patent risk and countermeasures related to open management in interaction design

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Patent Risk and Countermeasures Related to Open Management in Interaction Design

2012 10th International Conference of Asia Digital Art and Design Association &6th International Conference of Taiwan Association of Digital Media Design

Yamaguchi Center for Arts and Media [YCAM] Yosuke SAKAI

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Tremor Refrain 02 The Journal of the Society For Art and Science Volume.10, No.3 pp.201-203, 2011

Interactive System for Displaying Videos Recorded at Different Positions and Speeds Depending on Position of User's Face and Eyes - PATH 01 -The Virtual Reality Society of Japan the 15th Annual Conference 2010

Yamaguchi Center for Arts and Media [YCAM]‣ Art Center Specialized for Media Art

‣ Production Team

www.ycam.jp

Patent Risk and Countermeasures

Related to Open Management

in Interaction Design

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Interaction Design (IxD)

= design focused on communication with computers

‣ post GUI‣ development of digital signage / ubiquitous computing‣ emphasis in government policies *

background

* 知的財産推進計画2006、技術戦略マップ2010

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”Catchyoo Graffiti”, LM3LABS

“Nike Stadium Tokyo presents Mercurial Live”

“Freqtric Drums”, Tetsuaki BABA

‣ sole proprietors or small production companies develop creatively and lead the market

background

.

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What IP management is

possible in IxD / suitable to IxD?

.

few previous study of IP management in IxD*

* 『九州大学先導的デジタルコンテンツ創成支援ユニット報告書』2010年3月,九州大学先導的デジタルコンテンツ創成支援ユニット

background

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ability of Open Management to solve them *3

.

prior research

composition elements of IP in IxD *1

current usage of Exclusive Management *2

problems of Exclusive Management

*2 Yosuke SAKAI, Haruo HAMADA: Management of intellectual property in interaction design -Case study on use of present legal practice

*1 Yosuke SAKAI, Haruo HAMADA: Management of intellectual property in interaction design -Consideration of elements as intellectual property and handling by present legal practice

*3 Yosuke Sakai: Case Study in Open Source Development in Interaction Design, Human Interface Symposium 2012

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‣ Open Management

‣ put product [ everybody can use / develop under certain rules]

‣ Open Source Software、Open Source Hardware、Open Contents

prior research

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Open Management in IxD

GOOD!?

RISKS?

.

problem

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Risk in IxD Open Management

IP Risk

Patent Risk

Countermeasure

goal

.

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‣ a+b. [IxD] countermeasure suited to IxD Open Management

‣ a. [general] patent risks / circumstances in Open Management,countermeasures

‣ b. [IxD] background* Yosuke SAKAI, Haruo HAMADA: Management of intellectual property in interaction design -Case study on use of present legal practice

‣ Conclusion

method

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‣ a+b. [IxD] countermeasure suited to IxD Open Operation



‣ Conclusion

result

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a. [general] Expected risk, circumstances, and countermeasures

‣ expected risks

‣ 1) Practitioner infringes on third party's patent rights

‣ 2) Third party acquires patent rights for technology produced by the practitioner

.

result

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a. [general] Expected risk, circumstances, and countermeasuresExpected risk Circumstances Countermeasures

1 Practitioner infringes on a third party's patent rights (application before being common awareness or public use)

1.1 Failure to confirm the existence of patent prior to infringement

1.1.1 Patent search>> Patent search, making patent map>> Securing an expert opinion



1.1.2 Application for patent and examination request>> Application of patent and examination request


1.2 Patent infringement exists 1.2.1 Rights handling >> Licensing, transfer of rights


1.2 Patent infringement exists

1.2.2 Request for invalidation trial >> Request for invalidation trial



1.2.3 Redesign



1.2.4 No countermeasure 2 Third party acquires patent rights for technology produced by the practitioner (after being common awareness or public use)

2.1 No patent application submission 2.1.1 Publication and proof of common awareness or public use >> Publication >> Proof of common awareness or public use

2 Third party acquires patent rights for technology produced by the practitioner (after being common awareness or public use)

2.1 No patent application submission

2.1.2 Application of patent >> Application of patent


2.2 Application for patent (after being common awareness or public use of the production) was submitted but has not been issued as patent.

2.2.1 provision of information to patent office >> Provision of information to patent office (>> Publication and proof of common awareness or public use)


2.3 Application for patent (after being common awareness or public use of the production) was submitted and has been issued as patent.

