an overview of national and international intellectual property
TRANSCRIPT
An Overview of National and International Intellectual Property Systems and the Role of WIPO
Guriqbal Singh JaiyaDirector, SMEs Division
World Intellectual Property Organization (WIPO)[email protected]
Status: An int’l intergovernmental organizationMember States: 183 Staff: 915 from 94 countriesTreaties Administered: 24Decisions by: GA, CC, WIPO ConferenceGuiding Principles: Transparency, Accountability, Consensus
To promote the protection of IP rights worldwide and extend the benefits of the international IP system to all member States
WIPO’s Mission:
Basic Facts about WIPO
Milestones : 1883 to 2006
Paris Convention1883
1886
18911893
1925
1960
1967
1970
19701989
2002
Berne Convention
Madrid AgreementBIRPI
Hague Agreement
BIRPI moves to Geneva
WIPO Convention
WIPO established
PCTMadrid Protocol
Internet Treaties
Intellectual Property: A Tool for Development
“In the age of the knowledge economy, the efficient and creative use of knowledge is a key determinant of international competitiveness, wealth creation and improved social welfare.” “An effective intellectual property (IP) system embedded within a national strategy which anchors IP considerations firmly within the policy-making process will help a nation to promote and protect its intellectual assets, thereby driving economic growth and wealth creation.”
Kamil Idris WIPO Director General
Types of IP Rights• Trade Secrets • Copyright and Related Rights• Industrial Designs• Trademarks (Brands)• Geographical Indications• Utility Models and Patents• New Varieties of Plants• Unfair Competition
Strategic Goals• Promotion of an IP culture
– build a foundation for more solid & extensive IP culture– better understanding & use of IP system. – Greater respect for IP rights
• IP policies as part of Nat’l Dvpt. Strategies• Development of balanced IP laws responsive to
emerging needs• Delivery of quality global IP protection systems • Enhanced Access to IP System
– practical solutions to empower all stakeholders to develop, protect, enforce, manage and commercially exploit IPRs for development
Outreach
Intellectual PropertyOffices
Public Sector & Policy-Makers
General Public, Private Sector & Civil Society
Building awarenessBuilding awareness
WIPO’s Activities
Norm-Setting
Services to Industry
Economic Development
• AIM: Progressive development of international IP law for an IP system that is:– balanced/responsive to emerging needs– effective in encouraging innovation/creativity– sufficiently flexible to accommodate national policy objectives
• Address/provide info. on current & emerging issues in IP - (review/discussion of topical issues in standing committees).
NORM SETTING
NORM SETTING
A Success Story: Functional challenges: (success has generated operational issues) Political challenges: (greater public scrutiny) > Clarify current/emerging issues > Discuss improvements in op. principles/practice > Address issues in line with national/international economic development strategies
Aim: Take into account interests of all stakeholders.A system that is balanced, reliable, swift, user-friendly, accessible, cost-effective
atents
NORM SETTING
opyright & Related Rights:- encourage broader use of system- ensure it is in line with digital
environ.Priorities:
Implementation of WCT/WPPT(major step forward in updating CR at
international level)Build consensus on topical issues
NORM SETTING
Tools for domestic/international commerce, marketing strategies
• Develop int’l TM law (TLT Revision)• Legal advice• Promote convergence of admin. practices• Soft Law approach• Promote dvpt./use of registration systems
rademarks, Designs, Geographical Indications
NORM SETTINGTraditional Knowledge, Access to Genetic Resources,
FolkloreAim: Generate practical benefits from using IPS/use IP assets to support socio-ec. development, cultural integrity of communities/address concerns
of indigenous peoples, etcGenetic Resources & Benefit SharingTraditional Knowledge & Innovations.
IGC (2000): Int’l Forum for tackling issues at several interlocking levels debating broad policy and legal questions; sharing practical experience; and developing practical tools and mechanismsCurrent situation: Maturing process - common objectives/ core principles.WIPO GA: new mandate - international dimension/no outcome excluded
ECONOMIC DEVELOPMENT
To maximize strategic use of IP for development by:
- updating IP legislation- upgrading IP infrastructure- demystifying IP- promoting understanding of policy options offered by IPSApproach: tailored to specific national needs (NFAPs, etc. via regional offices)Focus Shift: deliverables, capitalize on assistance rendered.
