managing intangible assets€¦ · intellectual property: what makes a strong ip strategy...
TRANSCRIPT
MANAGING INTANGIBLE ASSETS: an introduction to Intellectual Property Rights
How important is an effective Intellectual Property protection for start-ups and SMEs operating in a competitive-intensive environment?
Importance of Intellectual Property:
just a quick example of “real world” situations to break the ice…
INSTRUCTION BOOKLET
WARRANTY CARD
Trademark Rights
Design Rights
Patent Rights
UtilityModel Rights
Copyright
More INTELLECTUAL PROPERTY than we normally imagine…
Imagine a dream comes true…
You have won 3 millions Euro at the lottery…
…you are very happy and you want to make the best use of this money…
…so, you decide to buy a:
On the car market…all very nice!
What the crude reality looks like instead!
Other examples of TMs infringements
Again: more INTELLECTUAL PROPERTY than we can imagine!
Let’s go serious: themes for today
• Innovation – definition, concept and examples
• How to defend Innovation – the role of Intellectual Property
• Intellectual Property – generalities (types & characteristics – focus on patents & trademarks)
• a glance on the legal framework of IP
• IP in the World – differences
• IP Strategy & Enforcement
• Final considerations & recommendations
• Q/A
INNOVATION
Process of translating an idea or invention into a good or service that
creates value or for which customers will pay
Innovation should:• be replicable at an economical cost• satisfact a specific need
Innovation:• involves deliberate application of information, imagination and initiative in
deriving greater or different values from resources• includes all processes by which new ideas are generated and converted into
useful products
INNOVATION: two main categories
Evolutionary innovations
brought about by many incremental advances in technology or processes
Revolutionary innovations
often disruptive and new
(continuous or dynamic evolutionary innovation)
(also called discontinuous innovations)
INNOVATION: Evolutionary examples
INNOVATION: some other remarkable examples
Gaming-Automotive
Baby pram-Landing gear
Egg basket-Wine box
Kingfisher-Shinkansen
Phone box-Solar box
Esplanade Theatre-Durian Plant
Mercedes-
Boxfish
INNOVATION is also adaptability
INNOVATION: higher/moderate risk
In the ICT world: IBM PC vs. Apple Computer, Compaq cheaper PC’s vs. IBM, Dell with its still-cheaper clones against Compaq
HIGHER RISK
revolutionary products, technologies, services
NEW MARKETS
LESS RISK
imitators
INNOVATION: Protection
…but where is the word protection here?
INNOVATION: how to defend it – role of Intellectual Property
• Effective intellectual property protection is one of the key drivers of the research-intensive, high-tech innovative companies (including start-ups and SMEs), especially in global industries with the highest percentage of sales re-invested in research and development
Without the prospect of a reasonable return on investment connected to the protection of IP, innovative companies would not be in a position to bear the substantial costs of developing cutting-edge innovation
• Innovators need predictability and uniformity in intellectual property protection across jurisdictions, while maintaining a proper balance of rewards, to continue on their path to progress and deliver solutions to the world’s most pressing needs
• Innovative companies as well as their investors depend on a stable and effective environment for the protection of intellectual property
INTELLECTUAL PROPERTY for Innovation
INTELLECTUAL PROPERTY
INTELLECTUAL PROPERTY: Definition & characteristics
• Intellectual Property (IP) refers to the protection of creations of the mind, which have both a moral and a commercial value
• IP law typically grants the author of an intellectual creation exclusive rights for exploiting and benefiting from their creation. However, these rights, also called monopoly right of exploitation, are limited in scope, duration and geographical extent
•
• IP protection is intended to stimulate the creativity of the human mind for the benefit of all by ensuring that the advantages derived from exploiting a creation benefit the creator
• This will encourage creative activity and allow investors in research and development a fair return on their investment
INTELLECTUAL PROPERTY: Why it is so important…*
• IP enables creativity to be protected, and clearly establishes who owns what
• IP can be licensed or sold
• It can be a key negotiating tool - a "deal-maker“
• IP will attract investment
• IP appears as an asset on the company accounts, even if other parts of the business get into trouble
• IP is a source of information and knowledge
• IP presents both opportunities and risks which are to be exploited or avoided – strategy is key!
