6

Promotion of Intellectual Property Strategies of Companies(*)

It has been pointed out that, Japanese companies still overemphasize acquisition of domestic IP rights
rather than foreign IP rights compared to companies in major western countries, consequently reducing
their international competitiveness through involuntary outflow of technical information overseas. One
possible cause is the malfunctioning of Japanese companies' IP strategies. In particular, experts on IP-based
business management have indicated that companies may not have been capable of formulating individual
IP strategies suiting their own circumstances (internal/external environment) and that the IP division andother divisions within a company may not have been sufficiently coordinated in formulating andimplementing IP strategies.
In this study, with an aim to look into the progress status of promotion of Japanese companies' IP
strategies, mainly the coordination between the IP division and other divisions, and to consider thedesirable forms of the various measures implemented for further promoting IP strategies, questionnaire
and interview surveys were conducted, and the results were deliberated and summarized by the committee
established for this study.

Ⅰ Introduction
1

Background and purpose of this study

Recognizing the importance of promoting theintellectual property (IP) strategies of Japanesecompanies in order to strengthen theircompetitiveness, the Japan Patent Office (JPO)
has implemented various measures that havebeen formulated in the FY2003 Patent Strategic
Plan and the FY2006 Patent Examination Reform
Acceleration Plan for Innovation Promotion, suchas holding opinion-exchange meetings between
companies and the JPO and formulating anddisseminating a document titled "Moving Towards
Strategic Intellectual Property Management—To
enhance technology management: A Compilationof Intellectual Property Cases."
However, it has been pointed out that,looking at the current status of IP activities ofJapanese companies, these companies stilloveremphasize acquisition of domestic IP rights
rather than foreign IP rights compared tocompaniesinmajor
westerncountries,
consequently
reducing
theirinternational
competitiveness through involuntary outflow oftechnical information overseas. One possible
cause is the malfunctioning of Japanesecompanies' IP strategies. With regard to thecoordination between the IP division and otherdivisions, in particular, experts on IP-based
business management have indicated thatcompanies may not have been capable of(*)

formulating individual IP strategies suiting theirown
circumstances(internal/external
environment) and that the IP division and otherdivisions within a company may not have been
sufficiently coordinated in formulating andimplementing IP strategies. In addition, users
have pointed out that the question of how thecoordination between the IP division and otherdivisions should be promoted is a matter thatneeds to be studied in the future.
In this manner, further promotion of IP
strategies, mainly the coordination between the
IP division and other divisions, is an urgent issue
for preventing the outflow of technicalinformation caused by Japanese companies'
overemphasis on domestic patent applications andtostrengthen
Japanesecompanies'
competitiveness. On this basis, this study firstlooks into the progress of promotion of Japanesecompanies' IP strategies, mainly the coordination
between the IP division and other divisions, andconsiders the desirable forms of the various
measures implemented for further promoting IP
strategies, such as the opinion-exchange
meetings between the JPO and companies, aswell as summarizes the case examples obtained inthat process, with an aim to create basic materials
for promoting companies' IP strategies.
2

Method for implementing this study

In order to obtain information on theabove-mentioned matters, a questionnaire survey

This is an English translation of the summary of the report published under the Research Study Project on Issues
with Industrial Property Rights System FY2010 entrusted by the Japan Patent Office. IIP is entirely responsible forany errors in expression or description of the translation. When any ambiguity is found in the English translation,
the original Japanese text shall be prevailing.
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IIP Bulletin 2011 Vol.20

1 ●(4) Analysis of the correlation between the
JPO measures and the questionnaire
surveyThe results of the domestic questionnaire
survey and the data of the patent rate, etc. of eachcompany, borrowed from the JPO, were combined
to investigate their correlation, and thecorrelation was quantitatively analyzed.

Ⅱ Results of the Questionnaire
Survey and the Interview Survey
1

Coordination between the IP divisionand other divisions
Accordingtothequestionnaire(Q 13-1)(Q 12-1)(Q 11-1)(Q 9-1)(Q 10-1)(Q 8-1)(Q 7-1)(Q 6-1)(Q 5-1)(Q 4-1)(3) Committee for this study
As a group that can discuss, analyze, and give
advice on the contents of this study from anexpert viewpoint, a study committee consisting ofacademic experts, lawyers, and industrial experts
was established, and three committee meetings
were held.

