Technology at the Core of Canon Europe's Strategic IP Direction

In 2006, Canon Europe made a strategic decision to minimise its operating costs, reduce the dependency on outside counsel to oversee its patent portfolio and better manage its intellectual property (IP) matters in-house. By implementing a high-end, functionally-rich IP management system as part of this new direction, Canon Europe was able to effectively streamline the management of the entire patent life cycle allowing the organisation to improve the management of its growing portfolio and reduce the costs of maintaining its IP rights.

Christine Uffindel
Patent Attorney

Summary

Offices

Headquarters: London
Supporting around 120 countries in EMEA

Staff

Over 12,000 employees
17 employees in the IP department

Portfolio

28,000 cases in Memotech

CPA Global Solutions

Memotech
Modules: Patent, Cost Tracking
Licensing and Agreement

• Process automation reduces errors and improves efficiency
• Web-based technology creates global reach and instant, on-demand access
• Standard interface produces consistency and improves data quality
• Centralised data provides critical business intelligence

Company Background

Canon Europe is the European headquarters of Canon Inc., a world leader in imaging products and solutions for the home and the office. Founded in 1937, it is known for developing products such as scanners, digital cameras, printers, LCD projectors and has also brought to market inventions in semiconductor production equipment. In 2007, it was ranked third in the world for US patents granted with 1,989. Canon Inc. is headquartered in Japan and Canon Group companies are strategically located throughout the world, including Europe, USA, China, and Australia.

IP Department Structure

Canon Group's IP department is composed of several teams around the world who work as independent business units yet follow a common group strategy. They all report to the head of IP in Japan and meet regularly to discuss the organisation's overall IP direction. The European team is represented by Canon Europe and is located in London. Yasutomo Suzuki, Head of the European IP Group, is responsible for this team which is divided into two divisions: the patent department which specifically manages patents and the IP department which handles all other related matters such as trade marks, anti-counterfeiting, copyrights, and agreements.

With 28,000 cases under management, Canon Europe's patent department files approximately 200 applications on behalf of Canon Inc. every year, in addition to European filings from other group company offices around the world.

Furthermore, Canon Europe works with all internal stakeholders involved in product development in Europe. The patent department is very involved at each stage of the patent life cycle. The patent team collaborates on new ideas with engineers early to determine patentability and to educate them on the invention submission process. The partnership between these two groups allow for better patent life cycle management and analysis of ongoing IP activities.

Business Challenges

Canon Europe was facing two main challenges in 2005. The size of its portfolio was growing substantially yet it was using several ineffective Excel spreadsheets to manage its cases. This gave the potential for errors and omissions which ultimately created a significant risk for the organisation. The prosecution of Canon Europe's patent portfolio as well as the management of its annuities were handled by outside counsel which was costly. In order to reduce costs and minimise risks, Canon Europe took the decision to centralise its IP processes by bringing part of its portfolio in-house.

To support the growing portfolio, Canon Europe quickly realised that it was imperative to upgrade its current system to a more robust and powerful solution. Christine Uffindell, Patent Attorney for Canon Europe, came on board as the organisation was searching for a new IP management system. Christine quickly stepped in and helped Canon Europe evaluate and select the new solution. With her assistance, Canon Europe was able to find and implement a state-of-the-art IP management system that 1) purged the ineffective way of managing its portfolio with Excel spreadsheets; 2) provided the basis for successfully bringing its large portfolio in-house; 3) effectively managed annuities internally; 4) provided extensive reporting on the entire patent life cycle; and 5) added useful portfolio management functionality.

Requirements and Solutions

The initial phase in selecting a new IP management system began with a review and evaluation of Canon Europe's current internal IP management processes to determine what critical features and functionality were needed in order to move forward. It also identified the calibre of partnership it needed to help meet its IP strategy. This discovery period helped Canon Europe select a new partner and product.

These are the main reasons why Canon Europe chose CPA Global as a partner and Memotech as its new IP management system:

Partnership approach:

Canon Europe was looking for an IP partner who was established, listened to its clients and thoughtfully considered and evaluated their feedback. "The fact that CPA Global continuously invests in developing its products, offers regular product updates and releases, and involves its clients in new product direction were key decision-making factors for Canon Europe to trust CPA Global," says Christine. "Evaluating and implementing a new IP management system is the start of an important and long term partnership so it is critical to work with a good partner." Furthermore, Canon Europe wanted to work with a partner who had a wide client base in order to have access to broader insight into various best practices and knowledge. CPA Global has strong global client presence and local user groups who Canon Europe can turn to for more support and collaboration.

Rich functionality:

Memotech's rich functionality meant Canon Europe didn't have to develop custom applications to meet its needs. Some of the features it sought included audit trails; filing profiles; data inheritance from project to family; the ability to customise screens depending on user profiles; and auto generation of case references.

Configurability and flexibility:

As part of evaluating its internal IP management processes, Canon Europe assessed that it was important to use Memotech to make its new processes as efficient and as streamlined as possible. Canon Europe configured the software to meet its business requirements in several steps: 1) reviewed its current processes; 2) determined what the new ideal processes should be; and 3) created those processes in Memotech. Memotech's modular configuration was an important selection criterion for Canon Europe; it liked the ease of configuring Memotech to add on more complex functionality as the organisation grew. "Configuring Memotech to meet our business requirements was simple and the process was intuitive. An administrator simply decides and creates the events that he or she wants to record and then builds the workflows based on these events," explains Christine.

