 Samsung and LG will support us Sales line is more important than patents Patents cannot defense our market Are our company’s patents really useful? Excel will do for patent management Researchers are busy Just focus on production! Patent manager should show a
33. BLTBusiness, Law & Technology BLT Jeonghan Eom Worries that makes patent manager troubled Or, at least, PM is to suggest a
34. BLTBusiness, Law & Technology BLT Jeonghan Eom Way of patent strategist 삼성, LG가 우리를 먹여살릴 것이다. 특허로 시장을 방어할 수 없다 (money making by patents) Patent Manager Park, Patent Attorney (LG electronics → Intellectual Discovery) Patent manager should show a
35. BLTBusiness, Law & Technology BLT Jeonghan Eom • Company’s earnings are divided into ①production earnings and ②innovative earnings. • Most companies do not make innovative earnings and are undervalued. • Innovative earnings have no raw material (cost) or circulation cost, thus it can be multiplied through contracts/marketing. • For companies to create innovative earnings, licensing team should be set up. Way of patent strategist Production Earnings • Earnings from the value chain of production of goods • It fluctuates depending on market situation • It suffers when just a part of the value chain has any problem on it. • Researchers, production employee, factory, distribution line, sales line, etc. • Subcontractor, multinational company Innovative Earnings • Earnings from patents or design IPs • Its value is determined by contract or marketing • Regardless of the value chain, it can be maintained • Only researcher and licensings needed • Multinational company, patent specialized firm (NPE) Company’s Earnings 35
36. BLTBusiness, Law & Technology BLT Jeonghan Eom • Elias Howe Jr (1819 - 1867) • In a dream, the natives tried to poke him down with spears with holes in the points... He got an idea, and completed the sewing machine. • The machine being released, it did not attract the market first time, driving him to go to Britain. • With several lawsuits, Howe’s rights were confirmed in 1854. • Until the patent right was expired in 1867, he enjoyed great sum of royalty from every sewing machine produced in the United States. World’s first patent strategist 36
37. BLTBusiness, Law & Technology BLT Jeonghan Eom 1. Quality of production and novelty of an idea are totally different (I. M. Singer = high quality) 2. You can earn money with only ideas. Focus on research if you cannot produce goods of quality. ($4,400 royalty for each day) 3. Innovative earnings do not break out immediately. Just sit down and wait for the inflection of the market. (Howe’s exile to Britain then glorious return♬) World’s first patent strategist - lessons + Patent troll(NPE) existed even 200 years ago! 37
38. Business, Law & Technology BLT BLTBusiness, Law & Technology www.BLTe.kr 38 By Oh Byung Seok (Base) + BLT (Adapt)
39. BLTBusiness, Law & Technology BLT Jeonghan Eom Time Market needs against technology Value per patent Value Strong patent Convenience, Diverse technology Strong patent Productivity increasing technologies • In Oh Byung Seok’s book
40. BLTBusiness, Law & Technology BLT Jeonghan Eom Time Market needs against technology Value per patent Value Strong patent Strong patent Productivity increasing technologies • Finding the inflection of
41. BLTBusiness, Law & Technology BLT Jeonghan Eom Time Value Productivity increasing technologies • Pay attention to patents from technological areas where 3D semiconductors are produced/ examined/ researched/ packaged/ used! Promising patent dispute area <1> = 3D Semiconductor Equipment 41 * Personal imagination
42. BLTBusiness, Law & Technology BLT Jeonghan Eom Time Value • Pay attention to patents from Architect / Interface / Applied technologies of next generation operating systems! Promising patent dispute area <2> = next generation OS technology Original technology 42 * Personal imagination
43. BLTBusiness, Law & Technology BLT Jeonghan Eom • Pay attention to patents from Architect / Interface / Applied technologies of next generation operating systems! • Next generation OS is highly likely to be an