Involvement
Rate of involvement of the IP division in 13 major IP operationsrate(Q 3-1)(2) Interview survey
An interview survey was conducted mainlyon the following four items, targeting 30 domestic
companies:- Outlook on the global IP strategy- Strengthening of the IP management system- Involvement of the management team in the IP
activities- Desirable form of exchange of opinions, etc.
between companies and the JPO(Q 2-1)(1) Questionnaire survey
A questionnaire survey was conducted on
the following five items, targeting 1,071 domestic
companies:- I. Basic information on the company and its IP
division- II. Coordination between the IP division andother divisions- III. IP activities responding to the filings offoreign applications- IV. Involvement of the management team (theboard of directors/the director in charge) in IP
activities- V. Opinion-exchange meetings, etc. with the JPO

results, more than 90% of the companies(exceeding the red dotted line in the figure
below) responded that their IP division was
involved in the following seven operations fromamong a total of 13 major IP operations of IP
divisions indicated in this study: "formulation of
IP strategies (Q 1-1)," "cultivation of in-house
technology seeds (Q 2-1)," "implementation ofactivities for patent filing and registration (Q3-1)," "assessment of the company's own andother companies' patents (Q 4-1)," "disputes withother companies (Q 5-1)," "IP operations relating
to joint R&D with other companies (Q 9-1)," and"activities/education for raising employees' IP
awareness (Q 12-1)." Also, about 80% of thecompanies responded that their IP division was
involved in "introduction of technology from othercompanies (Q 6-1)," "licensing of technology toother companies (Q 7-1)," and "development of
in-house infrastructure for increasing theefficiency of IP activities, etc. (Q 13-1)."(Q 1-1)and an interview survey were conducted. A
committee was set up for this study to deliberateon the methods and results of the questionnaire
survey and the interview survey.

While the degree of coordination with the IP
division differed between the major IP operations,the divisions with the highest degree of
coordination were the "R&D division" and the"board of directors or the director in charge,"
followed by the "management planning division,""marketing
division,""overseas
operation
division," "manufacturing division," and "design
division."
Compared to ten years ago, the degree of
coordination with the IP division had increased
for all divisions, excluding the "procurement
division" and "quality assurance division." Thedegree became notably stronger for the "R&D
division," "board of directors or the director in
charge," and "legal affairs division," while thedegreealso
becamestrongerforthe"management planning division," "marketing
division," "overseas operation division," "sales
division," and "manufacturing division."survey●2 ●IIP Bulletin 2011 Vol.20

●

IIP Bulletin 2011 Vol.20

Changes in the degree of coordination (by status of
implementation of trinity management)
4
3.5
3
2.5
2

Implemented

Somewhat implemented

Procurement
division
Quality assurance
division

Design division

IT division

Manufacturing
division

Sales division

R&D division

Overseas operation
division

Personnel affairs
division
Public relations
division

Marketing division1

Technical service
division
Financial affairs/
accounting division
Management
planning division

1.5
Legal affairs division

An analysis from the viewpoint of trinity
management shows that the degree ofcooperation between the IP division and otherdivisions tended to be higher for companies
claiming to be implementing trinity management.
The committee saw a consensus that there is acorrelation between the status of implementationof trinity management and the degree of
coordination between the IP division and otherdivisions. While the three components of thetrinity are said to be the IP division, the R&D
division, and the operating division, thecommittee indicated that, in actuality, the IP
division needs to promote coordination not onlywith those divisions, but with all other relevant
divisions in processes from upstream todownstream in the value chain. Furthermore, thecommittee concluded that the divisions withwhich the IP division needs to coordinate must be
assessed after sufficiently analyzing thecompany's external and internal environments.
However, since some companies may besending IP experts into other divisions that
require stronger IP ability and strengthening its
structure
so
that
such
divisionscanindependently carry out IP-related operations, it
should be noted that the status of implementationof trinity management cannot be fully assessed by
the degree of coordination between the IP
division and other divisions.
For example, the questionnaire survey result
showed a low degree of coordination even forcompanies claiming to be implementing trinity
management with regard to coordination between
the IP division and other divisions, such as the
procurement division. This result contrasted theinterview survey result in that the awareness ofpatentclearancewasrisinginbusiness-to-business transactions. Since it isunclear whether this is because companies areaware of the need for coordination but are still in
the process of establishing such structure, or
because experts are already allocated to otherdivisions where there is no need for coordination,
there is room to conduct a more in-depth survey.
In any case, in order to implement trinity
management, individual divisions need to sharethe direction of their respective goals with eachother as well as to tune the direction of theirgoals toward the direction of the company's
management goal. To this end, the IP divisionmust assume a role that can contribute to otherdivisions' achievement of goals, and a desirable
coordination between the IP division and otherdivisions should be pursued by sufficiently
analyzing the company's internal and external
environments.

