1 An Overview of National and International Intellectual Property Systems and the Role of WIPO Guriqbal Singh JaiyaDirector, SMEs DivisionWorld Intellectual Property Organization (WIPO)
2 Basic Facts about WIPO WIPO’s Mission: To promote the protection of IP rights worldwide and extend the benefits of the international IP system to all member StatesStatus: An int’l intergovernmental organizationMember States: 183Staff: 915 from 94 countriesTreaties Administered: 24Decisions by: GA, CC, WIPO ConferenceGuiding Principles: Transparency, Accountability, Consensus
3 Milestones : 1883 to 2006 2002 Internet Treaties 1989 1970 Madrid ProtocolPCT1970WIPO established1967WIPO Convention1960BIRPI moves to Geneva1925Hague Agreement18931891BIRPI1886Madrid AgreementBerne Convention1883Paris Convention
4 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
5 Types of IP Rights Trade Secrets Copyright and Related Rights Industrial DesignsTrademarks (Brands)Geographical IndicationsUtility Models and PatentsNew Varieties of PlantsUnfair Competition
6 Strategic Goals Promotion of an IP culture build a foundation for more solid & extensive IP culturebetter understanding & use of IP system.Greater respect for IP rightsIP policies as part of Nat’l Dvpt. StrategiesDevelopment of balanced IP laws responsive to emerging needsDelivery of quality global IP protection systemsEnhanced Access to IP Systempractical solutions to empower all stakeholders to develop, protect, enforce, manage and commercially exploit IPRs for development
7 Public Sector & Policy-Makers OutreachPublic Sector & Policy-MakersIntellectual Property OfficesBuilding awarenessGeneral Public, Private Sector & Civil Society
8 WIPO’s Activities Services to Industry Norm-Setting Economic Development
9 NORM SETTINGAIM: Progressive development of international IP law for an IP system that is:balanced/responsive to emerging needseffective in encouraging innovation/creativitysufficiently flexible to accommodate national policy objectivesAddress/provide info. on current & emerging issues in IP - (review/discussion of topical issues in standing committees).
10 NORM SETTINGatentsA 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 strategiesAim: Take into account interests of all stakeholders. A system that is balanced, reliable, swift, user-friendly, accessible, cost-effectiveWIPO’s work in this area is designed to reduce complexity, cost and time involved in obtaining patent protection in multiple countries and to address workload crisis facing many office because of rising number of patent applications, changing nature of applications (biotech) and duplication of work. Various activities support this endeavor, namely:- Substantive and procedural harmonization of patent law.- Development and adoption of reforms of PCT System.PCT Reform: began in Oct General objectives to simplify the system, streamline procedures, reduce costs for applicants, maintains quality of services to facilitate greater use, ensure system works to advantage of all offices irrespective of size.
11 NORM SETTINGopyright & 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 issuesIncreasingly, the products that are fuelling the knowledge economy lend themselves to transmission in digital form at the click of a mouse to anywhere, from anywhere in the world, without quality impairment. This has posed many challenges for intellectual property policy makers. WCT, etc. set out the legal framework to safeguard the CR interests of creators in cyberspace opening new horizons for creators to use the Internet with confidence and generate, distribute and control the use of their works.CR more visible to the public and protected works are increasingly part of everyday life raising serious issues associated with public perception and consumer expectations. The digital environment, via e-commerce, provides better opportunities for use of copyright to support business activities and thereby to generate income and employment.Technology is an important tool for copyright management (DRM) to establish ownership, promote licensing and dissemination of works. In info. society, the need to safeguard fundamental principles of CR is a prerequisite for future creativity and successful economic and cultural activities - therefore, studies on economic contribution of CR-based industries and activities to national economy.
12 NORM SETTING rademarks, Designs, Geographical Indications Tools for domestic/international commerce, marketing strategiesDevelop int’l TM law (TLT Revision)Legal advicePromote convergence of admin. practicesSoft Law approachPromote dvpt./use of registration systems
13 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, etc Genetic Resources & Benefit Sharing Traditional 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 excludedToolkit for management for the management of IP interests in the documentation of TKA guide for the Protection of Expressions of Traditional CultureSurvey of practical experience in legal protection of TK.Information materialsBest practices reflecting international consensus on IP issues concerning TK, TCEs and genetic resources.
