1. IP Transaction / Monetization
in Asia -AIPLA MWI, Orlando 2015-
JPAA International Activities Center
Yoshiyuki “Yoshi” Inaba
TMI Associates

2. Role of Patent Portfolio in Japan
Old Model: Patents Protect Products  　
World’s Largest Patent Portfolio for defensive purposes
・to protect their products
・to enable freedom to operate
・to be ready for cross-licensing
New Model: Patents Themselves Are Products
New US-style way of using patent portfolio
・to foster collaboration and underpin open
innovation platforms
・to access financial markets
・to enter into Patent Transaction activities
・to monetize

3. Types of Patent Transactions (Basics)
Patent Licensing (Outbound / Inbound)
Patent Sales / Patent Acquisitions
Technology Transfer (outbound / Inbound)

4. Players in Patent Transactions
Operating Companies
NEC, Panasonic, Renesas Electronics
Hon Hai, Lenovo
NPEs/PAEs
Intellectual Ventures Japan, Acacia Research Group,
Conversant IP Japan, Syndefense, Transpacific IP
Aggregators
RPX Asia
Funds
IP Bridge
5. Trolls

5. People in Patent Intermediaries /NPES
High-profile figures from in-house IP/Legal Departments of big Japanese operating companies.
IP Bridge
Mr. Shigeharu Yoshii: Former Senior Vice President of
SANYO Electric Co., Ltd.
Conversant IP Japan
Mr. Hiroyuki Takahori: Former Pioneer employee
Intellectual Ventures Japan
Mr. Masanobu Kato: Former Chairman and
Representative Director, FUJITSU RESEARCH
INSTITUTE

6. People in Patent Intermediaries/NPES (Cont’d)
Acacia Research Group
Mr. Hiro Seki: Former Chief IP Officer a General
Manager of Renesas Electronics Corporation
RPX Asia
Mr. Kyoichi Ideno: Former SEIKO EPSON
　　 CORPORATION, IP Deputy General Administrative
Manager
Syndefense
Mr. Hisao Yamazaki: Former Hitachi IP div. ,
then RPS Asia

7. Patent Transactions by Japanese Corporations
NEC sold flat-panel patents to Hon Hai for $122 million (Sep 2012)
Hon Hai US affiliate MiiCs & Partners sued Toshiba, Funai Electric
and Mitsubishi Electric based on patents that probably include
those Hon Hai obtained from NEC.
Panasonic sold 900 semiconductor patents to a Canadian NPE, Wi-LAN (Dec 2013) and some other patents to Inventergy and SISVEL.
Panasonic sold 857 electronics patents to IP Bridge (2014)
NEC sold 3,800 mobile patents to Lenovo (April 2014)
Renesas Electronics and Acacia Research strengthen Patent Partnership Alliance (July 2014) -----privateering
ROHM Semiconductor has entered into a privateering agreement with Wi-LAN on a patent portfolio relating to semiconductor technology.

8. Other Approaches by Japanese Corporations
Canon became one of the founding members of License On Transfer Network (LOTNET).
LOTNET members give each other royalty–free licenses to any
patents that they sell on to other entities, thus limiting the impact
if they end up in the hands of NPEs.
Toyota a few weeks ago revealed that it would grant access to
thousands of its Fuel Cell Vehicle related patents on a royalty
-free basis.
It shows countrymen that patent value creation does not have to
be about lawsuits or aggressive monetization of patents.

9. Other Activities In Asia
1. Many IP Funds Established in Asian Countries
Japan
IP Bridge
China
Tianjin Binhai International IP Exchange, IP Bank-China, Zhi Gu
Korea
Intellectual Discovery, IP Cube Partners
Taiwan
Taiwan Medtech Fund, IP Bank-Taiwan

10. Other Activities In Asia (Cont’d)
2. IP Hub Master Plan in Singapore
In March 2013, Intellectual Property Office of Singapore (IPOS)
announced “Intellectual Property Hub Master Plan” to be accomplished in 10 years.
1. Hub for IP Transactions and Management
2. Hub for Quality IP Filings
3. Hub for IP Dispute Resolution
There are similar movements in Hong Kong.
3. IP- Based Financing
Malaysia
Singapore
China 10

11. Conclusion
Change of Approach in IP value creation is on its way in Asian countries, especially in Japan; From Defensive To Offensive.
However, there are many corporations who are still reluctant to enter into
aggressive monetization of their patents or deal with NPEs for
privateering.
Toyota’s announcement of royalty–free license on FCV patents shows
that patent strategy is not a binary choice of assertion or nothing.
Instead, once you own a strong portfolio, what you have is a range of
options and a great deal of flexibility to create additional value from
patent assets.
Most Important: Build Strong (large & good quality) patent portfolio! 11

12. Thank you for your attention!
Yoshiyuki “Yoshi” Inaba
TMI Associates