EMPHASIS ON ….
• Networks - synergistic relationships• Outreach• Training• Collective Copyright Management
Organizations• Promotion of Creativity and Innovation
• Distance Learning Program• Professional Training• Policy Dvpt., Teaching & Research• Approach: Training trainers
» Partnerships with Academic Institutions/IGOs/NGOs - synergies for dvpt.
» Joint programs/publications, promo. materials
WIPO WORLDWIDE ACADEMY
ACADEMIC TRAINING
INNOVATORS & SMES
• Dynamic Economic Sector• Aim: improve IP awareness to enable formulation
& implementation of:– policies;– programs;– strategiesto enhance strategic use of IP assets by R&D, Innovators/SMEs
e.g. licensing agreements; finance; IP information to monitor competitors, etc.
GUIDELINES & FILING SERVICES
I. Enhancement of global protection systems to further simplify and reduce costs of obtaining protection in multiple countries for:
PATENTS (PCT):- PCT Reform- E-filing
TRADEMARKS (MADRID)INDUSTRIAL DESIGNS (HAGUE)GEOGRAPHICAL INDICATIONS (LISBON)MICRO-ORGANISMS (BUDAPEST)
020000400006000080000
10000012000014000016000019
9019
9119
9219
9319
9419
9519
9619
9719
9819
9920
0020
0120
0220
0320
0420
05
THE PATENT COOPERATION TREATY
PCT
WIPO LEGAL SERVICES
Alternative dispute resolution (ADR) offered by WIPO Arbitration & Mediation Center - tailor-made D R procedures, e.g.:
- UDRP criteria:- identical/confusingly
similar- legitimate interest- bad faith
- cost-effective and expeditious procedure (see http://arbiter.wipo.int)
- WIPO Trademark Database Portal
(http://ecommerce.wipo.int/databases/trademark/)
6%
76%
15%1%2%
Member StatesPCT SystemMadrid SytemHague SystemOther
WIPO’S INCOME2006-2007
Total: 531 M CHF
From Invention to Innovation
While invention depends upon creativity, successful technological innovation requires integrating new knowledge with multiple business functions.
Innovation – What is it?Innovation – What is it?
The creation of new ideas/processes which The creation of new ideas/processes which will lead to change in an enterprise’s will lead to change in an enterprise’s economic or social potentialeconomic or social potential
[P. Drucker, ‘The Discipline of Innovation’, Harvard Business Review, Nov-Dec, 1998, 149]
What is Innovative Thinking?– A means of generating innovation to achieve two objectives that are
implicit in any good business strategy:• make best use of and/or improve what we have today• determine what we will need tomorrow and how we can best
achieve it, to avoid the « Dinasaur syndrome »
– Innovative thinking has, as a prime goal, the object of improving competitiveness through a perceived positive differentiation from others in:
• Design/Performance• Quality• Price• Uniqueness/Novelty
Obstacles to Successful Obstacles to Successful InnovationInnovation
• Competitive positionCompetitive position
• Market judgementMarket judgement
• Technical performanceTechnical performance
• Manufacturing expertiseManufacturing expertise
• Financial resourcesFinancial resources
How to classify newness and degree of innovation and what to focus on:
• New to the firm? • First in the market?• First in the world?• Incremental or radical innovation?
Innovation
There are several types of new products. Some are new to the market, some are new to the firm, and some are new to both. Some are minor modifications of existing products while some are completely innovative
Product Development Strategies
OldMarket
New Market
Old Product New ProductMarket
PenetrationProduct
Development
Market Development
ProductDiversification
Marketing principles…….Marketing principles…….
• Identify opportunities and threatsIdentify opportunities and threats• Identify customer needsIdentify customer needs• React to a competitive environmentReact to a competitive environment• Careful planning to make a New or improved productCareful planning to make a New or improved product• Use the 4 P’s….Use the 4 P’s….
