Intellectual property inventory

After acquiring intellectual property rights, do you review the rights you have acquired and make any selections?

Taking inventory of intellectual property, that is, assessing the necessity of the intellectual property you own and deciding whether to keep it or abandon it, is essential to strategically utilize intellectual property.

 

The need for intellectual property inventory

Patent rights last for 20 years from the filing date, and design rights last for a long period of 25 years from the filing date. Trademark rights can be maintained indefinitely by applying for renewal registration every 10 years.

However, to maintain intellectual property rights, you need to pay maintenance annuities and renewal fees. In addition to the stamp duty paid to the Patent Office, various other costs will be incurred, such as the fees for patent offices, etc. if you have outsourced the procedures, and the fees for local agents and management companies if the rights are held overseas. Although these are necessary expenses to protect your company's intellectual property, when they are accumulated over dozens of cases and decades, the costs can become enormous.

Although it is desirable to utilize acquired rights effectively for a long time, there are cases where rights become unnecessary due to changes in the times or business plans. Continuing to incur maintenance costs for such rights without any consideration is a disadvantage for a company.

On the other hand, by continuing to hold a large number of rights without sorting them out, you may end up with "holes" in your rights in unexpected places. Alternatively, by carefully examining your current acquired rights, you may be able to ascertain your company's strengths and weaknesses, as well as the direction of your future intellectual property and business strategies.

By organizing the intellectual property rights you have acquired and making appropriate choices, you can develop an intellectual property strategy that not only cuts costs but also increases your company's value.

 

How to take inventory of intellectual property

Patent and utility model inventory

First, we have our ownValuing patentsThis is what is most important.

When evaluating patents, it is necessary to set criteria from business, technical, legal, etc., and make an objective judgment as to whether a patent will contribute to your company's business now and in the future.

Design inventory

When assessing the necessity and importance of designs, it is important to check whether a network of rights with a wide scope has been established by utilizing the partial design system and related design system, and whether that network of rights is sufficient or not.

The Design Act was amended in 2019, expanding the period during which related designs can be filed to within 10 years from the date of the basic application. In addition, designs that are not similar to the basic design can now be registered if they are similar to the related design. These amendments make it more likely that minor changes to a design can strengthen a company's design rights.

Trademark inventory

In the case of trademarks, in addition to determining whether trademark rights are necessary, another consideration in the inventory is whether multiple rights can be refiled to consolidate into one.

By consolidating the classifications and designated goods and services that have been gradually increasing as your business expands, you may be able to reduce the effort required for managing deadlines and cut down on office and agent fees.Madrid Protocol application and registrationBy consolidating these, significant cost savings can be expected.

 

Intellectual property inventory support at patent offices

During the period of high economic growth and the bubble economy, when it was thought that both companies and markets would continue to grow and expand, intellectual property was something that should be secured by obtaining rights to as many as possible, and it may have been unthinkable to give it away. However, nowadays, such times are a thing of the past, and all companies are conscious of cost performance, and corporate intellectual property departments and personnel are required to obtain and maintain rights for more carefully selected intellectual property.

Intellectual property inventory work has been carried out by the intellectual property department and personnel in companies. However, in today's world where people's needs have diversified along with remarkable technological advances, issues that need to be considered have become more sophisticated and complex, such as new entrants from industrial fields that were previously thought to be unrelated, and social demands such as SDGs and ESG. In addition, labor shortages caused by population decline have meant that advanced goals must be achieved with fewer people and in less time.

As a large-scale, international, comprehensive intellectual property law firm, we can assist you in inventorying your intellectual property and helping to increase the corporate value of your company.

  • Establishment of evaluation criteria for intellectual property
  • Value assessment based on evaluation criteria, collection of information for evaluation
  • Organizing and mapping acquired intellectual property rights
  • Proposal of future patent rights plans and strategies

In addition, we can provide consulting at any stage and in any aspect according to your wishes.

If you have any concerns or questions about intellectual property inventory, please feel free to contact our patent office.

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