You Others
Opportunity
Create IP that
makes you
attractive for
investment or to get
partners
Identify strong
partners through IP
competitive
intelligence
Risk
Establish IP that
protects your
products/ services/
name from being
imitated
Ensure that you have
freedom to operate
before launch to
prevent infringement,
unfair use
IP
Strategy
INTELLECTUAL PROPERTY: Why it is so important…**
INTELLECTUAL PROPERTY: a bit of taxonomy
Restrictive
covenants
Confidentiality
agreements
Copyright
Database right
Unreg. TMs
Unreg. Designs
Inventions
Brands, logos
Designs
Musical, dramatic,
literary & artistic works
Databases
Reputation / Goodwill
Designs
Know-how
Trade secrets
Confidential
information
Patents, UMs
Reg. TMs
Reg. Designs
The formal registered & unregistered rights, when combined with this third group of "soft IP", are known collectively as intellectual assets
These rights are unregistered - they exist from the moment the works are createdOwnership is harder to clarify without a registerThe registered & unregistered rights together are called intellectual property
These are registered rightsThe inventor, creator or designer has no rights until they make a registrationOthers can check if rights exist, and who owns them, by looking at the register
Industrial Property Intellectual Property Intellectual Assets
INTELLECTUAL PROPERTY: Specifics on IPR titles
Type of IP Patents Trademarks Trade Secrets Copyrights
Protection Utility model, design and patentWords, names, symbols or
devices used to identify product or service
Advantageous formulas, devices or
compilation of information
Original creative works of authorship such as
writings, movies, records and computer software
Applicable Standards
New and non obviousAdvance in the state of the art
Identifies and distinguishes a product or
a service
Not really ascertainable, not
disclosed to the public
Original creative works in writing or in another
format
Where to apply Patent & Trademark OfficePatent and Trademark
officeNo public registration
is necessaryRegister of Copyrights
Duration
Utility model and patent: 20 years from the date of
application;Design patent: 14 years
Indefinite so long as it continues to be used
Indefinite so long as secret is not disclosed
to public
Life of author plus 50 years or 75 years from
publication for «work for hire»
INTELLECTUAL PROPERTY - Myth - IP is just for large companies
• Most SME’s have IP that they are unaware of…• Customer lists, designs, logos, brand names, etc.
• SME’s need to know about:• Their own IP (to leverage it / protect it)• Others’ IP (to avoid infringement)
• Some industries thrive off IP, where IP can help SME’s to position themselves for investments / buyout, e.g. Biotechnology, Communications
INTELLECTUAL PROPERTY – Most used Conventions & Treaties
Paris Convention for the Protection of Industrial Property
Bern Convention for the Protection of Literary and Artistic Works
Agreement on the Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement)
Trademark Law Treaty and the Patent Law Treaty (PLT)
Patent Cooperation Treaty (PCT)
Madrid Agreement Concerning the International Registration of Marks
Hague Agreement Concerning the International Deposit of Designs
Lisbon Agreement for the Protection of Appellations of Origin and their International Registration
INTELLECTUAL PROPERTY in the World – ranking 2014
INTELLECTUAL PROPERTY: Business perspective
Businesses use IP to…
• Find partnerships/joint ventures• License out rights to gain revenue streams• Establish a competitive advantage in the
marketplace• Prevent knockoffs or imitators • Invent-in-front of competitors
Question you have to ask yourself:
What role does IP currently play in my business?
How could I use it in the future?
INTELLECTUAL PROPERTY: Commercialisation through licensing
• IP can be licensed insomeone else might have invented the solution you need, saving you the effort
• IP can be licensed outuse this to build partnerships. Licensees might have access to bigger markets (especially if your invention is a component in a larger product)
• What sort of license?• Exclusive (not even the patent owner may use)• Sole (the patent owner may also still use)• Non-exclusive (multiple licensees)• Compulsory (license of right)
INTELLECTUAL PROPERTY: What is an IP Strategy
An IP strategy…
• Starts with the business goals and business issues
• Decides how you plan to use IP to support your business goals
• Reflects your own IP position and also the ones of your competitors
• Identifies IP gaps and strengths for you and your competitors
• Drives how you extract/seek potential IP, how you will evaluate it and what type of
protection you will seek once you get it
• Determines how you will monitor and enforce your IP
• Is supported by internal IP processes
INTELLECTUAL PROPERTY: Why an IP Strategy is important
• Allows businesses to use IP in a systematic and uniform fashion
• Helps to prioritise resources, including time & money
• Can lower risk
• IP can be leveraged – to find partners, get better terms in a deal, out license for revenue, etc.