14 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 IPS Approach: tailored to specific national needs (NFAPs, etc. via regional offices) Focus Shift: deliverables, capitalize on assistance rendered.By developing national IP strategies, countries are better placed to leverage and extract maximum value from their national intellectual assets and promote sustainable, economic, technological and cultural development.Through tailored programs, WIPO is able to respond to the specific needs of member states for legislative advice and practical assistance and to support national efforts and use all forms of IP as economic assets.
15 EMPHASIS ON …. Networks - synergistic relationships Outreach Training Collective Copyright Management OrganizationsPromotion of Creativity and InnovationNetworks: to build synergistic relationships among those sectors of civil society and government that are acknowledged catalysts for developing and sustaining national intellectual development and management.SMEs - mobilizing SMEs to increase their competitiveness through use of IP. Innovators/SMEs contribute more than 90% of GNP in many countries & R&D institutions and universities contribute most of knowledge creation in member states. These knowledge contributors are often underutilized force for driving business success and economic growth.Specific strategies to empower groups of potential partners and users of the IP system who have not had the time, resources and information to understand the importance of and make effective use of the IP system to identify, develop, protect and manage the knowledge and IP assets they create - by working with SME associations, innovation center networks, business-technology incubators, universities, etc. to promote networking among organizations. (Guidelines, best practices, case studies, .WIPOnet: a secure communications network linking IP offices worldwide through the Internet - to narrow the knowledge gap and enhance participation of developing countries and LDCs. A platform for broader access to IP systemCCM: continued support for creators and owners of copyright and related rights to strengthen the instit. Framework for CMOs.
16 WIPO WORLDWIDE ACADEMY ACADEMIC TRAININGWIPO WORLDWIDE ACADEMYDistance Learning ProgramProfessional TrainingPolicy Dvpt., Teaching & ResearchApproach: Training trainersPartnerships with Academic Institutions/IGOs/NGOs - synergies for dvpt.Joint programs/publications, promo. materialsThe Academy is an educational institution devoted to training, teach and research in IP. It’s aim is to build the human resources necessary to support the vision and strategy that would see IP promoted and protected worldwide and IP rights used as a tool for economic, social and cultural development.DLP is response to need for IP education in context of limited resources. DLP launched in ,000 registrants to general IP course to date. Available in 7 languages.Development of intermediate & advanced modules (certificates)Establishment of core faculty in field of Int’l IP as tutors/resource peopleProfessional Training - Aim: to enable enhance skills of IP professionals in areas of IP law, IT, best practices in processing applicatoins and delivery of client services.Policy Development, Teaching & Research: Response to broadening scope of IP as an issue of relevance to vital policy areas. As IP grows in importance and features in b/l and m/l negotiations, policy makers need a deeper knowledge of this field. Sessions to promote deeoer understanding of the role of IPRs in national and international cooperation and dvpt. Strengthen the capacity of decision-makers, etc. to formulate and implement policies fo rthe development, management, legislation, administration and enforcement of IPRs.Summer School
17 INNOVATORS & SMES Dynamic Economic Sector Aim: improve IP awareness to enable formulation & implementation of:policies;programs;strategiesto enhance strategic use of IP assets byR&D, Innovators/SMEse.g. licensing agreements; finance; IP information to monitor competitors, etc.Innovators/SMEs contribute more than 90% of GNP in many countries & R&D institutions and universities contribute most of knowledge creation in member states. These knowledge contributors are often underutilized force for driving business success and economic growth.Specific strategies to empower groups of potential partners and users of the IP system who have not had the time, resources and information to understand the importance of and make effective use of the IP system to identify, develop, protect and manage the knowledge and IP assets they create - by working with SME associations, innovation center networks, business-technology incubators, universities, etc. to promote networking among organizations. (Guidelines, best practices, case studies, .
18 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-filingTRADEMARKS (MADRID)INDUSTRIAL DESIGNS (HAGUE)GEOGRAPHICAL INDICATIONS (LISBON)MICRO-ORGANISMS (BUDAPEST)Patent law differs from country to country. It can be a costly, complex and lengthy process to obtain patent protection in multiple countries. WIPO’s global protection services offer a swift, reliablecost-effective and user-friendly option. Principle objective of PCT is operational excellence and provision of high quality services to benefit users of patent system, patent administrations and general public by streamlining the filing and processing of patent applications in multiple countries (through reduced duplication of work of national filing and processing) to make the grant of patents more economical (ie less diversion of public resources for patent admin.)Emphasis on ensuing PCT beneficiaries receive adequate knowledge of system and that the system responds satisfactorily to their needs.TRADEMARKS: In constantly changing business environment, TMs, etc. are important tools for promotion of domestic commerce and int’l. trade which, in turn, contribute to sustainable national economic growth. Indispensable in designing marketing strategies to identify and promote goods in market place and distinguish these goods from those of competitors. To be effective, need adequate legal protection at national & int’l. levels. WIPO’s registration systems facilitate the acquisition and maintenance of these IPRs in different countriesA company in Morocco requesting TMP in 12 countries - application in 3 classes would pay over 6.5 times more if it didnt use MS but opted to apply to each national office separately -Madrid = 2,162 CHF; vs 14,245 CHF using national route). Renewal of same app. = 5+ times cheaper and cost of registering a change in ownership is 20+ times cheaper, costing 177 Swiss francs as opposed to 3,697 Swiss francs under the national route.
