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NEC Labs

Company profile:

NEC Laboratories America, Inc. (NEC Labs) conducts research in support of NEC’s U.S. and global businesses. Its research program covers many areas—reflecting the breadth of NEC’s businesses—and maintains a balanced mix of fundamental and more applied research. NEC Labs focuses on topics with strong innovations in the U.S. and places emphasis on developing deep competence in selective areas that are important to NEC business and which are ripe for technical breakthrough. With a staff of approximately 120, NEC Labs operates as a subsidiary of NEC America with locations in Princeton, New Jersey and Cupertino, California.

Fast access to patent data builds stronger partnerships for NEC Labs

 Leadership in the markets for computers, networking, and electronic devices depends on technology research that can validate concepts before a company commits the resources to develop them. And cross-licensing deals that leverage this intellectual property are critical to success. As one of the world’s top patent-producing companies, NEC Corporation relies on its subsidiary, NEC Laboratories America, Inc. (NEC Labs), to deliver tailored solutions that draw on deep technical expertise.

With a rapidly expanding patent portfolio, NEC Labs wanted to be able to mine its library of intellectual property for relevant information that would help the company strike new deals with key business partners. Lecorpio’s highly adaptable intellectual property management software provided a solution.

Aging system makes patent research nearly impossible

“As we enter into partnerships, patents give us a strategic advantage,” says Joseph Kolodka, lead counsel, NEC Labs. “If you can document everything you’re bringing to a deal, you can handle IP related matters with more favorable terms.” The need became acute as the company’s annual volume of patent applications grew from 25 to more than 100 patents.

Until recently, NEC Labs was using an outdated system that made it difficult to retrieve patent information. Designed as a docketing system, the platform was more than 10 years old and lacked the capability to present key patent details that would be relevant to any potential deal.

“When our company is considering a potential partnership or cross-licensing deal, time is of the essence,” Kolodka explains. “The sooner we can identify patents that are relevant to the discussion, the greater the chance that we can negotiate favorable terms.” With its old system, the NEC Labs legal team had to manually search for and print all cases that might be relevant and then ask its research group managers to assess the results. The entire process took weeks. “We needed a system that would put this information at our fingertips,” Kolodka says.

“If you can document everything you’re bringing to a deal, you can negotiate much more favorable financial terms. ”

Joseph Kolodka, Lead Counsel, NEC Labs

Flexible solution meets business requirements

After explaining to his company’s president and CFO the need for NEC Labs to manage its intellectual property more effectively, Kolodka won approval to shop for a new solution. Armed with several pages of detailed requirements, Kolodka and his team identified 15 potential vendors. After narrowing the list to six, the team invited the remaining vendors to present their proposals. What they found next was revealing.

“The older, more established vendors had some good products, but we got the message loud and clear that their products could not be customized to accommodate our business processes,” recalls Kolodka. “Lecorpio understood our needs and offered a system that could be configured to meet them.”

Based on the inherent flexibility in the product as well as competitive pricing, NEC Labs decided to implement Lecorpio Patent Management and Invention Disclosure Management modules. With the help of Lecorpio’s client services team, NEC Labs was able to go live on an accelerated schedule, in time for the beginning of its new fiscal year.

With his extensive experience in licensing, Kolodka knew the type of information he needed to pull from patents as the company approached potential deals. “Sometimes different categories of patents overlap, and you really have to know what you’re looking for,” he says. Lecorpio worked closely with NEC Labs to configure the intellectual property management software modules so that the legal team would be able to find information in ways that dramatically reduce manual effort and allow more time for substantive research.

“Rather than telling us the way things had to be implemented, Lecorpio’s team listened to what we needed and made suggestions about our different options,” Kolodka recalls.

Pulling patent information in minutes

After transferring more than 1,000 patent applications from its previous system to Lecorpio, NEC Labs is enjoying the benefits of its new platform. “The system centralizes all our patent-related information and makes it easy to tag documents for searches—all of which saves us huge amounts of time,” Kolodka says.

With Lecorpio, NEC Labs’ inventors and managers of technical groups can easily see the status of their patent applications and run reports on patent activity throughout the company. Moving these processes online supports the companywide goal of market-leading innovation and allows the legal team to operate in more strategic ways.

Without Lecorpio, we would need to hire a whole legal staff to manage this many patents,” says Kolodka. “Now, it’s easy to tag, retrieve, and manage all of our highly complex patent-related information.” Moving inventors and technical managers onto the platform was easy according to Kolodka. And for outside counsel, finding information is just a matter of logging onto the system from any browser, rather than calling and emailing people within the company.

Because Lecorpio delivers true ad hoc reporting capabilities, NEC Labs anticipates being able to tackle issues much more quickly for patent assertion activities or IP related negotiations. “When we’re going up against another company, and they’re talking about cross-licensing issues, we need to pull up patent information immediately,” says Kolodka. Previously, the process could take as long as six weeks or more. With Lecorpio, NEC Labs is able to perform those tasks in minutes. Kolodka concludes: “As we deal with more and more outside companies, the benefits we derive from this platform will only increase.”

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