Web access and user-friendly interface:

Canon Europe attorney and formalities teams found Memotech easy to use and learn: the system was intuitive and the dashboard was organised. This helped staff get up to speed more rapidly on using Memotech's substantial functionality; users were also able to search for information more quickly. Attorney and formalities teams both have remote access which allows them to work on cases while travelling – ultimately improving efficiency and communication.

Scalability:

Canon Europe used the evaluation of its internal IP management processes as an opportunity to identify possible future requirements. "Organisations should think of what may change in the long term and the unexpected possibilities when evaluating their IP management requirements. "One of the reasons why we chose to work with CPA Global is because its products and services could scale with our needs," says Christine. Christine says selecting and working with CPA Global has had positive impacts on Canon Europe: "CPA Global is a company we can trust. The team is very helpful and they listen to their clients. Not only do they provide feedback, but they are very forthcoming with suggestions and new ideas to help us with our unique requirements." Yasutomo adds "CPA Global's innovative solutions allow Canon Europe to manage its portfolio in-house and help us to better capitalise on our IP assets."

Outcome and Results

Since implementing CPA Global's technology, Canon Europe has achieved numerous key results. Christine says that using Memotech has made the day-to-day management of its department much easier. Nearly 15 users use the system daily and Christine is hopeful that more of its offices will consolidate into one IP management system to enjoy the same benefits. Through Memotech, Canon Europe has achieved these key results:

Decreased IP risk exposure

Canon Europe realised using Excel spreadsheets to manage its patent portfolio had disadvantages. With the implementation of Memotech, Canon Europe can now calculate deadlines automatically. The data is consolidated which has resulted in better accuracy and greater efficiency, and the risk of manual and typographical errors has therefore been reduced.

"Automatic generation of these dates is extremely beneficial and mitigates risks for Canon Europe," says Christine. "Maintaining our patent rights is obviously extremely important and knowing that CPA Global helps us preserve the integrity of our data gives us peace of mind."

"Knowing that CPA Global helps us preserve the integrity of our data gives us peace of mind."

Cost reduction:

It was initially the growth of Canon Europe's patent portfolio and its desire to reduce costs that drove the organisation to retain a robust IP management system. Part of reducing its costs meant bringing some of its patent prosecution and annuities management in-house. Canon Europe was able to do this utilising Memotech's rich functionality and flexibility.

By using CPA Global's solutions to manage its entire patent life cycle, Canon Europe has not only reduced costs but has saved its organisation a tremendous amount of time by streamlining its processes. For managing 20,000 annuities internally, Canon Europe built an interface in collaboration with CPA Global in order to facilitate the management of its annuity payments. As a result, it is now able to record instructions from Canon Inc. and collate invoices and reports from its local agents directly into Memotech which provides ample financial visibility into the portfolio.

Automated workflows

The ability to create automated workflows within the system has been extremely beneficial for Canon Europe and makes it effortless to follow the entire docketing process. As a result, data integrity has been improved and procedures have been streamlined. In addition, it has helped new attorneys get up to speed with the system much faster which has increased the department's overall productivity.

Financial visibility into portfolio

Canon Europe uses the Cost Tracking module to track all fees related to the management of its annuities. By uploading invoices from its agents into the system, it is able to have an overall view of all its agent and official fees. This helps staff track, report, and identify all these costs and allocate appropriate expenses for each case in order to have an accurate picture of its IP spending.

Better case searching

Prior to using Memotech, Canon Europe had to search in several different Excel spreadsheets to look for information about its cases which was time consuming. With Memotech, various search criteria can be used for locating a case and advanced search filters can be used to find exactly what the user is looking for. Canon Europe is now able to search faster and more efficiently and report on this data more proficiently.

Powerful reporting

Reporting has become much easier to perform and the data more reliable through Memotech. The department runs approximately 70 reports on a monthly basis and some of these reports are shared across the teams globally for business management purposes. Being able to produce such reports has become a powerful tool for Canon Europe and it is now able to share critical and valuable information in the IP department and beyond.

Seamless delivery

Even though Canon Europe performed much of the implementation of Memotech itself, it opted to work with CPA Global consultants to push the limits of the software to develop an interface to manage its annuities in line with its internal processes. "We described the processes that we needed and CPA Global consultants helped us develop these. Working with CPA Global consultants ensured that we would have a successful migration and a "double check" that the processes would work," explains Christine.

Future

Canon Europe plan to maximise its Memotech investment in several areas, including setting up a timesheet system and adding the Licensing and Agreement module in the near future. Integrating CPA Global's technology as part of its overall IP strategy will continue to help Canon Europe assess current practices for optimisation, efficiency and cost saving, as well as creating standard core processes for the IP department.

In addition, Canon Europe is keen on educating the non-IP staff about the importance of IP and improving the relationship to give the best collaboration.

Canon Europe had a complex and disjointed way of managing its growing patent portfolio which was becoming inefficient and costly. After thoroughly evaluating its needs and possible options, Canon Europe determined that it wanted a commercial system to merge its data sources and integrate its IP management processes to reduce risks and drive down costs.

CPA Global was selected for its ability to fulfil Canon Europe's requirements and its capacity to meet Canon Europe's growing business needs. The advantages provided by its new partner helped them decrease risks and costs substantially with Canon Europe now realising clear benefits from CPA Global's technology.

"I was impressed with CPA Global from the very beginning of the selection process and we have been very satisfied with them; the services and products they offer are flexible and scalable which can grow with our business requirements. Using the full breadth of CPA Global's technology, organisations are able to manage their portfolio effectively while running their IP department smoothly," says Christine.