Business, Law & Technology BLT BLT Business, 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 [email protected] / +82-70-4100-0102
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Business, Law & Tech-nology
BLT
BLTBusiness, Law & Technology Jeonghan Eom
Management Of Patent (MOP)
September 24, 2013Korea INtellectual Property Association
Presentation for Division of Small & Medium Business Seminar
• 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)
BLTBusiness, Law & Technology
BLT
Jeonghan Eom
Many entrepreneurs take concerns on the MOP for improving competitiveness for the fu-ture, seeing patent disputes between Sam-sung 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 in-vestment 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
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
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 se-quentially 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 cat-egory in the first display screen of the portable media player;
displaying the subcategories belonging to the selected category in a listing pre-sented 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.
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BLT
BLTBusiness, Law & Technology Jeonghan Eom
The passing over of Steve Jobs Infringe-ment!?
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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 settlementwith Creative
Concept patents(UI part)
were applied in quantity
Competitorsmade copies of
its UIin quantity
Apr 2011
Apr 2006 -
June 2007
iPhone 2G was released
Oct 2008
Apple’sConcept patents
(UI part)applications
were released
Oct 2008 -
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(* 너 고소 = Sue you)
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BLTBusiness, Law & Technology Jeonghan Eom
Why did the Apple vs. Samsung lawsuits occur?
13
Infringe-ment!?
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BLTBusiness, Law & Technology Jeonghan Eom
Why did the Apple vs. Samsung lawsuits occur?
14
Work-arounds!?
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BLTBusiness, Law & Technology Jeonghan Eom
When patents make fun...
In which case do patents show most dramatic ef -fect?
① New items② Business do grow really fast
- Competitors say ‘that’s cool!’③ You (already) have patents endurable
through litigation④ Copycats appear in short period15
Business, Law & Tech-nology
BLT
BLTBusiness, Law & Technology www.BLTe.kr
Time series MOP theory
4 Steps of MOP
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By BLT patent & law office
BLTBusiness, Law & Technology
BLT
Jeonghan Eom
① Companies do not grow further since their patent competitiveness is weaker com-pared 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 im-proves; 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 companyIn-house
production company
• Small number of patents
• High productivity• Emerging from de-
pendence• Competitors may en-
ter the market
most listed compa-nies
Patent holding
companyMOP
company
• Number of patents rapidly increase
• Patent competitive-ness quickly grow
• Have experienced getting sued
• Own technology pool is built up
• Patent portfolio is be-ing developed
Companies that run patent teams
• Strong patent com-petitiveness
• Licensing cases are increasing
• Starts to file a law-suit
• Standard pool is formed
• Innovative earn-ings is rapidly in-creasing
Companies that run licensing teams
features
17
BLTBusiness, Law & Technology
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Jeonghan Eom
• Full-time patent manager should introduce MOP (Management of Patent) to the company.
MOP (Management of Patent)
MOP
What is patent application good for?
When will it be effective?
Why should patent personnel be re-cruited?
Isn’t International application expensive?
Sure, patent makes money!① A manager himself/herself must be in confi-
dence.
② The confidence should be delivered.
③ Think how to make money with patents.
④ Practice the method of increasing patent
competitiveness.
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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 can be enhanced through 4-step MOP strategy.• Unlike the existing theories, time-series approach is emphasized.
4 Steps of MOP
Introduc-tory stage
Quantita-tive Ex-pansion
Qualitative Expansion
Manage-ment of Patent (MOP)
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BLTBusiness, Law & Technology
BLT
Jeonghan Eom
• Licensing team dealing expert• infringers are con-stantly analyzed(compensation is paid for the discov-ery of infringement)• researchers are paid with compensa-tions for the licens-ing or disposal of patents
• patent task force team + CIPO• patent analysis• international appli-cation• competitors are constantly analyzed• patent map compe-tition(!!!)
• full-time personnel, patent team• a written notice for invention is manda-tory• compensation for employee invention• advanced patent education for re-searchers and
• additional patent post is assigned to the existing man-power• Invention tech-nique education• basic patent train-ing• prior art search training for re-searchers, 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 Ex-pansion
Quantitative Ex-pansion
Introductory Stage
Invention creatingPatent creating
Patent analyzingMarket dominating
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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 rein-forced
• Licensing strat-egy• A notice of warn-ing is sent to late-comers• regular monitor-ing• active litigation
• Consilience of patent/planning/strategy
• Analyzing abil-ity is reinforced
• Analysis of competitors• Analysis of own patents• Improving own patents• International application• Actions against core patents
• Application ability is rein-forced
• Patent applica-tion is promoted• Even class C patents!• Merit system is introduced
• Employee in-vention compen-sation
• Inventing abil-ity is reinforced
• Creativity led culture• Thinking of trend• Concealment
• Invention Work-shop
Management of Patent
(MOP)Qualitative Expansion
Quantitative Expansion
Introductory Stage
26
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 applica-tion ability is rein-forced• Employee invention
• Invention ability is reinforced• Invention workshop
Management of Patent
(MOP)Qualitative Expansion
Quantitative Expansion
Introductory Stage
OEM companyIn-house
production company
Patent holding
companyMOP
company• Few or no patents• Subordinate to big
companies • High probability of
replacement most small and medium enterprises
• Small number of patents
• Competitors may en-ter the market
most listed compa-nies
• Number of patents rapidly increase
• Own technology pool is built up
• Have experienced getting sued
Companies that run patent teams
• Strong patent com-petitiveness
• Licensing cases are increasing
• Innovative earn-ings is rapidly in-creasing
Companies that run licensing teams
27
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
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BLTBusiness, Law & Technology
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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
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BLTBusiness, Law & Technology
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Jeonghan Eom
• NPEs could jump over the 4 steps of MOP since they escaped from <production> and only focused on the <patent value>.