Product serviceProduct service PricePrice Promotion Promotion Place (distribution)Place (distribution)
• Retain flexibility to react to changesRetain flexibility to react to changes
The Development of Technology: From Knowledge Generation to Diffusion
Basic Knowledge Invention Innovation Diffusion
IM ITATION
ADOPTION
Supply side
Demand side
Innovation Process
• The adoption of an The adoption of an innovation by similar firmsinnovation by similar firms
• Usually leads to product Usually leads to product or process or process standardizationstandardization
• Products based on Products based on imitation often are offered imitation often are offered at lower prices but with at lower prices but with fewer featuresfewer features
InventionInvention
InnovationInnovation
ImitationImitation
The Innovation Process• An innovation starts as an idea/concept that is
refined and developed before application.• Innovations may be inspired by reality (known
problem). The innovation (new product development) process, which leads to useful technology, requires: – Research– Development (up-scaling, testing)– Production – Marketing– Use
• Experience with a product results in feedback and leads to incrementally or radically improved innovations.
Translation of a Creative Idea into Useful Application
Analytical Planning
Organizing Resources
Implementation Commercial Application
To Identify:Product DesignMarket StrategyFinancial Need
To Obtain:MaterialsTechnologyHuman ResourcesCapital
To Accomplish:OrganizationProduct DesignManufacturingServices
To Provide:Value to CustomersRewards to EmployeeRevenue to InvestorsSatisfaction of Founders
The Innovation Process
The Profitability of Innovation
• Legal protection
• Complementary resources
• Ease of imitation of technology
• Lead time
Profits from
Innovation
Value of an innovation
Innovator’s ability to
appropriate value from an
innovation
Value Value Appropriation Appropriation
from from InnovationInnovation
Barriers to IntegrationBarriers to IntegrationDifferent TimeDifferent Time
InterpersonalInterpersonal
Different GoalDifferent Goal
Formality ofFormality of
OrientationOrientation
OrientationOrientation
OrientatioOrientationn
StructureStructure
Facilitators of Facilitators of IntegrationIntegration
Shared ValuesShared ValuesLeaders’ VisionLeaders’ Vision
EffectiveEffective
Budget AllocationBudget Allocation
CommunicationCommunication
Appropriating Value from InnovationAppropriating Value from Innovation
Cross-Cross-Functional Functional
Integration/Integration/Design TeamsDesign Teams
Time to Time to MarketMarket
Product Product QualityQuality
Creation of Creation of Customer Customer
ValueValue
Product Life CycleProduct Life Cycle
SalesSales
TimeTime
IntroductiIntroductionon
GrowthGrowth
MaturityMaturity
DeclineDecline
New Product DevelopmentStages in a New Product Development process:
• Idea Generation• Idea Screening • Concept Development and Testing • Business Analysis • Beta Testing and Market Testing • Technical Implementation • Commercialization
Technology Adoption – Diffusion of InnovationTechnology Adoption – Diffusion of Innovation
EarlyAdopters
InnovatorsLaggards
EarlyMajority
LateMajority
Take up Rate
Time
Innovators:Innovators: venturesome; greatest venturesome; greatest needneedEarly adopters:Early adopters: opinion leaders; opinion leaders; needs drivenneeds drivenEarly majority:Early majority: deliberatedeliberateLate majority:Late majority:skepticsskepticsLaggards:Laggards: traditionalists; traditionalists; suspicioussuspicious
New Business Models EmergeThen…
One Integrated Company
Now…
Many Distributed Companies
Product Development
Cycle
Product Developmen
t
Tool Compani
es
Testing Services
CRO’s CRM’s
New Regional Model EmergeThen…
ManufacturingResearch
Development
Trials/TestingServices
Self-contained regional clusters
Region A
Region E
Region B
Region F
Region D
Region C
Region G
Now…
Specialized, networked regions
Commercialization Model• Strategic Investment is the Foundation of a
Successful Commercialization Model
What Investors Look for?What Investors Look for?
