Disaster or opportunity? Inject efficiency into IP management Are opportunities opening up in the market place due to market changes?
Intellectual Property Currency for controlling access to innovation Innovation relates to the commercialization of new ideas Invention is the generation of a new idea to solve a specific problem Not all inventions result in innovation
Components of IP Inventions, patentable and not patentable Know-how Trade Marks Copyright
IP Management and Business Strategy IP management cannot exist in isolation, must be part of overall business strategy Driving force is economic - objective is to maximize value creation through IP, not merely to grow an IP portfolio Value of creations depends on their value in improving competitive position
Essentials for Success Strategic vision Organizational development “People Power”
Objectives Mine existing knowledge to facilitate product innovation, product development and cost control Protect inventions appropriately-neither too much nor too little
Three Stage Process Assessment of IP Assets - “IP Audit” Create IP Management Plan Implement Plan
Stage 1: Assessment IP Audit: identify all current IP assets (including existing patents, patent applications, Know-How, Trade Marks, Copyrights)
Determination of Business Goals Understand business goals to ensure that the IP Audit will be useful to overall business strategy Value of IP is dependent on its successful integration with business strategy
Identification of IP Assets Catalog all IP wherever located Determine status of IP Determine relative value of IP to company’s strategic interests Create catalog, and keep it up to date
Patent/Know How Catalog Will help to recognize existing assets Identify strengths and weaknesses Compare IP position with that of competitors Determine value of patents/know how to company
Valuation of IP Quality, not quantity is important Assess the relationship between each IP component and business strategy Does the IP protect present and future business opportunities? Does the IP help create new opportunities? Are key markets covered?
Stage 2: Create Plan “Top Down” approach: determine goals, determine what is necessary to achieve goals “Bottom Up” approach: assess existing assets, see if such assets can be mined to create new opportunities The two approaches are not necessarily mutually exclusive
Create Management Team Team is responsible for development and management of the IP Plan Team should include technical, legal, business and marketing personnel under supervision of a senior executive Management Team could evolve into patent committee at later stage of process
Align IP Plan with Overall Strategy Determine which IP is key, and should be kept exclusive to company Determine whether any of the company’s IP is licensable to third parties without giving access of company’s technology to competitors Determine which IP is no longer important and can be abandoned
Competitor Analysis Establish procedure for keeping informed of activities of both competitors and research organizations wherever located Useful knowledge is not necessarily restricted to company’s core business: might exist in non-competitive fields Patent searching can be done in-house, and information made available throughout the company
Stage 3: Implementation Motivating internal development of IP Education Incentives
Patent Committee Could be same personnel as IP Management Committee Should meet regularly, e.g. quarterly Prioritize inventions for patenting, discard applications/patents that no longer are of strategic importance Be aware of competitors’ IP positions to avoid conflicts
IP Management Consider an IP Coordinator to interface between in-house inventors/scientists/engineers and outside counsel, Create in-house filing systems for managing and tracking IP assets irrespective where they are created Establish a central, accurate database of all IP assets and keep the database up to date.
IP Management Tasks Motivate internal IP development Pool existing Know-How Determine strategies for managing the protection of new IP irrespective where it originates Consider extension of existing IP to other markets Prune existing IP that has little or no commercial importance
Challenges Ensure that IP Assets help company to remain a leader in the development, manufacture and distribution of its products Ensure a proper balance between protection of IP world-wide and cost Ensure that the company does not become liable for infringement of third party IP rights
Strategic Considerations - Market Dynamics How will your market change in the face of this unprecedented financial crisis? Will product lines change or be pared down? Can you invent into that new market space and patent it? Can you create new product synergies and patent the combinations and connections?
Strategic Considerations - Product/Service Portfolio Has the economic downturn caused any of your product lines or key customers to become vulnerable to competitors? Can you combine product packages and services to counter vulnerability? Can these combinations be patented?
Strategic Considerations - Business relationships Keep an eye on suppliers, licensees, business collaborators - are they in distress? Opportunity to buy but also risk to your business
Reducing Costs First reaction is to scale back on IP protection, e.g. patent filings Must continue to make long-term decisions for creating a strong IP portfolio that is ready for the “upturn”
Use P.O. Delays Many patent offices have processing delays for initiating examination Use U.S. Provisionals Use PCT
Watch Claim Scope Broad claims are likely to be most difficult to obtain and expensive to prosecute Pursue narrower claims targeted to company’s business (those that cover specific products or that are licensable) Broader claims may be pursued later in some countries
…and numbers Excess claim fees in many countries EP: claims in excess of 15 cost 200 Euro each (effective April 9, 2009, claims in excess of 50 will cost 500 Euro each) US: claims in excess of 20 cost US$52 each, each multiply dependent claim costs US$390 and each independent claim over 3 costs US$220 each
Small Entity Status In US Individual, small business concern or non-profit 50% reduction in certain fees Must be under no obligation to assign, grant, convey, or license any part of invention to large entity
Better Invention Disclosure Reports Clearly written comprehensive Include materials, drawings, descriptions, models How is the invention distinguishable over the prior art? What areas do not fall within scope? Include failed experiments Specify critical parts that make invention operable Provide in electronic format
Communication with outside counsel Consider SOP Talk with them about how to reduce costs What to report? Keep them up to date on go/no go decisions
Unomedical* Taken from EPO Website: http://www.epo.org/topics/innovation-and- economy/sme-case- studies/unomedical.html
Unomedical Located in Denmark Develops and sells single-use medical devices 4000 employees Sales in 2004: 241 million Euro
Unomedical In 2002 added an IP department Hired a Group IP Manager Linked IP department with research and development procedures “IP plays in everyday decision making”
Unomedical IP issues considered at an “early stage” - before prototype of new product is ready IP department checks for conflicting patents If conflicting patents exist may still file to block others
Unomedical Danish Patent Office runs novelty and/or Freedom to Operate searches Danish Patent Office searches competitor filings 4 times a year Patent drafting outsourced
Unomedical 20 new patent applications filed per year compared to “just a couple” prior to restructuring of IP department Threatened to sue potential infringer - infringing company pulled product and paid settlement fee
12 Key Recommendations from EPO Survey of SME’s Develop an IP Strategy Get Professional Help Choose the right patent attorney/agent Do not underestimate the cost Demand information Adapt your filing strategy to your real business needs
12 Key Recommendations from EPO Survey of SME’s Do not view licensing as failure Revise your patent portfolio continuously Start a technology and competitor watch process Communicate pro-actively Keep in touch with your licensees Be sure of your case (for lawsuits)