blogCustomer Spotlight: Shobayashi International Patent Office

Integrating IP into business with "Live Search"

Patent attorney as a facilitator

Shobayashi International Patent and Trademark Office Executive Vice President, Patent Attorney Takuya Saito

As the importance of intellectual property rises, the role of patent attorneys is changing too. Takuya shares how Amplified has become a critical part of his hands-on approach to helping client’s develop IP that is meaningful to their business.

── Tell us about your firm, Shobayashi Patent and Trademark Office?

We advertise ourselves as specialists in IP for business growth. We are only 23 years old, relatively young by patent law firm standards, but are proud to be one of the fastest growing patent offices in Japan with more than 330 people now. In addition to patent attorneys with corporate in-house backgrounds we also have many experienced examiners and judges from the Japan Patent Office. People like me with in-house backgrounds become experts at truly understanding an invention and then accurately expressing that in writing as a patent. On the other hand, examiners and judges get really good at reading patents to interpret things like novelty and inventive step. Being able to go back and forth between the “readers” and “writers” is a really powerful technique for securing patent rights and determining infringement. That’s the approach we use to support IP creation that adds real business value.

In February 2019 we established a new practice specifically focused on standards which I am currently the director of. We support the development of various standards from national standards (JIS) to international standards (ISO, etc.) and support the creation of new markets through quality assurance and certification. Although this practice is very new, we are the first patent law firm promoting Japan’s market competitiveness as a partner in the development of standards. This kind of support and advice for standard development became one of the patent attorney's advocacy duties in the 2019 revision of the law and we are leading the way in this area.

── IP has been an important part of standards for a long time now, hasn’t it?

Standardization aims to unify technical specifications for the benefit of everyone so it can seem to be at odds with the exclusivity and limited monopoly aim of patents. However when IP is used effectively it can also attract more players and drive new market growth. So I think it makes sense to have one practice specializing in standardization and another that is strong in IP creation and enforcement.

For example, the patent on the QR code expired in 2014 but the license on the QR code trademark continues. All technology eventually becomes old but useful things remain in the market. Even after patents expire you can still create revenue through branding and standardization. I think these aspects are typical of intellectual property assets that drive business growth.

── What is your day-to-day work like? Specifically what kind of things do you focus on?

I think of myself as a virtual IP department. Recently, the amount of IP activities that startups and high growth companies have to deal with is increasing. Despite the growing amount of work it still isn’t enough to justify a full-time hire. Even bigger companies struggle with this. There are people responsible for new business creation but can’t borrow resources from in-house IP team to support their needs. A lot of people are struggling by themselves like this. So I offer to spend 6 months as virtual head of IP. As a business, there are a wide range IP activities to consider beyond just filing patents. There is also evidence preservation, contract negotiation, investigation analysis, dispute resolution, establishment of rules, etc. You’ve got to do these things but people often don't know when and how. So I come in and listen to management’s challenges and then outline what’s needed from an IP operations perspective. In that sense, the president, executives, management department, compliance department, etc. provide the input for a plan that I then execute.

── So you’re taking a management level plan and then building out the necessary IP processes, is that right? Are there any particularly important processes that you focus on?

One is ideation and invention brainstorming which we call “live patent search”. Actually we launched this service as a result of using Amplified. Invention brainstorming itself is something we’ve done for a long time in order to come up with proposals for patents that are obtainable and help secure strong market share. In the past we had to wait about two weeks for a patent search to validate those proposals. But now I bring Amplified to the brainstorming session and we validate ideas in real-time by “live searching” with the client.

Actually the two week time lag wasn’t the only issue. Reading patents is really, really difficult. Engineers without experience and knowledge in IP find it hard to benefit. In the past I would send manual search report results to the client asking them to read the highly ranked ones. But in practice almost no one actually did it. The key difference with "live patent search" is that we can read and understand the patent while we’re discussing it. I can tell them generally what the patent says and we can talk about what’s unique and useful.

The reaction is completely different. Engineers come up with better ideas and inspiration. At the same time, the IP side can help advise on which ideas seem patentable. Being able to interactively discuss patentability while brainstorming new ideas is seriously valuable. Every time we do one of these live brainstorming sessions people come away very impressed.

Another big value of live searching is that the customer can contribute their expertise. For example, one live search was about a gear. My background is software so I’m no expert in this kind of mechanical field but the engineer could point directly to the drawings in the patents and explain many valuable points in a short period of time. The amazing thing about real-time searching together is the fusion of expertise across the team. Instead of separating knowledge between the person doing the search and the person asking for one you benefit from the combined knowledge of everyone present. As a result, teams with diverse specialties working on patent information together in real-time are able to understand patents much faster and more accurately. We use Amplified’s discussion feature to keep a record of that knowledge so that we can keep the conversation going even after the brainstorming session. I think this gives us more opportunities to add value to our clients.