Novelty; world-class; evidence of commercial Novelty; world-class; evidence of commercial interest; clear path to marketinterest; clear path to market
Unencumbered, or encumbered by reasonable Unencumbered, or encumbered by reasonable conditions (Equity, royalties)conditions (Equity, royalties)
Protection (Non-disclosure agreements, Protection (Non-disclosure agreements, Patents, Designs, Brands, Copyright)Patents, Designs, Brands, Copyright)
IP protected by one or more Patents is the IP IP protected by one or more Patents is the IP required to implement the business planrequired to implement the business plan
““Freedom to Operate”Freedom to Operate”
Innovation, Intellectual Property and Poverty Reduction
Critical Ingredients for Innovation:
• Intellectual Capital
• Human Capital
• Financial Capital
• Proximity
• Social Network Capital
Complementary Resources
Bargaining power of owners of complementary resources depends upon whether complementary resources are generic or specialized.
Manufacturing Distribution
Service
Complementarytechnologies
OtherOther
Marketing
FinanceCore
technological know-how
Risk & Return
CompetingResources
Examples
LicensingOutsourcing
certain functions
Strategic Alliance
Joint Venture
Internal Commercialization
Small risk, but limited returns also (unless patent position very strong
Limits investment, but dependence on suppliers & partners
Benefits of flexibility; risks of informal structure
Shares investment & risk. Risk of partner conflict & culture clash
Biggest risks & benefits. Allows complete control
Few Allows outside resources & capabilitiesTo be accessed
Permits pooling of the resources/capabilities of more than one firm
Substantial resource requirements
Konica licensing its digital camera to HP
Pixar’s movies (e.g. “Toy Story”) marketed & distributed by Disney.
Apple and Sharp build the “Newton” PDA
Microsoft and NBC formed MSNBC
TI’s development of Digital Signal Processing Chips
Alternative Strategies for Exploiting Innovation
Uncertainty & Risk Management in Tech-based Industries
Sources ofuncertainty
Technologicaluncertainty
Selection process for standards and dominant designs emerge is complex and difficult to predict, e.g. future of 3G
Customer acceptance and adoption ratesof innovations notoriously difficult to predict, e.g. PC, Xerox copier, Walkman
Marketuncertainty
Strategies formanaging risk
Cooperating with lead users early identification of customer requirements
–assistance in new product development
Flexibilility—keep options open—use speed of response to adapt quickly to new information—learn from mistakes
Limiting risk exposure—avoid major capital commitments (e.g. lease don’t buy)—outsource—alliances to access other firms’ resources & capabilities—keep debt low
Innovation riskInnovation risk
RISKSRISKS COSTSCOSTS
RESEARCHRESEARCH DEVELOPMENT DEVELOPMENT COMMERCIALISATION COMMERCIALISATION
Mortality of New Product IdeasMortality of New Product Ideas
The “ Right” Innovative Product?
The right product is one that becomes available at the right time (i.e., when the market needs it), and is better and/or less expensive that its competition.
To have the right product, therefore, one must: Predict a market need Envisage a product whose performance and
capability will meet that need Develop the product to the appropriate time scale
and produce it. Sell the product at the right price
TimelyTimely
Difficult forDifficult forcompetitors to imitatecompetitors to imitate
Commercially exploitableCommercially exploitablewith present capabilitieswith present capabilities
Innovation and Competitive AdvantageInnovation and Competitive Advantage
CompetitiveCompetitiveAdvantageAdvantageProvides significantProvides significant
value to customers value to customers
Strategic Entrepreneurship and Innovation
• Entrepreneurship is concerned with:– The discovery of profitable opportunities– The exploitation of profitable opportunities
• Firms that encourage entrepreneurship are:– Risk takers– Committed to innovation– Proactive in creating opportunities rather than
waiting to respond to opportunities created by others
EntrepreneurshipCreativity is at the heart of entrepreneurship, enabling entirely new ways of thinking and working. Entrepreneurs identify opportunities, large or small, that no one else has noticed. Good entrepreneurs also have the ability to apply that creativity—they can effectively marshal resources to a single end. They have drive—a fervent belief in their ability to change the way things are done, and the force of will and the passion to achieve success. They have a focus on creating value—they want to do things better, faster, cheaper. And they take risks—breaking rules, cutting across accepted boundaries, and going against the status quo.
