You operate across many jurisdictions to provide global business success for your clients. What steps can rights holders take to maximise the protectability of their intangible assets in multiple countries?
Rights holders should adopt a comprehensive and proactive strategy. First, they should conduct thorough due diligence to understand the IP landscape in each target jurisdiction. This includes identifying potential conflicts and understanding local laws and regulations. Second, they should file for IP protection early and in key markets, leveraging international treaties such as the Patent Cooperation Treaty or the Madrid Protocol for trademarks. Third, maintaining a robust IP management system to monitor and enforce rights is crucial. This includes regular audits and employing local counsel to navigate jurisdiction-specific challenges.
Additionally, to build a competitive and cost-effective patent portfolio, it is essential to categorise patents into business-unit-specific portfolios and organise information accordingly. Conducting cost-benefit analyses on a per-business-unit basis helps in maintaining a balanced and strategic approach. Selecting patents or portfolios for abandonment requires careful consideration of various factors, such as the number of patents and associated costs in each business unit, as well as the competitive landscape within those units. This strategic categorisation and analysis ensures that resources are allocated efficiently and the portfolio remains aligned with the company’s overall business objectives.
Finally, fostering a culture of IP awareness within the organisation ensures that all employees understand the importance of protecting intangible assets. By integrating these steps, rights holders can effectively safeguard their intangible assets and enhance their global business success.
NGB works with more than 5,000 companies across a wide range of industries. As a director, how do you stay abreast of the latest developments in such an array of fields?
Keeping abreast of the latest developments across various industries requires a multifaceted approach. I prioritise continuous learning through industry-specific publications, attending conferences and participating in professional networks. I also leverage technology by using advanced analytics tools and subscribing to industry-specific databases that provide real-time updates. Collaborating with a diverse team of experts within NGB also allows for knowledge sharing and cross-industry insights.
One of NGB’s strengths is our extensive support for the IP activities of more than 5,000 leading companies in Japan. This unique position provides us with the opportunity to stay in touch with the latest technological trends and understand the challenges that our clients face. By working closely with our clients, we can address and solve these issues together, which creates a collaborative environment that fosters innovation and problem solving.
Regularly engaging with clients to understand their evolving needs and challenges further keeps me informed about the latest trends and innovations. This direct interaction not only helps me to stay updated but also allows us to tailor our services to better meet each client’s specific needs. By integrating these approaches, I ensure that I remain well informed and capable of providing the highest level of service to our diverse clientele.
What is the biggest professional challenge you have faced in your career so far, and what can others learn from how you overcame it?
One of the biggest professional challenges I have faced involved navigating the complexities of a major cross-border IP litigation case. The case covered multiple jurisdictions with differing legal frameworks, which required a deep understanding of international IP law and strategic coordination. I assembled a multidisciplinary team of experts – both internal and external – to provide comprehensive legal and technical support. Effective communication and meticulous planning were key to our success. I cannot emphasise enough the importance of collaboration, adaptability and the value of a well-rounded team in tackling complex challenges.
In your view, what is the biggest threat to keeping trade secrets secret, and how would you go about mitigating this?
The biggest threat is internal breaches, often due to insufficient employee awareness or malicious intent. Companies should implement a robust trade secret protection programme to mitigate this. This includes regular employee training on the importance of confidentiality, establishing clear policies and procedures for handling sensitive information and using non-disclosure agreements. Additionally, employing advanced cybersecurity measures to protect digital assets and conducting regular audits to identify and address potential vulnerabilities are crucial steps. Creating a culture of trust and accountability within the organisation also plays a significant role in safeguarding trade secrets.
Last year you told IAM that ESG was beginning to impact corporate values. With companies increasingly being expected to demonstrate how their technology contributes to a more sustainable society, how are you helping them achieve this, and how do you see attitudes shifting in future?
We assist companies in aligning their IP strategies with ESG goals by identifying and protecting innovations that contribute to sustainability. This includes advising on green technologies, renewable energy solutions and environmentally friendly processes. We also help clients navigate regulatory requirements and obtain certifications that validate their contributions to sustainability.
In Japan, the revision of the Corporate Governance Code has led to greater disclosure of ESG information and intellectual capital. However, the extent of disclosure varies between the perspectives of investors and companies. Investors often seek comprehensive and transparent information to make informed decisions, while companies may be more cautious to protect competitive advantage and sensitive information.
In the future, I see a growing emphasis on transparency and accountability, with companies increasingly integrating ESG metrics into their core business strategies. This shift will likely drive more innovation in sustainable technologies and practices, which will further embed ESG principles into corporate values. We are helping our clients navigate these evolving expectations and ensure that their contributions to a sustainable society are effectively communicated and recognised.
What legislative developments or decisions are having the biggest impact on IP strategy in Japan right now?
Recent legislative developments, such as amendments to the Patent Act, are significantly impacting IP strategy in Japan. These changes aim to streamline the patent application process, enhance protection for design rights and improve enforcement mechanisms. Additionally, the increasing focus on digital transformation and AI-related innovations is driving the need for updated IP frameworks to address new challenges. Companies must stay informed about these changes and adapt their IP strategies accordingly to leverage new opportunities and ensure compliance with evolving regulations.
Against the backdrop of the recent proliferation of patent pools, what, in your view, is the cornerstone of a world-class licensing strategy?
The cornerstone of a world-class licensing strategy is a well-balanced approach that maximises value while minimising risks. This involves conducting thorough due diligence to understand the market potential and competitive landscape. It is crucial to establish clear and fair licensing terms that protect the interests of both licensors and licensees. Further, leveraging patent pools can provide access to a broader range of technologies and reduce litigation risks. Effective communication and negotiation skills are essential to building strong partnerships and ensuring mutual benefits. Regularly reviewing and updating the licensing strategy to adapt to market changes and technological advancements is also key to long-term success.
With more than 30 years of experience in the IP industry, how have client demands shifted, and how do you expect them to evolve over the next five years?
Over the past three decades, client demands have shifted from seeking basic IP protection to requiring comprehensive IP management and strategic advisory services. Clients now expect tailored solutions that align with their business goals and address complex global challenges. In the next five years, I anticipate a growing demand for expertise in emerging technologies, such as AI, blockchain and biotechnology. Clients will increasingly seek guidance on navigating the regulatory landscape and leveraging intellectual property to drive innovation and sustainability. The need for proactive IP risk management and enforcement strategies will also become more pronounced as the global IP environment continues to evolve.
What makes NGB stand out?
NGB stands out in the IP industry due to its comprehensive service offerings, client-centric approach and employees’ deep expertise. Our team of seasoned professionals bring a wealth of knowledge across various industries and jurisdictions, which enables us to provide tailored solutions that meet each client’s unique needs. We prioritise building long-term relationships and delivering exceptional value through strategic advisory services, robust IP management and effective enforcement strategies.
Our commitment to innovation and continuous improvement ensures that we stay ahead of industry trends and provide cutting-edge solutions. Additionally, our global network and collaborative approach enable us to support clients in navigating complex international IP landscapes. This combination of expertise, client focus and innovative solutions makes NGB a stand-out player in the IP industry both in Japan and beyond.
Which aspect of your work do you enjoy most and why?
The aspect of my work that I enjoy most is the opportunity to collaborate with clients and help them achieve their business goals through strategic IP management. I find it incredibly rewarding to see how our tailored solutions can drive innovation, protect valuable assets and create a competitive advantage for our clients. The dynamic nature of the IP industry with its constant evolution and new challenges keeps me engaged and motivated, and working with a diverse team of experts and learning from their insights and experiences is both inspiring and enriching.