── We’re putting a lot of effort into the real-time interface design so I’m really glad to hear that you’re using it to such great effect. Are the speed and accuracy of results good enough?

Oh yes. The response time and accuracy of results are perfect for us. In these real-time discussions we can't stand silence for more than 10 seconds. For example, you can enter an invention description and Amplified returns results in 5 seconds. It’s ready to go while I’m explaining a patent or brainstorming ideas. The reason I was able to offer this service in the first place was because of the guaranteed fast response time I experienced when I tried Amplified.

In terms of accuracy, our clients are convinced by the results. People talk about accuracy a lot with patent search tools but I think it's just a matter of how much time you’re willing to spend. At some point what you find actually changes the reason you were searching to begin with. Currently the results we find are enough to instantly spark natural debate and discussion among the engineers and other participants. So that’s accuracy.

What convinced me to launch this service was an experience with one of our clients at a large company. They wanted to embed invention brainstorming into their internal processes and help increase understanding and awareness about what can be patented. But it was too much work for one person to handle so I tried doing a live search with the engineers using Amplified. To my surprise they were really engaged and didn’t get bored! That was an eye-opening experience.

── I always propose this kind of real-time research and discussion as one key use case when I talk about ways to utilize Amplified in practice. But there are times when I feel some resistance to the idea of doing a live search with their team even from people who are very comfortable using Amplified.

I think so, too. There are many talented people working as patent attorneys and IP analysts but this kind of interactive collaboration requires some different skills. Face-to-face communication is key. Intellectual property work has a culture of working alone in quiet concentration so I think the idea of researching while talking to people in real-time may feel intimidating.

Both patent attorneys and analysts, especially those who have been examiners, are able to read patents very quickly. On the other hand, it’s different when you’re not reading just for your own understanding. Communicating the content to engineers in a way that is easy to understand at the same time you are searching can be hard at first. However, I think this gets easier with practice. I believe there are many talented IP workers with potential to do live searching and I would like to help increase the number who can.

── Typically IP work is conceptualized as securing rights. It’s very reactive – you could even say administrative in nature. But your practice seems to take a much more active role which is quite different. What caused you to go in this direction?

I think there’s a problem that people who know how to utilize IP for business aren’t given the opportunity to. I think there are many people who want to use IP to create business value. For example, there is an IP analysis certification for people who use IP information to support management decisions. In Japan about 1000 people have this certification and most of them work in-house. But at their companies they do the same work as everyone else – preparing patent applications and responding to office actions.

I felt like this is such a waste so I put together an organization called NBIL5 to match IP analysts with business owners. Analysts who had extra time and energy were eager to participate and the business owners were impressed by their reports. Actually these analysts are using Amplified now too and conducting invention brainstorming and live searches. From seeing what has happened with this community, I feel there is a lot of room to develop human resources who can handle intellectual property for business. And I hope the opportunity in this field expands as more and more companies experience the valuable information they can get.

I’d like for people who haven’t had a chance to work with patents to become more familiar with them. The good thing about doing a live search is that you get an immediate response from engineers like, “wow I can get this kind of information from patents?” and “oh I didn’t know you could do this…”. My clients use Amplified to add comments immediately after the live search. I try to reply as soon as I receive the notification and this helps to build a much stronger level of engagement and incorporate IP activities into their regular work. By raising the interest and lowering the bar to reading patents you can implement solid IP operations with very few resources.

If we increase the number of people who can use patents in their work then I think we can break down the barriers between IP teams and the rest of the company. I’ve always noticed that out of all the business activities and functions, IP is particularly cut off. Communication tends to be transactional and distant like, “OK we’ll leave the search and filing up to you contact us if you need something”. But since I started doing live searches I can feel that these barriers have fallen away.

── You’re engaged in a lot of progressive work with exciting potential. What motivates you?

Patents are there for the business not the other way around so I enjoy work that results in business success. I was a software engineer before coming to the world of intellectual property and what surprised me most was that I didn't know the patent system at all. Software patents are a bit strange and I remember clearly being shocked at some of the things you could get a patent for. I think I could have done a better job if I knew that as an engineer. Speaking of luxury, I want all software workers to know how fun and important patents are. As the software business grows, I think that if the people making software also understand patents better then they’ll find IP activities more enjoyable and valuable. I want to do that kind of thing together and I believe live search is a good opportunity.

I would also like corporate IP departments to try doing live searching themselves. Honestly I didn't know if I could do it until I tried. I was nervous whether customers would get along with me without getting bored or tired. And I was worried about what to do if I was told that they couldn’t understand some complicated patent words. But when I actually started doing the live searches, it was really well accepted. I recommend trying a live search in-house If you are a corporate IP department or an engineer who is in IP. And of course, I’m always happy to help with that so please feel free to contact me anytime!