Board of directors or
the director in charge

Quality assurance
division

Design division

Procurement division

IT division

Manufacturing division

Sales division

R&D division

Overseas operation
division

Public relations divisionMarketing division

Personnel affairs division

Technical service
division
Financial affairs/
accounting division
Management planning
division

Legal affairs division

Board of directors or the
director in charge

Changes in the status of coordination

Not implemented

Degree coordination between the IP division and the board of directors/director in
知財部門と取締役会・担当役員との各業務における連携度（三位一体経営の実践度別）
charge in each operation (by status of implementation of trinity management)
４：非常に連携
３：まあまあ連携
２：ほとんど連携なし
１：全く連携なし 1: No coordination
4: Strong coordination
3: Somecoordination
2: Weak coordination

Formulation of IP strategies
Development of in-house infrastructure for increasing 知財戦略の策定
社内からの技術シーズ（発明やノウ
Cultivation of in-house technology seeds
the efficiency 知財活動の効率化や他部門との連of IP activities and strengthening
4(inventions,know-how, etc.)
携強化のために社内インフラの整備
ハウなど）の発掘活動
coordination with other divisions
3.5
Implementation of activities for patent
社員に対する知財への意識の向上
出願・権利化（産業財産権）のため
Activities/education
for raising employees' IP
filingand registration (industrial property
3のための活動・教育等
awarenessの活動
rights)IP activities 技術の標準化に対する知財活動
for technology standardization

2.5
2
1.5
1

自社の特許について評価活動
Assessment of the company's own patents

企業・事業の売買または合併に必IP activities
necessary for the buying or
selling of or a merger
with a company or
要な知財活動business

Assessment of other companies' patents
他社の特許について評価活動

IP operations
relating to joint R&D with
他社との共同研究開発に係る知財Industrial property right disputes with
他社との産業財産権の係争活動
other companies
other companies
業務
IP activities relating to introduction of technology from
他社とのクロスライセンスについて
他社からの技術導入（譲受、ライセ
IP activities
relating to cross-licensing
other companies (receiving technology transfer,with otherの知財活動
companiesンスイン）についての知財活動
licensing-in)
IP activities relating to licensing of
他社に対する技術供与（譲渡、ライ
technology to other companies (making
センスアウト）についての知財活動
technology transfer, licensing-out)

三位一体経営の実践→
Implementationof trinity management→

2

できている
Implemented

Somewhat
多少できている
implemented

Not
implemented（あまり）(Hardly
できていないimplemented)

IP activities responding to the filings offoreign applications

According to the questionnaire survey 1 ,many companies (77%) indicated the growing
importance of acquiring patent rights in foreigncountries, and 85% of the companies wereactually filing foreign patent applications. All suchcompanies were filing patent applications in bothadvanced and developing countries, with amajority of the applications filed in Europe andthe United States in the case of advanced

3 ●countries and in China in the case of emerging
countries (90%).
The most frequently mentioned purpose offiling foreign applications was "to blockcompetitors" for both advanced and emerging
countries, followed by "to enforce patents against
competitors" in the case of advanced countries
and "as a measure against counterfeits" in thecase of emerging countries. As for the factors fordetermining the filing, companies focused on the"status/plan of implementation of business in aforeign country" and the "importance oftechnology (core technology)" for both advanced
and emerging countries, and tended to prioritize
the status of the company itself over the status ofother companies. Another frequently mentioned
determination factor for the filings in emerging
countries was the "degree of the possibility that
other companies will imitate or compete with thetechnology." Also, there were differences
between industries with regard to how actively
companies make contact with local affiliatedcompanies or local representatives. Industries
that placed more focus on patent enforcement
against competitors in foreign countries tended tomake such contact more actively.

effectiveness of enforcement when determining
foreign filings.

Factors for determining whether or not to file patentapplications (in advanced countries)
Patentability, such as the inventive step80%
Status/plan of implementation of the company's

Cost of the patent filing/registration

own business in a foreign country

60%
Possibility of patent
enforcement against
competitors

Status/plan of implementation of othercompanies' business in a foreigncountry Trinity management:

40%
20%

Implemented
Status of
implementation of
the company's own
related technology in
Japan

0%

Effectiveness ofenforcement

Somewhat
implemented
Not
implemented

Importance of technology(core technology)

Ease of discovering infringement
Degree of the possibility that othercompanies will imitate or competewith the technology

Response to standardization

Factors for determining whether or not to file patent applications(in emerging countries)
Patentability, such as the inventive step80%
Status/plan of implementation of the company's
own business in a foreign country
60%

