This document discusses patent risk and countermeasures related to open management in interaction design (IxD). It first provides background on IxD and open management. It then analyzes general patent risks in open management, such as practitioners infringing on patents or others patenting practitioners' work. Risks specific to IxD's small budgets and open culture are also examined. The document proposes countermeasures including low-cost options like patent searches and notarization, and more comprehensive options like patent applications. It concludes by outlining prevention and after-the-fact countermeasures suited to IxD open management, and topics for future study.

1. 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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2. 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
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3. Yamaguchi Center for Arts and Media [YCAM]
‣ Art Center Specialized for Media Art
‣ Production Team
www.ycam.jp

4. Patent Risk and Countermeasures
Related to Open Management
in Interaction Design

5. background
Interaction Design (IxD)
= design focused on communication with computers
‣ post GUI
‣ development of digital signage / ubiquitous computing
‣ emphasis in government policies *
* 知的財産推進計画2006、技術戦略マップ2010
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6. background
‣ sole proprietors or small production companies
develop creatively and lead the market
”Catchyoo Graffiti”, LM3LABS “Freqtric Drums”, Tetsuaki BABA
“Nike Stadium Tokyo presents Mercurial Live”
.
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7. background
few previous study of IP management in IxD*
What IP management is
possible in IxD / suitable to 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
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8. prior research
composition elements of IP in IxD *1
current usage of Exclusive Management *2
problems of Exclusive Management
ability of Open Management to solve them *3
.
*1 Yosuke SAKAI, Haruo HAMADA: Management of intellectual property in interaction design -Consideration of elements as intellectual
property and handling by present legal practice
*2 Yosuke SAKAI, Haruo HAMADA: Management of intellectual property in interaction design -Case study on use of present legal practice
*3 Yosuke Sakai: Case Study in Open Source Development in Interaction Design, Human Interface Symposium 2012
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9. prior research
‣ Open Management
‣ put product [ everybody can use / develop
under certain rules]
‣ Open Source Software、Open Source Hardware、
Open Contents
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10. problem
Open Management in IxD
GOOD!?
RISKS?
.
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11. goal
Risk in IxD Open Management
IP Risk
Patent Risk
Countermeasure
.
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12. method
‣ 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
‣ a+b. [IxD] countermeasure suited to IxD Open Management
‣ Conclusion
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13. result
‣ 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
‣ a+b. [IxD] countermeasure suited to IxD Open Operation
‣ Conclusion
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14. result
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
.
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15. result
a. [general] Expected risk, circumstances, and countermeasures
Expected risk Circumstances Countermeasures
1 Practitioner infringes on a third party's patent 1.1 Failure to confirm the existence of 1.1.1 Patent search
rights (application before being common patent prior to infringement >> Patent search, making patent map
awareness or public use) >> 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 2.1 No patent application submission 2.1.1 Publication and proof of common awareness or public use
technology produced by the practitioner (after >> Publication
being common awareness or public use) >> Proof of common awareness or public use
2.1.2 Application of patent
>> Application of patent
2.2 Application for patent (after being 2.2.1 provision of information to patent office
common awareness or public use of the >> Provision of information to patent office
production) was submitted but has not (>> Publication and proof of common awareness or public use)
been issued as patent.
2.3 Application for patent (after being 2.3.1 Request for invalidation trial
common awareness or public use of the >> Publication and proof of common awareness or public use
production) was submitted and has been 2.3.2 Right of prior use
issued as patent. >> 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
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16. result
‣ 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
‣ a+b. [IxD] countermeasure suited to IxD Open Management
‣ Conclusion
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17. result
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
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18. result
b. [IxD] Background rerated to Patent Risk
‣ market
‣ little competition, open culture *1
‣ little conflict
‣ 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
* 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
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19. result
b. [IxD] Background rerated to Patent Risk
Low Cost Countermeasure
Necessary and Sufficient Countermeasure
.
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20. result
‣ 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
‣ a+b. [IxD] countermeasure suited to IxD Open Operation
‣ Conclusion
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21. conclusion
a+b. countermeasures suited to open operation in IxD
Expected risk Circumstances Countermeasures
1 Practitioner infringes on a third party's patent 1.1 Failure to confirm the existence of 1.1.1 Patent search
rights (application before being common patent prior to infringement >> Patent search, making patent map
awareness or public use) >> 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 2.1 No patent application submission 2.1.1 Publication and proof of common awareness or public use
technology produced by the practitioner (after >> Publicatio and Proof of common awareness or public use
being common awareness or public use) 2.1.2 Application of patent
>> Application of patent
2.2 Application for patent (after being 2.2.1 provision of information to patent office
common awareness or public use of the >> Provision of information to patent office
production) was submitted but has not (>> Publication and proof of common awareness or public use)
been issued as patent.
2.3 Application for patent (after being 2.3.1 Request for invalidation trial
common awareness or public use of the >> Publication and proof of common awareness or public use
production) was submitted and has been 2.3.2 Right of prior use
issued as patent. >> 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
.
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22. conclusion
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 :-)
* 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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23. conclusion
a+b. [prevention] countermeasures suited to open operation in IxD
‣ 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 :-)
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24. conclusion
a+b. [prevention] countermeasures suited to open operation in IxD
‣ 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
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25. conclusion
a+b. [after-the-case] countermeasures
suited to open operation in IxD
‣ case-by-case countermeasure
‣ licensing
‣ rights transfer
‣ request for invalidation trial
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26. conclusion
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...
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27. future subjects
‣ 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
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28. Patent Risk and Countermeasures Related to
Open Management in Interaction Design
thank you for listening
Yamaguchi Center for Arts and Media [YCAM]
Yosuke SAKAI
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