2.3.1 Request for invalidation trial >> Publication and proof of common awareness or public use



2.3.2 Right of prior use >> Publication and proof of common awareness or public use



2.3.3 Rights handling >> Licensing, transfer of rights (>> Publication and proof of common awareness or public use)



2.3. No countermeasure

result

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‣ a+b. [IxD] countermeasure suited to IxD Open Management



‣ Conclusion

result

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b. [IxD] Background rerated to Patent Risk

‣ cost issue‣ small budget *

Low Cost Countermeasure

* Yosuke SAKAI, Haruo HAMADA: Management of intellectual property in interaction design -Case study on use of present legal practice

result

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* 日本弁理士会平成17年度ソフトウェア委員会第2部会「オープンソースソフトウェアのライセンスと特許権」パテント2006 Vol.59 No.6

result

‣ pursuing court case‣ expensive to pursue court case‣ low amount of damage compensation *2‣ damage to the plaintiff’s own image

‣ low incidence rate

Necessary and Sufficient Countermeasure

* Yosuke SAKAI, Haruo HAMADA: Management of intellectual property in interaction design -Case study on use of present legal practice

‣ market‣ little competition, open culture *1

‣ little conflict

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Low Cost Countermeasure

Necessary and Sufficient Countermeasure

result

.

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‣ a+b. [IxD] countermeasure suited to IxD Open Operation



‣ Conclusion

result

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Expected risk Circumstances Countermeasures1 Practitioner infringes on a third party's patent rights (application before being common awareness or public use)


1.1.1 Patent search>> Patent search, making patent map>> Securing an expert opinion



1.1.2 Application for patent and examination request>> Application of patent and examination request


1.2 Patent infringement exists 1.2.1 Rights handling >> Licensing, transfer of rights



1.2.2 Request for invalidation trial >> Request for invalidation trial



1.2.3 Redesign



1.2.4 No countermeasure 2 Third party acquires patent rights for technology produced by the practitioner (after being common awareness or public use)

2.1 No patent application submission 2.1.1 Publication and proof of common awareness or public use >> Publicatio and Proof of common awareness or public use


2.1 No patent application submission

2.1.2 Application of patent >> Application of patent


2.2 Application for patent (after being common awareness or public use of the production) was submitted but has not been issued as patent.

2.2.1 provision of information to patent office >> Provision of information to patent office (>> Publication and proof of common awareness or public use)



2.3.1 Request for invalidation trial >> Publication and proof of common awareness or public use



2.3.2 Right of prior use >> Publication and proof of common awareness or public use



2.3.3 Rights handling >> Licensing, transfer of rights (>> Publication and proof of common awareness or public use)



2.3. No countermeasure

a+b. countermeasures suited to open operation in IxD

conclusion

.

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a+b. [prevention] countermeasures suited to open operation in IxD

‣ patent search and patent map‣ possible with short period training *‣ free database>> low cost :-)

‣ avoid infringement ‣ reduce negligence liability‣ effective in 1)>> significant effect :-)

conclusion

* 山口大学大学研究推進機構知的財産センター特許情報検索講習会 http://www.sangaku.yamaguchi-u.ac.jp/chizai/chizai.html

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‣ notarization “fixed date”

‣ cheap, easy to obtain: less than $10>> low cost :-)

‣ proof of common awareness or public use‣ irrefutable‣ effective in 2)>> significant effect :-)

conclusion

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‣ patent rights application / acquisition / maintenance

‣ expensive : $5k (from $170 to over $30k)>> gradual cost (high cost)　　:-(

‣ proof of common awareness or public use‣ exclusive right‣ effective in 1) 2)>> gradual effect (very strong effect)　 :-)

>>> gradual countermeasure >>> option

conclusion

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a+b. [after-the-case] countermeasures suited to open operation in IxD

‣ case-by-case countermeasure

‣ licensing‣ rights transfer‣ request for invalidation trial

conclusion

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a+b. countermeasures suited to open operation in IxD

‣ Prevention Countermeasure‣ patent search and patent map‣ notarization “fixed date”‣ patent rights (application/acquisition/mainainance)(option)

‣ After-the-fact Countermeasure‣ case-by-case basis‣ licensing,rights transfer,request for invalidation trial...

conclusion

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‣ other risk and effectiveness of Open License‣ other IP risks (design rights, trademarks, copyrights, etc.)‣ risks other than IP (such as management)‣ effectiveness of open license (including patent related article

and defect liability risks)‣ correspondence in cases where a market grows substantially

‣ building IP management model in IxD and Media Art‣ IP creation cycle model that incorporates open management‣ Open Management models in media art IxD

future subjects

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Patent Risk and Countermeasures Related to Open Management in Interaction Design

thank you for listening

Yamaguchi Center for Arts and Media [YCAM] Yosuke SAKAI

patent risk and countermeasures related to open management in interaction design

Design

ixd open operation

ixd background

ixd countermeasure

ixd suitable

interaction design case

open source development

design association

general expected risk