Cost of the patentfiling/registration
Possibility of patent
enforcement against
competitors

Status/plan of implementation of othercompanies' business in a foreigncountry

40%

Trinity management:

20%

Effectiveness ofenforcement

Ease of discovering
infringement

Importance of technology (core technology)

Degree of the possibility that othercompanies will imitate or competewith the technology

Contact with local affiliated companies or local representatives
100%

Implemented
Somewhat
implemented
Not
implemented

Status of
implementation of thecompany's own
related technology in
Japan

0%

Response to standardization

90%
80%

Trinity management:

Filings of foreign applications (countries in which applications are actually filed)

70%
60%

Hardly any
contact
Insufficient
contact
Active contact

50%
40%
30%

High level
Mediumlevel
Low level

90%
80%
70%
60%
50%

20%

40%

10%

30%
20%

●

Counterfeits/ transit

Counterfeits/
production

Other
companies/R&D

Other companies/
future/production

Other companies/
future/market

Other companies/
current/production

Other companies/
current/market

Analyzing from the perspective of trinity
management, the gap between "countries inwhich applications should ideally be filed" and"countries in which applications are actually filed"in selecting the countries in which applications
are to be filed tended to be smaller for companies
claiming to be implementing trinity management.
Assumable reasons for this include thatcompanies are formulating foreign patentapplication strategies compliant with theiroverseas operation strategies, and have a budget
secured for foreign filings with the understandingof the management team. It was also found thatcompanies claiming to be implementing trinity
management were giving more consideration to
the trends of other companies and the

Own company/R&D

0%

Own company/
future/production

10%
Own company/
future/market

MachineryOwn company/current/production

ChemicalFood and
Other
Other
Electrical pharmaceuti manufactur
industries
caling

Own company/current/market

0%

In the interview survey, some countries
indicated that, when determining the countries inwhich foreign applications are to be filed, they
consider such factors as the countries in which
the company carries out production, thecontractual relationships, the countries in which
their clients carry out sales, the market size, thecountries in which counterfeits are produced, andthe countries in which the company carries out
sales, and decides whether or not to file foreign
applications and the countries in which foreign
applications are to be filed after consultation
between the operating division and the IP

4 ●IIP Bulletin 2011 Vol.20

division.
3

Involvement of the management in IP
activities(1) Management team's awareness of IP
activities
According to the questionnaire survey
results, in more than 90% of the companies
claiming to be implementing trinity management,
the management team was considering IP
activities to be an important factor for business
management. This fact suggests that there is acorrelation between the fact that the management
team considers IP activities to be an importantfactor for business management and the status of
implementation of trinity management.

are likely to be operations for which involvementof the management team needs to be promoted in
the process of implementing trinity management.
Meanwhile, for the companies implementing
trinity management, operations for which
reporting to the management team anddecision-making by the management team areboth being made by more than 80% of companies(specifically, "formulation of IP strategies,""industrial property right disputes with othercompanies," "introduction of technology fromother companies," "licensing of technology toother companies," and "cross-licensing") areconsidered to require special bi-directional
coordination between the IP division and the
management team.

Management team's awareness of IP activities (by status of
implementation of trinity management)

経営層の知財活動に対する意識（三位一体経営の実践状況別）
100%

その他
Other

90%

IP activities do not
経営に直接影響する
directlyaffect
ものでないと考えている
businessmanagement

80%
70%

IP
activities somewhat
経営に多少影響するとaffectbusiness
考えているmanagement
IP
activities are an
経営に重要な要素とimportant
考えているfactor forbusiness management

60%
50%
40%
30%
20%
10%
0%

Trinity
management
三位一体(上）(high)

Trinity
management
三位一体（中）(medium)

Trinity
management
三位一体（下）(low)

In the interview survey, some companies
mentioned that the management team's IP
awareness was raised as a result of the IP division
conducting active IP awareness-raising activities
to manufacturing divisions when the company
experienced IP lawsuits or technology transfer, or
as a result of the IP strategy office (across-divisional organization consisting of thosein charge of IP, those in charge of R&D, and thosein charge of management planning) making areport to the management team on strategic
issues concerning the operating companies. This
indicates that actions by the IP division to otherdivisions such as the operating division could
effectively trigger the management team's IP
awareness-raising.
(2) Status of implementation of reporting to
the management team and decision-making
by the management teamThe questionnaire survey revealed that, formany of the companies implementing trinity
management, the operations for which "reportingto the management team" and "decision-making
by the management team" are frequently made●IIP Bulletin 2011 Vol.20

5 ●Reporting to the management team and decision-making by the management team (companies implementing trinity management)

In the interview survey, some companies
indicated that they create occasions to makedirect reports to the president and vice-president
in order to increase their understanding of IP.
Direct coordination between the IP division andthe management team is considered to be one
method for promoting the management team's
understanding of IP.
4.