EntrepreneurshipDefining entrepreneurship is difficult because there is no universal, clear-cut definition of the term. In its most basic sense, entrepreneurship is manifest in a business venture when an individual is able to turn a novel idea into a profitable reality. In practice, however, entrepreneurship is more multifaceted, ranging from operating a small business in one’s own home, to bringing a national franchise to a small town, to turning a new and unique idea into a high-growth company. Entrepreneurship can involve starting a business that brings a new store to main street, offering a product or service previously unavailable to a community, or acquiring an existing business that has had a long-standing presence in a community and helping it evolve to reflect one’s own vision and personality.
EntrepreneurshipThe word entrepreneurship literally means, "to take or carry between" in the sense of an economic transaction; to be a market-maker. It does not literally convey the notion of innovation that we commonly associate with the term. Joseph Schumpeter (1883-1950), one of the more well known theorists on entrepreneurship, defined an entrepreneur as one who reorganizes economic activity in an innovative and valuable way. That is, an entrepreneur is one who engages in a new economic activity that was previously unknown. An entrepreneur is a risk taker because being innovative means there are few rules or history for guidance.
EntrepreneurshipEntrepreneurship is the process of creating or seizing an opportunity, and pursuing it regardless of the resources currently controlled. The Webster’s Third New International Dictionary defines an entrepreneur to be “one who organizes, owns, manages, and assumes the risks of a business”
EntrepreneurshipThe entrepreneur shifts resources out of an area of lower and into an area of higher productivity and greater yield.[J. B. Say, French economist, circa 1800] Entrepreneurship is creative destruction. Dynamic disequilibrium brought on by the innovating entrepreneur, rather than equilibrium and optimization, is the norm of a healthy economy and the central reality of economic theory and practice. [Joseph Schumpeter, Austrian economist, 1911] The entrepreneur searches for change, responds to it, and exploits it as an opportunity. Innovation is the specific tool of entrepreneurs, the means by which they exploit change as an opportunity for a different business or a different service[Peter Drucker, 1985]
EntrepreneurshipEntrepreneurship drives innovation, competitiveness, job creation and economic growth. It allows new/innovative ideas to turn into successful ventures in high-tech sectors and/or can unlock the personal potential of disadvantaged people to create jobs for themselves and find a better place in society.
EntrepreneurshipEntrepreneurship, in small business or large, focuses on "what may be" or "what can be". One is practicing entrepreneurship by looking for what is needed, what is missing, what is changing, and what consumers will buy during the coming years.
EntrepreneurshipEntrepreneurs have:– A passion for what they do– The creativity and ability to innovate– A sense of independence and self- reliance– (Usually) a high level of self confidence– A willingness and capability (though not
necessarily capacity or preference) for taking risks
EntrepreneurshipEntrepreneurs do not (usually) have:– A tolerance for organizational bureaucracies– A penchant for following rules– A structured approach to developing and
implementing ideas– The foresight to plan a course of action once
the idea is implemented and established
Entrepreneurial Success1. People (Entrepreneur /Entrepreneurial
Team)2. Opportunity (Marriage of Market and
Product/Service)3. Access to Resources (Land. Labor,
Capital, Knowledge)
And the fit amongst these three elements
Major factors determining success of a new product in the market
• The product provides functional advantages
• Lower price for comparable product• More attractive design (look)• Reputation of brand• Easy access: Available in the main
retail shops• Consistent product quality• Excellent after-sales services
Competitive AdvantageCompetitive Advantage
Criteria…Criteria…
Low cost producerLow cost producer
Product differentiationProduct differentiation
Niche marketNiche market
New Product
Development
BreakthroughBreakthroughInnovationInnovation
?