44. BLT BLTBusiness, Law & Technology Jeonghan Eom Patent buying strategy Time Value Strong Patent Convenience, Diverse technology Strong Patent 44 Patents to buy
45. BLT BLTBusiness, Law & Technology Jeonghan Eom Patent buying strategy Time Value Strong Patent 45 Patents to buy ① Patents that university/ government-funded institute hold - comparatively low cost - co-research is available in future - they invite gov-led R&D projects ②Patentsthatcorporationshold - merge and acquire small companies - acquire patents of bankrupt firms - buy overseas patent at bargain - fortunately, acquire essential patents
46. BLTBusiness, Law & Technology BLT Jeonghan Eom • What does an NPE do? • MOP(management of patent) companies and NPEs(patent specialized firms) have the same structure for innovative earnings. MOP company vs patent specialized firm ① Analyzing competitors’ patents ② Creating/Investigating patents for standard technological areas ③ Acquiring valuable patents (or companies) (by M&A, etc.) ④ Licensing the patent portfolio ⑤ Filing a lawsuit against the adversary that rejects licensing • MOP company = Innovative earnings + production earnings • Patent specialized firm = Innovative earnings 46
47. BLT BLTBusiness, Law & Technology Jeonghan Eom A case of MOP companies – Gillette 47
48. BLT BLTBusiness, Law & Technology Jeonghan Eom A case of MOP companies – Gillette • Released in 1990 • No.1 for 10 years • 70% of world market • +10 year R&D • $200 mil investment30 Comprehensive patents (for every line-ups) 48
49. BLT BLTBusiness, Law & Technology Jeonghan Eom A case of MOP companies – Gillette (patent portfolio constructed) 49 Set limits (in detail) to subject’s range!
50. BLT BLTBusiness, Law & Technology Jeonghan Eom A case of MOP companies – Gillette (patent portfolio constructed) 50 US 5,010,646 US 5,027,511 US 5,430,939 US 4,813,131 US 4,785,534 US D377,237 US 5,113,585
51. BLT BLTBusiness, Law & Technology Jeonghan Eom A case of MOP companies – Gillette (patent portfolio constructed) 51
52. BLT BLTBusiness, Law & Technology Jeonghan Eom Another case: HAAN steam cleaners 52 • Dominated the market for 8 years • $100 mil annual revenue • 10 mil steam cleaners sold • Has grown to a mid-sized strong company How many patents for steamers?
53. BLT BLTBusiness, Law & Technology Jeonghan Eom Another case: HAAN steam cleaners 53
54. BLT BLTBusiness, Law & Technology Jeonghan Eom Another case: HAAN steam cleaners 54 Steam cleaner original patent
55. BLT BLTBusiness, Law & Technology Jeonghan Eom Another case: HAAN steam cleaners 55 813,538 813,537 813,539 401,327 793,413 881,943 776,841 734,569
56. BLT BLTBusiness, Law & Technology Jeonghan Eom Another case: HAAN steam cleaners 56 Time Value Strong Patent Convenience, Diverse technology Strong Patent
57. Business, Law & Technology BLT BLTBusiness, Law & Technology www.BLTe.kr 57 By BLT patent & law office
58. BLTBusiness, Law & Technology BLT Jeonghan Eom • A simple technique to apply without effort to memorize sophisticated methods • A new invention method by Five Ws and one H is devised (starts at ‘which part of what’) • Using the 6HA, its user can grasp products to make and the hidden needs of the market. 6HA Invention method 58 What (which part of what) Who When Where How Why Finding items *Start *Finish *R&D * Materialization of invention *Market needs
59. BLTBusiness, Law & Technology BLT Jeonghan Eom • 6HA invention workshop for companies is now available (4 doctors of engineering, 5 patent attorneys) • ① for researchers ② discovering new needs ③ competitors’ patents Invention Workshop using 6HA Invention method 59 How to discover potential demand of market by 6HA invention method (example) 6HA Invention workshop registration / questions: • Jeonghan Eom shawn@blte.kr
60. BLTBusiness, Law & Technology BLT Jeonghan Eom • Educating researchers how to invent is more effective than compensation for employee invention. • Major product is split into components; problems are identified then. Invention Workshop using 6HA Invention method 60 What product should we invent?