20 WIPO LEGAL SERVICESAlternative 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- WIPO Trademark Database Portal (http://ecommerce.wipo.int/databases/trademark/)DN is a human friendly form of an Internet address that is easy to identify and remember.DNS is a hierarchy of names - Top level domains are divided into 2 categories (gTLDs and ccTLDs). gTLDs are managed by registry operators acting under authority of ICANN. CcTLDs are administered by competent national registration authorities.Because of increased use of Internet, DNs have acquired the role of business identifiers and even TMs e.g. AMAZON.com. By registering marks and names as DNs businesses attract customers to web sites.Cybersquatting is the pre-emptive, bad-faith registration of TMs as DNs by 3rd parties who do not possess rights in such names. Gives rise to disputes between TM owners and DN registrants which stretch the capacity of territorial judicial systems.First WIPO Internet DN processUDRP is an administrative mechanism for efficient resolution of disputes arising out of bad faith registration and use by third parties of domain names.Under accreditation agreement with ICANN, all gTLD registrars agree to abide by and implement the UDRP - incorporated into standard DR clause of gTLD registration agreements.International in scope - provides single mechanism for resolving a DN dispute regardless of where the registrar, DN registrant, or complaining TM owner is located.Cost effective and timely - decision usually in less than 2 months.A key advantage: mandatory implementation of decisions. Registrars are required to take the necessary steps to enforce any UDRP transfer decisions subject to losing party’s right to file court proceedings (10 days after decision). Admin. Character of UDRP does not preclude the DN registrant or TM holder from submitting dispute to a court for independent resolution. Either party may commence a lawsuit in court before, during or after a UDRP proceeding. The provide appoints 1 or 3 independent and impartial persons to decide a case - in proceeding, each party has opportunity to express preference.REGISTRAR’S ROLE: LOCKS THE DN REGISTRATION PENDING A UDRP PROCEEDING AND IMPLEMENTING ANY DECISION RENDERED BY A PANELwipo center is not for profit - fee depends on number of dns included in dispute and number of panelists. most cases involve 1-5 domain names and a single member panel - usually usd in single member panel full fee paid by complainant. if complainant requests 3 member panel, full fee paid by him - if respondent requests 3 member panel.fee is split.
22 From Invention to Innovation While invention depends upon creativity,successful technological innovation requires integrating new knowledge with multiple business functions.20
23 Innovation – What is it?The creation of new ideas/processes which will lead to change in an enterprise’s economic or social potential[P. Drucker, ‘The Discipline of Innovation’, Harvard Business Review, Nov-Dec, 1998, 149]
24 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 todaydetermine 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/PerformanceQualityPriceUniqueness/Novelty
26 InnovationHow 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?
27 There are several types of new products 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
28 Product Development Strategies Old ProductNew ProductOldMarketMarket PenetrationProduct DevelopmentNew MarketMarket DevelopmentProduct Diversification
29 Marketing principles……. Identify opportunities and threatsIdentify customer needsReact to a competitive environmentCareful planning to make a New or improved productUse the 4 P’s….Product servicePricePromotionPlace (distribution)Retain flexibility to react to changes
30 The Development of Technology: From Knowledge Generation to Diffusion IM ITATIONSupply sideBasic KnowledgeInventionInnovationDiffusionDemand sideADOPTION3
31 Innovation Process The adoption of an innovation by similar firms InventionThe adoption of an innovation by similar firmsUsually leads to product or process standardizationProducts based on imitation often are offered at lower prices but with fewer featuresInnovationImitation
32 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:ResearchDevelopment (up-scaling, testing)ProductionMarketingUseExperience with a product results in feedback and leads to incrementally or radically improved innovations.
