Journey
What is Canon USA Intellectual Property department?
Overview of Canon USA Intellectual Property department
Canon U.S.A., Inc.’s Intellectual Property department (Canon USA IP) is located in Melville, NY, and Irvine, CA. It is composed of local members and expatriates (expats) from Japan. Our department has two main responsibilities: providing counsel for Canon Group's patent acquisition in the United States and leading IP activities corresponding to business stages of each project to protect new businesses launched by Canon USA and America's group companies. In 2024, these activities resulted in the highest number of issued patents among United States in-house intellectual property departments*.
* https://harrityllp.com/services/patent-analytics/top-patent-firms/
As a place where IP staff can grow
Local members can conduct patent acquisition activities related to business through close communication with various business departments. This enables expanding the scope of own work beyond local member's original work.
Expats can get the opportunity to have a responsibility on a wider range of jobs. For example, patent prosecution specialists are in charge of technology contracts, and a technical contract specialist is in charge of general legal affairs. The technical scope of the patent prosecution specialists will be expanded, and the responsibility will also extend to situations where patents are utilized, such as due diligence. The expansion of the scope of work enables us to work day and night while constantly feeling our own growth.
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Local member
For important cases, we and Expats team up for examiner interviews with great success. Expats collaborate with CINC IP and us to craft claims while also overcoming any current rejections and possibly future rejections.
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Expat
The scope of my work has expanded greatly, as I handle not only patent prosecution but also technology contract and patent litigation. In addition to New York, I also travel to development bases in Boston and Virginia to discuss intellectual property strategies with local members. It feels great when I successfully lead our business through communication with local members.
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Expat
The anti-counterfeit activities, which I am engaged in here at Canon USA has been difficult to visualize the result, but I tried to figure this out and could win a President Award of Canon USA. Such experience here gave me confidence to challenge difficulties. In addition to the anti-counterfeit activities, I handle many and various matters. To lead as good a solution as possible to such matters, I frequently consult with in-house counsels and discuss with other divisions.
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Expat
I have a wide range of experience from legal affairs to IP-related work, such as human rights due diligence, AI ethics compliance, and privacy date protection. It‘s tough because each Latin American country and each state in the U.S. has different laws, but I try to keep up every day and that’s my motto.
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Expat
My main task is fielding questions from CINC regarding patent law, case law, and practice in United States. High English level and technical comprehension skill are required to support the local attorney in a technical field I have never handled before. Although that task is very challenging to me, I'm glad to work here because I have been wanting to work abroad since I joined Canon.
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Expat
We are collaborating with Canon Group companies and patent law firms around the world, not only in Japan but also in Europe, Asia, Oceania, etc., to improve and streamline our administration management. I'm very happy to be able to realize my dream of being active on the world stage that I had when I was a student.
My biography and work introduction
From previous job to Canon USA IP
Back in 2014, I was excited to learn that I was being given the opportunity to be patent counsel for a company that ranked in the top three for most US Patents awarded per year. I began my career at Canon by supporting the engineers in a subsidiary of Canon USA. One difference between working at a law firm and working at Canon USA was the integration of IP attorneys into the business process. In law firms, disclosures were provided and received as small pieces of information as to how a particular IP asset fit into the clients' business strategy. While interesting, it was not always clear how different IP assets related to one another. At Canon, it was clear that IP was integral to the business, including both protection and risk mitigation. There is real collaboration between Canon USA IP, Canon USA Legal and the different business units. This is key to ensuring our customers' needs are met. It is a true team effort, and I enjoyed learning how my part in this collaboration was helping to drive Canon business.
Senior Patent Counsel
Cooperation with legal and development departments
My close relationship with many members of CUSA Legal results in me being contacted when the business teams bring new projects to CUSA Legal. This early interaction between IP, Legal, and the business team enables securing IP rights around these new initiatives and mitigating risks associated with launching new products.
Our responsibilities
Canon USA IP provides counsel for Canon Inc's patent acquisition activities in the United States and leads IP activities to protect new businesses launched by Canon USA and Canon America's group companies. In other words, our in-house IP department provides the same services as found in traditional IP law firms.
Being Canon's in-house IP law firm supporting the Canon family, we can get things done more efficiently through in-family communication. This is our advantage. The close communication allows us to act quickly, and with direct knowledge of Canon Inc.’s intent, when obtaining patents for the Canon family.
Also, as the In-house IP department, we conduct the IP activity fitting each project by working with the business team from early stage. I contribute to the business team's objectives by building the IP portfolio to protect new business initiatives and advise them on technology paths to avoid.
Sivon Kalminov
Cooperation with expatriates
I would be completely remiss in not mentioning the integral part that ex-pats from Canon Inc. play in my daily work life. Working closely with ex-pats allows myself and other IP attorneys at Canon USA IP to provide the efficient support when obtaining IP rights for the Canon family.
Close cooperation with ex-pats provides additional advantages when supporting US-based innovations at Canon USA. Canon USA sometimes uses Agile development process which is a very fast paced development schedule. This is challenging because, in performing necessary IP activities, a wide range of factors need to be considered, including identifying new inventions and mitigating any risks associated with a final product. Close communication between myself, ex-pats, and developers enables us to find new inventions and to continually evaluate aspects of the developed solution that are potentially patentable. This allows Canon USA IP, with help from its ex-pat team, to conduct intellectual property activities that match the development speed during the development cycle.
We contribute to building strong patent portfolios, while continually conversing on how best to protect Canon USA's IP rights using both their training as a CINC IP engineer and mine as an American patent attorney. By working with ex-pat IP members, Canon IP DNA is transferred to Canon USA IP and this has made me a better IP professional.
In the end
Working in Canon USA IP has given me the ability to function as part of a multidisciplinary team and obtain an understanding what is needed for a successful business venture and how IP activities are a key part of this process. I am proud to be trusted to provide IP support to Canon to ensure the success of our business.
(As of March, 2025)
