[blt] management of patent - how to reinforce your company's ip capacity

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

Jeonghan Eom, patent [email protected] / +82-70-4100-0102

mailto:[email protected]

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

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Eom, Jeonghan(patent attorney)

Yoo, Cheolhyun (patent attorney)


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)

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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 [email protected]

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mailto:[email protected]


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BLTBusiness, Law & Technology www.BLTe.kr

Slide to settle the disputeApple vs Samsung

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Why the dispute, Apple vs. Samsung?

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Why did the Apple vs. Samsung lawsuits occur?

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CREATIVE’s movement light, thin, short, and small

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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 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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The passing over of Steve Jobs Infringe-ment!?

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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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Infringe-ment!?

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Work-arounds!?

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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


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Time series MOP theory

4 Steps of MOP

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By BLT patent & law office


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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

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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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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??)

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=


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Jeonghan Eom

• Patent competitiveness of Korean companies in terms of patent number?

Patent Competitiveness

* Not exact numerical figures

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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 theoryis needed!

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Jeonghan Eom

• Japan’s Trinity strategy is a theory too abstractive, academic and diffi-cult to apply for the practical use.

Another MOP theory <1>

http://blog.naver.com/PostView.nhn?blogId=wipsmaster&logNo=50156791045

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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 examina-tion

• Creating a patent map to investigate competitors’ move

• Using the patents

Connection with Busi-ness Strategy• Using patent information as

the basis of business deci-sion such as entering a new market or forming an al-liance with other companies

• Securing rights as offense, defense, and prevention

Connection with R&D strategy• Using patent information for analyz-

ing own technology or setting forth R&D themes

• Using patent information as the basis of selecting partners for cooperative R&D

Trinity Strat-egy

http://blog.naver.com/PostView.nhn?blogId=wipsmaster&logNo=50156791045


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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

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http://www.bioin.or.kr/board.do?cmd=view&bid=patent&num=188422


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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

Introduc-tory stage

Quantita-tive Ex-pansion

Qualitative Expansion

Manage-ment of Patent (MOP)

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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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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

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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

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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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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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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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Full-time patent man-ager

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Jeonghan Eom


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>


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Jeonghan Eom


Or, at least,

PM is to suggesta <strategy that com-

petitors’ patents should not disrupt our busi-

ness>

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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


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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

• Only researcher and licens-ings needed

• Multinational company, patent specialized firm (NPE)

Com-pany’s

Earnings

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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 roy-alty from every sewing machine produced in the United States.

World’s first patent strategist

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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


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Patent Value Strategy & Patent Portfolio

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By Oh Byung Seok (Base) + BLT (Adapt)


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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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Jeonghan Eom

Time

Market needs against technology

Value per patent

ValueStrong patent

Strong patent


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

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Jeonghan Eom

Time

Value


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


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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

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* Personal imagination


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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

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BLTBusiness, Law & Technology 44 Jeonghan Eom

Patent buying strategy

Time

Value

StrongPatent


StrongPatent

Patents to buy

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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


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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

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A case of MOP companies – Gillette

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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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A case of MOP companies – Gillette (patent portfolio constructed)

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Set limits (in detail) to subject’s range!

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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

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Another case: HAAN steam cleaners

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• 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?

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Steam cleaneroriginal patent

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813,538 813,537 813,539

401,327

793,413

881,943 776,841 734,569

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Time

Value Strong Patent


Strong Patent


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Patent-driven Invention technique

6HA invention method

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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


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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)

6HA Invention workshop regis-tration / questions:

• Jeonghan Eom [email protected]


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60 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

What product should we in-vent?


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MOP

4 steps of Management of Patent

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4 steps of MOP

MOPQualitativeExpansion

QuantitativeExpansion

IntroductoryStage

Missions for <Introductory stage>• Patent management position should be assigned to the existing manpower

• Patent education / Invention education

• Invention competition (It’s Fun~!!)• Prior Art research education

Effects•Creative culture•Motivation •Motive for technology development

Not urgent?

First, do things not expensive...

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4 steps of MOP



IntroductoryStage

Missions for <Quantitative Expansion>• Full-time patent manager positioned• a written notice for invention is mandatory

• Compensation for employee invention is introduced

• Researcher’s patent creation ability is beefed up

Effects•Number of

application increases•Researcher’s

confidence increases•Number of cases

applying techincreases

Patent application fees are

burdensome?

Find a suitable patent law firm

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4 steps of MOP



IntroductoryStage

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)

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4 steps of MOP



IntroductoryStage

• All IPs that attacked Samsung were applications filed at the step of <Quantitative Expan-sion>.

• After that, Apple did M&A and bought NORTEL at the step of <Qualitative Expansion>

• Apple initiates its strategy through Rockstar Bidco LP, etc. at the step of <MOP>MOPQualitative

ExpansionQuantita-tive Expal-

sion

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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 Quanti-tative Expan-

sion

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4 steps of MOP



IntroductoryStage

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 <Qualitative Expansion>• Patent task force is established• Producing strategic patents for the value up

• Competitors are constantly analyzed• Researcher’s patent analyzing ability

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Qualitative Expansion - GDI

Valuation, Brokerage, Consulting

Invention, R&D, Standardization

Prosecution, Value-Up,Litigation

Full coverage of IP-R&D Service

GOOD DAY toINVENT

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Patent search & analysisYearly patent managementIP business consulting

IP ConsultingEducationVC invest, M&A

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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

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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

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Qualitative Expansion – GDI – TEG(Tech Experts Group)

For about GDI, ask:

• Henney Oh, PhD [email protected]

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4 steps of MOP



IntroductoryStage

Effects•Market dominance

•Patent competitiveness•Earnings from

Licensing orLitigation

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

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BLTBusiness, Law & Technology Jeonghan Eom73


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www.BLTe.kr 74

GDI IP alliance

The only FIRM who cares for your SUCCESS

BLTJeonghan Eom

[email protected]

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[blt] management of patent - how to reinforce your company's ip capacity

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