Need two processes: NPD and NB(usiness)D
?
Innovative Innovative New ProductsNew Products
NewNewBusinessesBusinesses
New Business
Development
An opportunity driven path to
market- a different
business design
Protection of IPProtection of IP
IdeasIdeas
ResearchResearch
TechnologiesTechnologies
ProductsProducts
Utility models, Patents
Collaborative ResearchAgreement
Confidentiality or Nondisclosure Agreements (Trade Secrets)
Technology LicensingAgreement, Branding
ValueValue addingadding
Intellectual Property Questions
Intellectual Property (IP) Issues/questions during New Product Development (NPD): Can the innovation be legally protected? For how long? How does one protect an innovation from imitators? How much will it cost? When to protect? Do you need to rely on an IP expert? The answers are complicated by the fact that one or more types of legal frameworks may be used to protect a particular innovation, product, process, or creative work. These include trade secrets, trademarks, designs, patents, and copyright. It is necessary to know which are applicable and when each is appropriate. This varies somewhat from jurisdiction to jurisdiction. The advice of a lawyer that specializes in these matters is essential
Intellectual Property Questions
•It is necessary to know which types of intellectual property rights (IPRs) are applicable and when is each type of IPR appropriate. This varies somewhat from one country to another. •The advice of an IP lawyer is desirable if not essential.
Background• In September 2000, the WIPO Assemblies
approved the creation of “a substantial new program of activities, focusing on the IP-related needs of SMEs worldwide”
• SMEs Division established in October 2000
• Nine professionals and three administrative staff in the SMEs Division of WIPO
Strategy• 1. Demystification• 2. New audience• 3. New Areas• 4. Proactive• 5. E-Services• 6. Partnership
(1) Demystification• Studies• Guides• Events and expert
missions• Website and
newsletter• CD-ROM• Magazine articles
(1) Demystification (Studies)
• National Studies (on IP and SMEs) completed or under way in Argentina, Bhutan, Mongolia, Nepal, Philippines, Sri Lanka, Tanzania, Sierra Leone, Romania, Chile, Colombia, Costa Rica, El Salvador, Honduras and Paraguay, Egypt, Morocco, Lebanon
• WIPO Survey of IP Services to Tenants of European Technology Incubators
• Norwegian SMEs and the IPR system
(1) Demystification (Guides)• WIPO/ITC Guide on Marketing of Crafts and Visual
Arts; Role of Intellectual Property; A practical guide• WIPO/ITC Guide on Secrets of Intellectual
Property: Guide for Small and Medium Sized Exporters
• WIPO/ITC Guide on Exchanging Value: Negotiating Technology Licensing Agreements - A Training Manual
• ITC Guide on Exporting Automotive Components• ITC Guide on Pharmaceutical SMEs (Forthcoming)
IP for Business Series • Making a Mark
(Trademarks)• Looking Good
(Designs)• Inventing the
Future (Patents)• Creative
Expression (Copyright and Related Rights)
(1) Demystification (Guides)
• Translation and/or customization: Under way, with funding from several sources, in the following countries: Algeria, Argentina, Australia, Canada, Czech Republic, Egypt, Estonia, Hungary, Italy, India, Israel, Kenya, Lebanon, Malaysia, Malta, Mongolia, Morocco, New Zealand, Philippines, Poland, Slovakia, Spain, Tanzania, Tunisia, Vietnam
• 16 Countries members of the OAPI
(1) Demystification (Events)
• Special programs, seminar and workshops organized by the SMEs Division in Geneva in partnership with selected associations and organizations (IASP, INSME, IPI, MOST, WASME)
• Annual WIPO Forum on IP and SMEs for IP Offices of OECD Countries
(1) Demystification (Events)
• WIPO-Italy Forum on Textile and Clothing Industries of the Mediterranean Basin Countries (Prato, Italy - December 2003)