• ① NPEs that practiced the ‘Patent Value Strategy’ reached IPOs or high profit; ② NPEs that did not do are suffered from the pressure from VCs They attack poor Korean companies
Revolution of MOP = NPE
introductory stage
quantitative expansion
qualitative expansion
Manage-ment of
Patent (MOP)
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Business, Law & Tech-nology
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BLTBusiness, Law & Technology www.BLTe.kr
Management of Patent (MOP)
Full-time patent man-ager
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BLTBusiness, Law & Technology
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Jeonghan Eom
Worries that makes patent manager troubled
Patent Man-ager
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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 <strategy that a patent makes money> to
CEO
Or, at least,
PM is to suggesta <strategy that com-
petitors’ patents should not disrupt our busi-
ness>
BLTBusiness, Law & Technology
BLT
Jeonghan Eom
Worries that makes patent manager troubled
Or, at least,
PM is to suggesta <strategy that com-
petitors’ patents should not disrupt our busi-
ness>
33
BLTBusiness, Law & Technology
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Jeonghan Eom
Way of patent strategist
삼성 , LG 가 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 <strategy that a patent makes money> to
CEO
MOPqualitative expansion
quantitative expansion
introductory stage
Earnings from Licensing
$3 mil $30 mil for
10 years
International appli-cations increase
Participates standard confer-
enceOA Value Up
H.264 patent(100 times increased)+ patent team ex-panded
H.264 patent(2 discov-
ered)
+ discover-ing Re-
searches34
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 multi-
plied through contracts/marketing.• For companies to create innovative earnings, licensing team should be set up.
Way of patent strategist
Production Earn-ings
• 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 com-pany
Innovative Earn-ings• Earnings from patents or
design IPs
• Its value is determined by contract or marketing
• Regardless of the value chain, it can be maintained
• 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 roy-alty from every sewing machine produced in the United States.
World’s first patent strategist
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BLTBusiness, Law & Technology
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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 pro-duce 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
Business, Law & Tech-nology
BLT
BLTBusiness, Law & Technology www.BLTe.kr
Management of Patent (MOP)
Patent Value Strategy & Patent Portfolio
38
By Oh Byung Seok (Base) + BLT (Adapt)
BLTBusiness, Law & Technology
BLT
Jeonghan EomTime
Market needs against technology
Value per patent
ValueStrong patent
Convenience, Diverse technology
Strong patent
Productivity increasing
technologies
• In Oh Byung Seok’s book <Patent Value Strategy>, strategies for patent value are presented in detail.
Patent Value Strategy
* Oh Byung Seok, Patent Attorney
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BLTBusiness, Law & Technology
BLT
Jeonghan Eom
Time
Market needs against technology
Value per patent
ValueStrong patent
Strong patent
Productivity increasing
technologies
• Finding the inflection of <market demand> is the core of Patent strategy.
Core of Patent Value Strategy
* Oh Byung Seok, Patent Attorney
Original technology
① Standardization② fashion
① ChickenGame
40
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
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* Personal imagination
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
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 <unseen operation system>• PC-based OS Mobile OS Glass OS (relating hardware, Codec, App, etc.)
Promising patent dispute area <2> = next generation OS technology
43
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BLTBusiness, Law & Technology 44 Jeonghan Eom
Patent buying strategy
Time
Value
StrongPatent
Convenience, Diverse technology
StrongPatent
Patents to buy
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BLTBusiness, Law & Technology 45 Jeonghan Eom
Patent buying strategy
Time
Value StrongPatent
Patents to buy① Patents that university/ government-funded insti-tute hold- comparatively low cost- co-research is available in future- they invite gov-led R&D projects
② Patents that corpora-tions hold- merge and acquire small companies
- acquire patents of bankrupt firms- buy overseas patent at bargain- fortunately, acquire essential patents
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 ar-eas
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
BLT
BLTBusiness, Law & Technology Jeonghan Eom
A case of MOP companies – Gillette
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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 in-vestment
30 Comprehensive patents
(for every line-ups)
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BLTBusiness, Law & Technology Jeonghan Eom
A case of MOP companies – Gillette (patent portfolio constructed)
49
Set limits (in detail) to subject’s range!
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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 4,813,131US 4,785,534 US D377,237US 5,113,585
BLT
BLTBusiness, Law & Technology Jeonghan Eom
A case of MOP companies – Gillette (patent portfolio constructed)
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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?
BLT
BLTBusiness, Law & Technology Jeonghan Eom
Another case: HAAN steam cleaners
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BLTBusiness, Law & Technology Jeonghan Eom
Another case: HAAN steam cleaners
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Steam cleaneroriginal patent
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BLTBusiness, Law & Technology Jeonghan Eom
Another case: HAAN steam cleaners
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813,538 813,537 813,539
401,327
793,413
881,943 776,841 734,569
BLT
BLTBusiness, Law & Technology Jeonghan Eom
Another case: HAAN steam cleaners
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Time
Value Strong Patent
Convenience, Diverse technology
Strong Patent
Business, Law & Tech-nology
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BLTBusiness, Law & Technology www.BLTe.kr
Patent-driven Invention technique
6HA invention method
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By BLT patent & law office
BLTBusiness, Law & Technology
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58 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
What
(which part of what)
Who
When Where How
WhyFinding items
*Start
*Finish
*R&D
* Materialization of invention
*Market needs
BLTBusiness, Law & Technology
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59 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
How to discover potential demand of market by 6HA invention method (example)