33 Translation of a Creative Idea into Useful Application The Innovation ProcessTranslation of a Creative Idea into Useful ApplicationOrganizing ResourcesCommercial ApplicationAnalytical PlanningImplementationTo Accomplish:OrganizationProduct DesignManufacturingServicesTo Provide:Value to CustomersRewards to EmployeeRevenue to InvestorsSatisfaction of FoundersTo Obtain:MaterialsTechnologyHuman ResourcesCapitalTo Identify:Product DesignMarket StrategyFinancial Need
34 The Profitability of Innovation Value of an innovationLegal protectionComplementaryresourcesEase of imitation of technologyLead timeProfits from InnovationInnovator’s ability to appropriate value from an innovation7
35 Appropriating Value from Innovation Barriers to IntegrationDifferent TimeInterpersonalDifferent GoalFormality ofOrientationStructureFacilitators of IntegrationShared ValuesLeaders’ VisionEffectiveBudget AllocationCommunicationTime to MarketProduct QualityCreation of Customer ValueCross-Functional Integration/Design TeamsValue Appropriation from Innovation27
36 Product Life CycleMaturityDeclineSalesGrowthIntroductionTime
37 New Product Development Stages in a New Product Development process:Idea GenerationIdea ScreeningConcept Development and TestingBusiness AnalysisBeta Testing and Market TestingTechnical ImplementationCommercialization
39 New Business Models Emerge Then…One Integrated CompanyNow…Many Distributed CompaniesProduct Development CycleProduct DevelopmentTool CompaniesTesting ServicesCRO’sCRM’s
40 New Regional Model Emerge Then…ManufacturingResearchDevelopmentTrials/TestingServicesSelf-contained regional clustersRegion ARegion ERegion BRegion FRegion DRegion CRegion GNow…Specialized, networked regions
41 Commercialization Model Strategic Investment is the Foundation of a Successful Commercialization Model
42 What Investors Look for? Novelty; world-class; evidence of commercial interest; clear path to marketUnencumbered, or encumbered by reasonable conditions (Equity, royalties)Protection (Non-disclosure agreements, Patents, Designs, Brands, Copyright)IP protected by one or more Patents is the IP required to implement the business plan“Freedom to Operate”
43 Innovation, Intellectual Property and Poverty Reduction Critical Ingredients for Innovation:Intellectual CapitalHuman CapitalFinancial CapitalProximitySocial Network CapitalIt is a value-based competitiveness proposition.The U.S. can no longer successfully compete on cost (primarily),As an advanced industrial, if not post-industrial economy, it must compete on value—unique qualities of performance—rather than cost.Innovation and entrepreneurship generate value that contributes to increases in productivity, which, in turn …
44 Complementary Resources DistributionManufacturingFinanceServiceCoretechnological know-howComplementarytechnologiesMarketingOtherOtherBargaining power of owners of complementary resources depends upon whether complementary resources are generic or specialized.
45 Alternative Strategies for Exploiting Innovation Outsourcing certain functionsStrategic AllianceJoint VentureInternal CommercializationLicensingLimits investment, but dependence on suppliers & partnersBenefits of flexibility; risks of informal structureShares investment & risk. Risk of partner conflict & culture clashBiggest risks & benefits.Allows complete controlSmall risk, but limited returns also (unless patent position very strongRisk & ReturnAllows outside resources & capabilitiesTo be accessedFewPermits pooling of the resources/capabilities of more than one firmSubstantial resource requirementsCompetingResourcesKonica licensing its digital camera to HPPixar’s movies (e.g. “Toy Story”) marketed & distributed by Disney.Apple and Sharp build the “Newton” PDAMicrosoft and NBC formed MSNBCTI’s development of Digital Signal Processing ChipsExamples
46 Uncertainty & Risk Management in Tech-based Industries Selection process for standards anddominant designs emerge is complexand difficult to predict, e.g. future of 3GTechnologicaluncertaintySources ofuncertaintyMarketuncertaintyCustomer acceptance and adoption ratesof innovations notoriously difficult topredict, e.g. PC, Xerox copier, WalkmanCooperating with lead usersearly identification of customer requirementsassistance in new product developmentStrategies formanaging riskLimiting risk exposure—avoid major capital commitments(e.g. lease don’t buy)—outsource—alliances to access other firms’resources & capabilities—keep debt lowFlexibilility—keep options open—use speed of response to adaptquickly to new information—learn from mistakes14
47 Innovation riskRISKSCOSTSRESEARCH DEVELOPMENT COMMERCIALISATION
49 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 needEnvisage a product whose performance and capability will meet that needDevelop the product to the appropriate time scale and produce it.Sell the product at the right price
50 Innovation and Competitive Advantage Difficult forcompetitors to imitateCommercially exploitablewith present capabilitiesCompetitiveAdvantageProvides significantvalue to customersTimely12
51 Strategic Entrepreneurship and Innovation Entrepreneurship is concerned with:The discovery of profitable opportunitiesThe exploitation of profitable opportunitiesFirms that encourage entrepreneurship are:Risk takersCommitted to innovationProactive in creating opportunities rather than waiting to respond to opportunities created by others
52 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.
