By Camila from IPR Daily
To compete and preserve market presence globally, corporations must commit to developing and managing intellectual capital, which has become the dominant portion of its market capitalization. Intangible assets must underscore the corporate strategy of securing and retaining market presence globally without undue interference. Unfortunately, the commitment to creating and managing intellectual capital is either not strategic or lags the commitment to R/D, product marketing and sales.
On April 16-17, American attorney from Hauptman Ham, LLP, Keith Chanroo came to China IP Training Centre and gave us a professional and profound lecture about IP monetization and IP operation in China, and he also gave suggestions to Chinese companies who’s about to enter US market.
It’s a great honor for me to meet Mr. Chanroo personally. Below is IPR Daily’s exclusive interview with Mr. Keith Chanroo.
1. Could you introduce yourself to our readers?
Keith Chanroo: I am an accomplished business and technology lawyer and specialized in intellectual property (IP) rights, licensing and litigation. I have worked with different technology companies and executives, and am experienced in negotiating and closing complex licensing and commercial agreements involving multiple technologies, including mobile and wired communication, medical devices, manufacturing, semiconductor, cloud storage, media, gaming, entertainment, consumer products, OS and app. software, etc.
I have 25 years legal and IP experience, and extensive oversees experience working with/for multinational companies in US, Asia and Europe. I have hands-on experience handling IP, licensing and litigation matters, and managing business development and IP operations.
As for my working experience,I have worked at Apple, as Licensing and Strategy Counsel; Taiwan Semiconductor Manufacturing Company (“TSMC”), as Chief IP Counsel, Xilinx, as Chief IP Officer; and Motorola, both as a research engineer and head of IP.
I think my experience has given me the unique opportunity of working with executives, developing corporate IP, business, and litigations strategies, both as a member of a team and as an individual contributor. I am experienced in working with and presenting to senior executives, and knows how to execute on plan to deliver quality work product timely. I have excellent interpersonal and management skills, a sense of humor and an optimistic personality that help him to overcome barriers to reach consensus.
2. China is quite a big market, and your firm in China is about to be founded this year, is there any plan of your firm in China recently?
Keith Chanroo: Our firm has worked with Chinese companies and Chinese patent professionals starting from when Mr. Hauptman hosted the first delegation of 13 Chinese professionals who attended the MIP (masters in intellectual property) program at Franklin Pierce Law Center in 1987. We established a china practice group several years ago and recruited a number of Chinese IP professionals to communicate in Chinese with our Chinese clients, including Ms. Yi Suo who is primarily engaged in business development. This year, we hope to have a fully operational office in china, and we are currently searching for an appropriate location.
Mr. Hauptman has written a book on drafting U.S. patent applications and amendments and responses to U.S. office actions, which will be published in Chinese by Intellectual Property Publishing House co. Ltd. (Beijing) in July 2017.
3. When learning about your firm, I read about a class your client will take, called PADIAS. Could you introduce it to us?
Keith Chanroo: The PADIAS (Patent Application Drafting & Infringement Avoidance Strategies) course was established 25 years ago by Ben Hauptman, our founding partner, who was an adjunct professor at Franklin Pierce Law Center, and was later taught by Ben and our partners throughout Asia to provide non US IP professionals with the education they need to prepare US patent applications and respond to USPTO office actions.
Unlike any other course and its distinguishing feature is that all student assignments (applications and amendments) are reviewed and revised in written detail by the course instructor as if the work was being prepared for one of our clients. The reviewed assignments are then discussed in the next class so that everyone can benefit from each others errors and how to avoid them in future work. Since a significant percentage of our students later become our clients, we feel that the education and training we give them allow us to work more efficiently with them on future cases. The PADIAS course embodies our service concept of educating and communicating with our clients so they understand the high quality and value we give them in obtaining strong patents at affordable prices.
About the lecture
4. Based on your understanding of the patent policy and the whole patenting environment in China, what’s your view on IP operation’s trend in China? Do you have any suggestion?
Keith Chanroo: China is viewed primarily as country with cost effective manufacturing expertise, but China is now on the verge of transformation to Intellectual Capital management and a leader in innovation. With the government support for IP training, China is ready for innovation, and needs to be ready for patenting its invention earlier in the product cycle. Hauptman and Ham, LLP firm is ready and willing to assist companies, including start-ups, and mid-size ready for the transformation into intellectual capital management and management of IP as corporate assets.
5. In Saturday’s lecture, you brought up a concept called the life cycle approach, could you simply introduce it to us?
Keith Chanroo: The life cycle approach, for example, will look at:
(a) Employees, their motivations, rewards, trainings and corporate goals during the different stages: innovations, inventions, patent applications and patents.
(b) Proactively recognizing and capturing innovations, and determining relative strategic value.
(c) Information that may be shared with outside counsel to educate outside counsel in securing valuable and usable patent assets.
(d) Understand the value of filed patent applications and issues patents as corporate assets and aligning budget with the right assets.
(e) Manage corporate patent portfolio to cover your products and preserve your competitiveness in the marketplace.
(f) Know your patents, and determine if there are gaps in coverage that can be filled through acquisitions.
6. Risks and benefits are coexisting when patents are monetizing. What risks the companies should pay more attention to in the process of monetization?
Keith Chanroo: The most important value to company is to make sure they are treating Intellectual Property as corporate asset and to ensure the organization uses and manages those assets as it would with any other assets the company owns. The company can better exploit its IP assets if it understands the life cycle of its IP assets. The IP assets should give the company the freedom to operate and corporate IP department should make sure the assets are aligned with the company’s product strategy.
More importantly if companies decide to pursue a monetization strategy, it undertakes the appropriate due diligence and risk assessment before the executing its IP monetization strategy.
7. More start-ups are coming into market recently, without the consciousness of patent, they will confront with lawsuits from NPEs. Therefore, how will those start-ups handle the litigation from competitors or from NPEs? Do you have any reminder for those start-ups? Do you have any suggestion for those companies who are about to enter US market?
Keith Chanroo: Start-up and midsize companies need to secure the right assets to protect their products and technology, and also need to be aware of NPE’s and their activities in China. They need to develop process to protect their inventions early. An acquisition strategy to acquire or license patents is strategic to their products and business. Engaging counsel early to help to develop the right strategy will help companies navigate and prepare for this risk, include “best practices” in dealing with NPEs, an area that the Hauptman and Ham firm is experienced in.
Source: IPR Daily.com
Writer and Editor: Camila (firstname.lastname@example.org)