Utilizing SME Patent Portfolio Strategy For Long-Term Value. “Broadcast Industry Technology”: Success Against Corporate Refusal Notices
Note Re. Kimura & Partners Japanese Patent Mini-Case Studies
Kimura & Partners publishes Patent and other IP Mini Cases. These cover the range of IP types across the numerous industries we work in. They are short summaries to inform IP professionals and businesses on salient issues relevant to IP law and business. If a certain case study hits the mark for you, you’ll be armed to deepen your knowledge before you take action, and increase your likelihood of success. We are always happy to discuss such cases or other matters with any readers who reach out to us.
We’ve worked with countless Japanese and foreign SMEs, and their leaders and inventors who are often one and the same. Kimura often refers to the “IP Battleground” given the challenges and risks such companies face. We salute SME’s globally as they are the engine for economic growth everywhere.
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Takaaki Kimura
Mini Case #2. Utilizing SME Patent Portfolio Strategy For Long-Term Value
“Broadcast Industry Technology”: Success Against Corporate Refusal Notices
This mini case shows the practical use of Patent Portfolios to leverage the value of inventions. Specially, by adding new Patents that build on a core technological innovation and ensuring long-term protection and greater commercial success
The client in this case is a company that possesses the best technology in Japan regarding the use of broadcast content. Although it is an SME, it possesses technology that is superior to that of large companies in this field. So, although it’s a niche area, the SMEs competitors in various related technologies are well-known big companies.
The inventor in this case had a very high level of technological capability, and had a history of being active in a US corporation and having sold the invention technology to the US government.
In this company’s case, it is not a divisional application strategy, rather it is a strategy to form a “patent portfolio” by filing a large number of individual patent applications. We have been working with this company for about 20 years, and during that time we have filed many patent applications: the basic invention and concept of the invention are very solid. The subsequent technological development and patent applications were related to its improvement, and advancement of the basic concept.
During this time, in the fields of communication technology including the web and video distribution technology, there have been major changes relating to hardware and software, including the development and use of AI technology. Yet, in part due to the Portfolio strategy implemented, the client’s inventions and technologies have been successfully incorporated into various new industry-related technologies.
Our client receives numerous refusal references from well-known large companies, in the examination of its patent applications on related inventions – it is our job to overcome the evidences presented in these refusal notices. However and again, since the basic core technology is so original, in many cases it is not difficult to ensure inventive step. You can say this is “the victory of overwhelming technology.”
The client has now established more than 30 “patent portfolios” – and here we can see an excellent example of how “even though the company is small, they are not defeated by famous large enterprises due to their invented technologies”.
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