• Participants from Algeria, Cyprus, Egypt, Jordan, Israel, Lebanon, Malta, Morocco, Palestine, Syria, Tunisia, Turkey
(1) Demystification (Website)
• The Website of the SMEs Division is in six UN languages (English, French, Spanish, Arabic, Russian and Chinese)
• More than 100,000 pages viewed every month in 2006
• Contents include sections such as IP for Business, IP and E-Commerce, Activities, Best Practices, Case Studies and Documents
SMEs Website
(1) Demystification (Newsletter)
• Monthly e-newsletter in the 6 UN languages (Free)
• Content includes articles, updates with information, links and documents
• Launched in August 2001• Total number of subscribers: >25,000
(1) Demystification (CD-ROM)
• 50,000 copies of the SMEs Division CD-ROM distributed to SME support institutions, IP Offices and others worldwide
• Marketing and customization• E-learning CD ROM (in partnership
with KIPO: “IP Panorama”)• SAARC CD-ROM (in preparation)
(1) Demystification (Articles)
• Some articles recently published:– What to do if you are accused of copyright infringement– Tapping into Patent Information: a buried treasure– International trade in technology – licensing of know-
how and trade secrets– Intellectual Property and E-commerce: how to take care
of your business’ website– Offshore outsourcing and IP– Savvy marketing: merchandising of IP rights
(2) New Audience• Bringing IP issues to SME events• Bringing new business perspective to IP
events• New partnership: Open door policy• IGOs, government focal points, SME support,
training and financial institutions, chambers of commerce and industry, SME associations, SME research institutions, private sector institutions, universities, etc...
(3) New Areas• IP for financing (venture capital, securitization)• Accounting and valuation of IP assets• IP Asset Management, IP Due Diligence and IP Audit• Fiscal policies and IP (tax incentives for R&D
activities, patenting, licensing etc.)• IP services to SMEs by incubators, technology
parks, chambers of commerce and SME associations
• IP needs of SMEs in agriculture, biotechnology, handicrafts, software, textiles, etc
(4) Being Proactive
• Original Content• Links• Best Practices• Case Studies
(5) E-Services• Web site content• SME mail• E-mail newsletter• Distance learning (proposed)• Discussion forum (proposed)
(6) Partnership• National and Regional IP Offices• National SME focal points in government, private
sector• Chambers of Commerce and Industry• SME Associations; Cooperatives• Incubators, Science Parks, Technology Parks• Universities; R & D Institutes• Private Sector Consultants• SME Finance Institutions (including venture
capitalists)• Other UN Agencies (ITC, ILO, UNIDO, AfDB, UN
Regional Commissions)
Bringing it All Together Example No. 1Example No. 1
• Decades ago, Coca-Cola decided to keep its soft drink formula a secret
• The formula is only know to a few people within the company
• Kept in the vault of a bank in Atlanta
• Those who know the secret formula have signed non-disclosure agreements
• It is rumored that they are not allowed to travel together
• If it had patented its formula, the whole world would be making Coca-Cola
Bringing it All Together Example No. 2Example No. 2
• Patent for stud and tube coupling system (the way bricks hold together)
• But: Today the patents have long expired and the company tries hard to keep out competitors by using designs, trademarks and copyright
Bringing it All Together Example No. 3Example No. 3
• Patent for the fountain pen that could store ink
• Utility Model for the grip and pipette for injection of ink
• Industrial Design: smart design with the grip in the shape of an arrow
• Trademark: provided on the product and the packaging to distinguish it from other pens
Source: Japanese Patent Office
® Registered Trade Mark‘TM’ Unregistered Registered Design
Copyright: Labels & Artwork
Patents: Several dozen!