INTELLECTUAL PROPERTY: What makes a strong IP Strategy
• Aligning it with your business strategy
• Using multiple forms of IP
• Keeping it current (periodic updates and revisiting it under unusual circumstances)
• Executing it! It is a plan to be carried out, not a report to file away• Ensure that owners and deadlines are assigned
• Communicating the strategy throughout the company• “This is why we have a trademark and here is how to use it”
• Getting advice where/when it is needed
INTELLECTUAL PROPERTY: How to develop an IP strategy - outline
1. Review your current business goals
2. Review your current IP portfolio
3. Determine which, if any, types of IP protection will help reach current business goals
4. Review competitor IP and their IP strategies
5. Determine where there is a gap in your IP protection that you need to fill or gap in your competitors’ IP that you can exploit
6. Extract and capture IP that already exists within your company
7. Review potential IP to see if it meets your business needs• If so, consider appropriate type of IP and filing for protection• If not, consider creating IP that does or acquiring external IP
8. Implement internal processes that allow for steps 1 – 7 to be repeated as needed
INTELLECTUAL PROPERTY: Research as part of an IP strategy
• IP information is an invaluable source of research information; much of what appears in IP related literature does not appear in academic and technical journals• Data is publicly available (e.g. http://ep.espacenet.com/)
• Most of what is published in patents is not protected, and is therefore free to use
• IP information is also a source of commercial information, leading to customers, suppliers and new partners, as well as warning about developments by rivals and changes in the market
• Exploiting IP information is quite separate from owning, licensing and enforcing IP
INTELLECTUAL PROPERTY: Research perspectives
• IP research can help you understand how IP is used in your industry
• Note: You can have market competitors and IP competitors. For instance, one
of your competitors may have no IP but a company in a different industry
could be filing for patents in your space
• Therefore IP research should take multiple angles…
• Search around your known competitors (are they IP savvy?)
• Search in your industry (find new IP competitors)
• Search around your own IP (find potential partners or infringers)
INTELLECTUAL PROPERTY: esp@cenet database
http://www.epo.org/patents/patent-information/free/espacenet.html
The esp@cenet database has over 65 million documents!
INTELLECTUAL PROPERTY: EUIPO database
Design and trademark searching is easy via EUIPO!
https://euipo.europa.eu/ohimportal/en/search-availability
INTELLECTUAL PROPERTY: Important points to remember
Key points they need to look out for in order to ensure their IPR is effectively protected:
• IP Laws are territorial, register your IP
• Trade marks are granted under ‘first-to-file system’
• Get a local name for your trade mark
• It is highly recommended to register a copyright
• Non-disclosure and confidentiality agreements are essential to protect trade secrets
• Patents function under first-to-file and absolute novelty system
• Be active in enforcing your rights
INTELLECTUAL PROPERTY: Enforcement
• Litigation is very expensive – find alternatives
• Be absolutely sure of the strength of your case – although as we’ve seen previously some cases are too close to call
• Mediation and arbitration are confidential processes, and can lead to customised solutions
• Sell licenses, even at reduced prices; offer complementary know-how
INTELLECTUAL PROPERTY: Checklist for enforcing IP
• Register in the markets where they are being produced and marketed, but also in areas of transit• Register IPR in places where counterfeits are expected to be produced or sold• Maintain IP rights over time
Risk Identification and management• Incorporate your thoughts on counterfeiting into your business strategy and planning• Identify the risks and weaknesses• Develop precautionary measures to address them in advance – create scenarios• Respond quickly and effectively• Effective engagement with enforcement resources when counterfeiting is detected
Appoint an IP Champion in your organisation• to create an up-to-date inventory• to regularly review of the system and procedures• to assess risks• to build secure working relationships in/outside the business• to be a single point of contact for reporting infringements
INTELLECTUAL PROPERTY: Resources for consultation
• www.epo.org (European Patent Office)
• EPO SME Case studies http://www.epo.org/focus/innovation-and-economy/sme-case-studies.html
• http://oami.europa.eu/ (OHIM)
• http://www.wipo.int/portal/index.html.en (WIPO)
• WIPO SME Portal http://www.wipo.int/sme/en/index.jsp
• http://arbiter.wipo.int/domains/index.html (WIPO Domain Name Dispute Resolution Service)
• http://www.ipr-helpdesk.org/index.html (IPR Helpdesk)
• http://ec.europa.eu/agriculture/foodqual/quali1_en.htm (European Commission - Agriculture and Food)
• http://oami.europa.eu/ows/rw/pages/ohim/multimedia/SME/smesinaction.en.do - (OHIM SME specific)
INTELLECTUAL PROPERTY: 26th April…important date for IPRers
Thanks for your attention
now comments, suggestions, remarks…
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