The term “IP Mix Strategy” began to be used around 2013. However, since the foundation of our firm in 2000, we have proposed application strategies of combination of IP rights for one innovation. Especially we propose strategies for both patent and design applications for one innovation.
In large-sized IP firms, patent attorneys and design-patent attorneys are separated, and they rarely have collaboration. This system may sometimes be good for efficient workflows. However, if patent-eligible innovations involve design features or vice versa, such innovative features may remain buried.
On the other hand, every attorney in our firm offers one stop service for patents and designs. We can offer useful advices from design aspects when clients wishes to file patent applications or vice versa.
Through our practice, we can discover both design and patent eligible features that the clients could not find by themselves. We are able to file patent and design applications one-stop to get patent and design rights for a single innovation, thus the innovation is protected by multifaceted and multilayered rights.
Patent-eligible inventions involve technical ideas and design-eligible innovations involve aesthetic appearances, which are different from each other. If a single innovation involves both patent-eligible and design-eligible features, the scopes of patent and design rights do not overlap. As a result of utilizing our strategy, a single innovation is widely protected by multiple rights. This enables enforcement of one of patent and design rights, even if enforcement of the other right is difficult.
In addition, if one feature is both patent and design eligible, the scopes of patent and design rights overlap, which results in protecting one innovation by multilayered rights. As a result, in the event of enforcement, the adverse party is forced to cope with both the patent and design rights, so their burden is doubled and we can gain advantages in the dispute. Additionally, if one right (e.g., patent right) expires or is invalid, enforcement of the other right (e.g., design right) is enabled.
According to our experience, since the client held both patent and design rights for one product, enforcement of the design rights was succeeded in an infringement suit while enforcement of the patent rights was not partially allowed.
Supported by our IP mix strategy, the multifaceted and multilayered rights maximize the benefits of our clients.
We have a translation group consisting of six translators. This is nearly 20% of the total members.
Most IP firms outsource incoming and outgoing translations to third-party translation firms. The IP firms generally charge their clients translation cost with their margin.
Although some IP firms have in-house translators, mid-sized firms like us rarely have in-house translators accounting for nearly 20% of the total members.
Original domestic specifications to be translated are of course drafted by the attorneys of our firm, so the translators can interview the attorneys face to face to understand the technical backgrounds of the invention.
The attorneys check the translated specification after every translation, so the translators can brush up their translation quickly and reliably.
This workflow enables high-quality in-house translations at very reasonable prices without outsourcing, which in turn leads to a reduction in incoming and outgoing application costs.