Intellectual Property Strategy and Patent Specifications
Chapter 1: Current Requirements for Patent Specifications
1. The Ideal Intellectual Creation Cycle
In July 2002, Japan's government announced a national strategy aimed at becoming an "Intellectual Property Nation" through a framework established by the Intellectual Property Strategy Conference.
Definition of Intellectual Property Nation: A national strategy to realize a vibrant economic society through the strategic creation, protection, and utilization of intellectual property (IP).
Examples of intellectual property include designs, brands, and content such as music and films.
Technological Intellectual Property: A crucial form of intellectual property that emerges from corporate research and development. It refers specifically to new technologies (or technical ideas) which can be protected through patents.
The process entails creating an invention, protecting it as a patent, and maximizing corporate profitability and competitiveness through the utilization of that patent.
To enhance industrial competitiveness using patents, companies must:
Create higher quality inventions (Research and Development)
Accurately draft and acquire patents
Effectively utilize acquired patents to reinvest part of the profits into research and development
This cyclical process fosters technological advancement and industrial development, termed the ideal intellectual creation cycle.
2. Collaboration with Patent Attorneys in the Intellectual Creation Cycle
Questions arise regarding whether many companies effectively implement their intellectual creation cycle.
To facilitate a smooth flow and generate a positive cycle of creation, protection, and utilization, each aspect must be treated with equal importance.
Example: Even an incredible invention cannot be effectively utilized if it fails to be accurately patented.
Companies often spend immense resources generating an invention that must then be effectively converted into a patent.
The phases of creation (invention), protection (patenting), and utilization typically occur within company activities, yet outside patent attorneys play an important role during the protection phase.
Patent attorneys are professionals involved in drafting patent specifications (which includes both claims and the specification under patent law), significantly contributing to the protection aspect of the intellectual creation cycle.
When patent attorneys are involved in the protection phase, organic collaboration between attorneys and companies is essential.
The goal is to create a patent specification that enables the acquisition of high-quality patents.
A critical reflection is necessary on whether this collaboration is presently achievable.
3. Requirements for Quality Patent Specifications
Definition of Quality Patent: What constitutes a good patent? A common notion is that a good patent is characterized by being "broad and strong".
Broad Patent: A patent that covers a wider scope of rights.
Strong Patent: A patent that can withstand challenges from third parties.
Generally, it is essential to draft patent specifications that target both broadness and strength.
However, an ideal patent specification for a company is not always one that broadly claims rights and attains a strong patent.
Ultimately, the required patent specification should enable the company to achieve its objectives and utilize patents effectively, aligning with the company’s patent strategy.
Although broad and strong patents are advantageous, they must also reflect desirability to license and the ability to protect the business. Therefore, the ultimate goal is a patent that contributes directly to accomplishing the company's objectives.
Thus, a truly desirable patent specification can be defined as one that achieves the goals of the company.
Quality Patent Specifications: They are merely one aspect of a broader definition of good patent specifications.
4. Transition from Quantity to Quality
Traditionally, many companies in Japan have focused on the quantity of patent applications, striving to file as many as possible.
This has resulted in Japan becoming a leading nation in terms of patent applications.
In specific industries, a certain number of patent applications may be necessary.
However, the current trend is shifting from a competitive emphasis on the number of applications (“quantity”) to prioritizing effective monetization and patents that significantly contribute to business (“quality”).
More companies are transitioning to patent strategies that emphasize quality.
These organizations begin to focus on constructing patent portfolios that integrate their business strategy and technological development strategy.
To secure quality patents, drafting high-quality patent specifications is essential.
A quality patent specification is defined as one that can contribute to achieving the company’s objectives.
Creation of Quality Patent Specifications: Who can produce them?
This could be in-house intellectual property personnel at the company or external patent attorneys through which the company often commissions the drafting.
Regardless of the source, a common necessity is to implement quality management of patent specifications.
5. Quality Management of Patent Specifications
In general, companies implement rigorous quality management for their products and services to enhance their quality.
This is often performed through a quality control (QC) system.
QC activities typically operate through a cycle known as PDCA (Plan, Do, Check, Action).
Steps within the cycle:
Plan: Design
Do: Manufacturing
Check: Inspection
Action: Improvement
This process aims to enhance each cycle by following the sequence, ultimately leading to spiral improvements.
Particularly significant within this model are the “Check” and “Action” phases that play crucial roles in improving product quality.
A similar approach should also apply to patent specifications.
To create quality patent specifications, it is critical not to submit something as is without review. The Check and Action phases must be diligently applied for quality improvement.
For instance, when in-house IP personnel draft patent specifications, those documents must be checked by supervisors or inventors (Check) who then provide feedback on necessary improvements (Action).
If companies outsource specification drafting, the quality of the completed patent specifications by patent attorneys should also be subject to thorough checks and feedback by the company’s IP staff and inventors.
During the planning stage, it is important to communicate the invention content, objectives of the application, and the company's patent strategy to the attorney.
A rigorous Check and Action implementation is vital to achieving quality patent specifications.
Summary of Chapter 1
The goal is to create higher quality inventions, accurately protect them as patents, and utilize those patents effectively to foster an ongoing cycle of more advantageous inventions.
Essential to this is the creation of quality patent specifications defined as those that can achieve company objectives through acquired patents.
Quality management is critical, highlighting the need for companies to check and provide feedback on patent specifications created by patent attorneys to ensure the specifications meet intended purposes.