Bringing it All Together Example No. 4Example No. 4
Bringing it All Together Example No. 5Example No. 5 : Personal Computer• Patent protection for the innovative functional
features of the computer• Trademark protection for the brand name that
goes on the box• Copyright protection for the software that runs
inside• Trade secret protection for the semiconductor
processing techniques used to create the processor
IP TRIGGERS• Starting up, investing in, buying or selling a business• Selecting a name or logo for a product, service, or company• Developing a new product or service (biotechnology,
software, devices, and instruments)• Improving an existing product or service• Applying for a government grant • Entering into a government, academic, or corporate
collaboration• Bringing on a key employee or contractor for design,
research, or development work• Providing business or technical information to suppliers,
customers, partners or investors• Launching a major sales effort or marketing initiative• Maintaining or expanding a customer list• Searching for advantages in a competitive market• Setting up a website for your business
Key Message 1IP adds value at every stage of the value chain from creative/innovative idea to putting a new, better, and cheaper, product/service on the market:
Literary / artisticcreation
Invention
Financing Product Design
CommercializationMarketing
Licensing
Exporting
Patents / Utility Models/Trade secrets
Copyright/Related Rights
Patents / Utility models
Industrial Designs/
Trademarks/GIs
Trademarks/ GIsInd. Designs/Patents/Copyright
All IP Rights
All IP Rights
Key Message 2
• IP Strategy should be an integral part of the overall business strategy of an Enterprise
• The IP strategy of an Enterprise is influenced by its creative/innovative capacity, financial resources, field of technology, competitive environment, etc.
• BUT: Ignoring the IP system altogether is in itself an IP strategy, which may eventually prove very costly or even fatal
Key Message 3 (More for Less)
• Own Use • Licensing• Franchising• Merchandising (Mickey
Mouse, Hello Kitty)
Key Questions
– What are the IP assets of a business?– Status of the company’s IP Portfolio?– How important are IP assets to the business?– How does the company protect its IP assets?– How does the company protect itself from the
IP assets of others?– What is the company’s IP policy and
strategy? – Is the Company’s business strategy and IP
strategy aligned ?– Is the company getting the best value out of
its IP assets?
Protecting Inventions
Manage Competition
Hierarchy of IP Value
Design Freedom
Build Markets and Relationships
Deliver Revenue
Pote
ntia
l Ret
urn
Biz Strategy Driver
Stage 1: IP Health Check
Identification/Documentation/Product review:
• patents, trademarks, copyright
• technical specifications, manufacturing and design documents
• benefits statements, product descriptions, marketing statements
IP Management:
• process
• capture, registration
Stage 2: IP Consolidation
IP Protection:
• IP Gap/Risk Analysis
• includes DRM focus
IP Management:
•IP Register (Build/Refresh)
•IP Management Process
“Like financial management, IP management must be disciplined and process rich to be effective”
Stage 3: IP Management IP Register
IP Management Process
IP as an Asset – Culture
Resultant IP – IP Capture process/tools
“The interaction between a company’s IP and the IP of others (eg key suppliers of operating software, infrastructure and services) in our increasingly interconnected world is a rich source of resultant, and ultimately valuable, IP”
Stage 4: IP Commercialisation
‘To Market’ advantage for your valuable resultant IP
An IP lifecycle management advantage
New or enhanced IP revenue streams
Constantly refresh and extract from your IP repository
IP ROI
“Uncaptured, unidentified and/or ill-managed IP cannot contribute to the overall IP ROI businesses must aspire to realise”
IP Management Tips• Integrated management of all IP• Allocate responsibility
– Inside and outside• Conduct research• Create, maintain, and enforce rights• Careful timing of decisions
– Timely filings– Budget planning for expensive actions
• Avoid liability and ownership disputes– IP owners– Customers – Collaborators
IP Management
• Legal• Technical• Business• Export• Financial• Relationships
• Accounting• Tax• Insurance• Security• Automation• Personnel
An Aspect of Good Management• People Management – because IP is generated by people and
used by people
• Knowledge Management – because a lot of knowledge is informal and may or may not crystallise as recognisable category of IP
• IT Strategic Planning – because a lot of IP is IT-related; some of the more complex IP issues arise in IT context
• Contract Management – because IP is often created (or improved) in context of a contract (eg, supply contract or joint venture
relationship)
• Asset Management – because IP is an asset, albeit intangible; it has a value
• Risk Management – because there are risks to an organisation flowing from its actions, or failure to act, in relation to IP (including risk of lost opportunity)
with permission of P Crisp, AGS, 2003