61. Business, Law & Technology BLT BLTBusiness, Law & Technology www.BLTe.kr 61 By BLT patent & law office
62. BLT BLTBusiness, Law & Technology Jeonghan Eom62 4 steps of MOP MOP Qualitative Expansion Quantitative Expansion Introductory Stage Missions for
63. BLT BLTBusiness, Law & Technology Jeonghan Eom63 4 steps of MOP MOP Qualitative Expansion Quantitative Expansion Introductory Stage Missions for
64. BLT BLTBusiness, Law & Technology Jeonghan Eom64 4 steps of MOP MOP Qualitative Expansion Quantitative Expansion Introductory Stage Strategic Application -Number of application decreases -Cost per application increases (VU, international application) Patent Application Expansion - Number of application increases - Cost per application minimized (KR application, PCT only)
65. BLT BLTBusiness, Law & Technology Jeonghan Eom65 4 steps of MOP MOP Qualitative Expansion Quantitative Expansion Introductory Stage • All IPs that attacked Samsung were applications filed at the step of
66. BLT BLTBusiness, Law & Technology Jeonghan Eom IPs Apple brought forward disputes with Samsung 7 Patents 7,812,828 7,669,134 6,493,002 7,469,381 7,844,915 7,853,891 7,863,533 IPs of Quantitative Expansion 66
67. BLT BLTBusiness, Law & Technology Jeonghan Eom67 4 steps of MOP MOP Qualitative Expansion Quantitative Expansion Introductory Stage Effects • Secure patent deterrence • High quality patents are created • Patent disputes are prevented in advance No earnings right now Appealing that money is saved Missions for
68. BLT BLTBusiness, Law & Technology Jeonghan Eom68 Qualitative Expansion - GDI Valuation, Brokerage, Consulting Invention, R&D, Standardiz ation Prosecution, Value-Up, Litigation Full coverage of IP-R&D Service GOOD DAY to INVENT BLT Patent search & analysis Yearly patent management IP business consulting IP Consulting Education VC invest, M&A
69. BLT BLTBusiness, Law & Technology Jeonghan Eom69 Qualitative Expansion – GDI - Proud Numbers Idea Prosecute Value-up Monetize 1950+ $7,710,000IP Transaction completed (in last 2 years) 110+ Patents of inventorship Portfolio Value-up & Claim chart Qualitative Expansion
70. BLT BLTBusiness, Law & Technology Jeonghan Eom70 Qualitative Expansion – GDI – Value Up Reclaim a Patent ($0) Star Patent ($100M) Reclaiming, Claim charting, Reverse engineering for sophisticated standard IPs Idea Prosecute Value-up Monetize Client GDI
71. BLT BLTBusiness, Law & Technology Jeonghan Eom71 Qualitative Expansion – GDI – TEG(Tech Experts Group) For about GDI, ask: • Henney Oh, PhD o@gdiholdings.com
72. BLT BLTBusiness, Law & Technology Jeonghan Eom72 4 steps of MOP MOP Qualitative Expansion Quantitative Expansion Introductory Stage Effects • Market dominance • Patent competitiveness • Earnings from Licensing or Litigation Constant investment is challenging Appealing ‘newcomers’ formidable emerge’ Missions for MOP • Licensing team is set up • Analyzing who infringes constantly • Scouting or raising patent specialists • Researcher’s patent using ability
73. BLT BLTBusiness, Law & Technology Jeonghan Eom73
74. BLTBusiness, Law & Technology BLT www.BLTe.kr 74 GDI IP alliance The only FIRM who cares for your SUCCESS BLT Jeonghan Eom +82-70-4100-0102 shawn@BLTe.kr www.facebook.com/byunlisa
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