Opinion-exchange
meetings,
between companies and the JPO

Development of in-houseinfrastructure for IP activities

Activities/education for raising
employees' IP awarenessIP activities for technology
standardization

IP activities necessary for thebuying or selling of or a merger
with a company or business

IP operations relating to joint
R&D with other companies

IP activities relating tocross-licensing

IP activities relating to licensing oftechnology to other companies

IP activities relating to introductionof technology from other companies

Decision-making by the management team

Industrial property rightdisputes with other companies

Assessment of other companies'
patents

Assessment of the company's
own patents

Implementation of activities forpatent filing and registration

Cultivation of in-house
technology seeds

Formulation of IP strategies

Reporting to the management teamthe JPO included information on policies andservices, answers to their questions, andinformation the company did not have. Manycompanies said the statistical data, etc. provided
by the JPO at the meetings were highly reliable
and beneficial.
However, some companies with operating
divisions extending to a wide range of technicalfields voiced their hope that the JPO's data besorted by technical field. Also, many companies
said, because the companies can acquire statistical
data on their own, they preferred to obtaincomments from the JPO's perspective and to holdbi-directional discussions based on suchcomments. Moreover, more than a few companies
opined that the JPO should not only introduce its
policies and present statistical data, but should
also exchange opinions about medium- andlong-termprospectsofJapan'spatentadministration (a desirable patent system and thefuture direction of the system) from aninternational perspective, or that the JPO should
provide information on the status of multilateral
discussions on IP.
There were extremely strong calls for an
increase of opportunities to exchange opinions withpatent examiners on a working level, and also hopes
to cooperate with the examiners' understanding oftechnology through factory tours.
With regard to the frequency of theopinion-exchange meetings with the JPO, somecompanies said once a year would be desirable

etc.

Many companies mentioned that theopinion-exchange meetings with the JPO "served
as a trigger to review the company's patent filingand examination requesting behavior" or "served
as an opportunity to examine the company's
desirable IP strategy." In this manner, themeetings are likely to have had an effect of
upgradingcompanies'
patent-filingandexamination-requesting practices as their IP
strategies.
More than 90% of the companies responded
that they would like to hold opinion-exchange
meetings with the JPO again if they have thechance, and many companies said that themeetings provided a good opportunity to explain
IP to or to raise the IP awareness of the
management team or a good opportunity tocommunicate with the JPO.
Many companies indicated that the
information they obtained in the meetings with●

6 ●IIP Bulletin 2011 Vol.20

also from the viewpoint of periodically reviewing
their own IP activities, while other companies
said once a year would be too frequent given theworkload related to the preparation. Somecompanies also said that the JPO should actively
hold such meetings with companies that have yet
to hold such meetings with the JPO.
Many companies said that, as an effort tohold more effective opinion-exchange meetings,
good preparation should be made in advance andsufficient consideration should be made on theselection of the meeting participants (industry,company, department, and staff in charge of thepractical business) and the themes for exchanging
opinions.
Based on the above, the committee held adiscussion on how the opinion-exchange meetings
with the JPO should be held in the future, andsummarized the following opinions:(i)Since many companies consider theopinion-exchange meetings with the JPO tobe beneficial, the meetings should continue
to be held in the future. In particular, byactively holding such meetings withcompanies which have yet to hold suchmeetings with the JPO (particularly
medium-sized companies with insufficient IP
activities), efforts should be made to raise
the IP awareness and the IP activity levels of
those companies.

(ii) When holding an opinion-exchange meeting,sufficient work should be carried out in theadvance preparation, selection of theparticipants, selection of the discussion
themes while communicating with thecompany side, and a greater effort should bemade than in the past so that the meeting
would be satisfactory for both parties.
(Senior Researcher: Yasuhiko Suzuki)

1

Since the questionnaire survey has targeted samples
including the 1,000 top-ranking companies in patentfilings, it should be noted that the survey is based oncompanies with more than a certain level of IP activities.
For reference, the foreign application filing rate ofJapanese applicants was 23% (filings in 2008), with therate being 31% for the first to tenth ranking companies,
24% for the 11th to 30th ranking companies, 24% for the
31st to 100th ranking companies, and 19% for the 101st
to 300th ranking companies (see Japan Patent Office
Annual Report 2010).

●

IIP Bulletin 2011 Vol.20

7 ●