53 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.
54 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 ( ), 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.
55 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”
56 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]
57 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.
58 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.
59 Entrepreneurship Entrepreneurs have: A passion for what they do The creativity and ability to innovateA sense of independence and self- reliance(Usually) a high level of self confidenceA willingness and capability (though not necessarily capacity or preference) for taking risks
60 Entrepreneurship A tolerance for organizational bureaucracies Entrepreneurs do not (usually) have:A tolerance for organizational bureaucraciesA penchant for following rulesA structured approach to developing and implementing ideasThe foresight to plan a course of action once the idea is implemented and established
61 Entrepreneurial Success 1. People (Entrepreneur /Entrepreneurial Team)2. Opportunity (Marriage of Market andProduct/Service)3. Access to Resources (Land. Labor, Capital, Knowledge)And the fit amongst these three elements
62 Major factors determining success of a new product in the market The product provides functional advantagesLower price for comparable productMore attractive design (look)Reputation of brandEasy access: Available in the main retail shopsConsistent product qualityExcellent after-sales services
64 An opportunity driven path to market- a different business design BreakthroughInnovationNeed two processes: NPD and NB(usiness)DAn opportunity driven path to market a different business design??New ProductDevelopmentNew BusinessDevelopmentNewBusinessesInnovativeNew Products
65 Protection of IP Products Value adding Technologies Research IdeasResearchTechnologiesProductsConfidentiality or NondisclosureAgreements (Trade Secrets)Collaborative ResearchAgreementUtility models, PatentsTechnology LicensingAgreement, Branding
66 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
67 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.
68 BackgroundIn 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 2000Nine professionals and three administrative staff in the SMEs Division of WIPO
69 Strategy 1. Demystification 2. New audience 3. New Areas 4. Proactive 5. E-Services6. Partnership
70 (1) Demystification Studies Guides Events and expert missions Website and newsletterCD-ROMMagazine articles
71 (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, LebanonWIPO Survey of IP Services to Tenants of European Technology IncubatorsNorwegian SMEs and the IPR system
72 (1) Demystification (Guides) WIPO/ITC Guide on Marketing of Crafts and Visual Arts; Role of Intellectual Property; A practical guideWIPO/ITC Guide on Secrets of Intellectual Property: Guide for Small and Medium Sized ExportersWIPO/ITC Guide on Exchanging Value: Negotiating Technology Licensing Agreements - A Training ManualITC Guide on Exporting Automotive ComponentsITC Guide on Pharmaceutical SMEs (Forthcoming)
74 IP for Business Series Making a Mark (Trademarks) Looking Good (Designs)Inventing the Future (Patents)Creative Expression (Copyright and Related Rights)
75 (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, Vietnam16 Countries members of the OAPI
76 (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
77 (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
78 (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 2006Contents include sections such as IP for Business, IP and E-Commerce, Activities, Best Practices, Case Studies and Documents
80 (1) Demystification (Newsletter) Monthly e-newsletter in the 6 UN languages (Free)Content includes articles, updates with information, links and documentsLaunched in August 2001Total number of subscribers: >25,000
81 (1) Demystification (CD-ROM) 50,000 copies of the SMEs Division CD-ROM distributed to SME support institutions, IP Offices and others worldwideMarketing and customizationE-learning CD ROM (in partnership with KIPO: “IP Panorama”)SAARC CD-ROM (in preparation)
82 (1) Demystification (Articles) Some articles recently published:What to do if you are accused of copyright infringementTapping into Patent Information: a buried treasureInternational trade in technology – licensing of know- how and trade secretsIntellectual Property and E-commerce: how to take care of your business’ websiteOffshore outsourcing and IPSavvy marketing: merchandising of IP rights
83 (2) New Audience Bringing IP issues to SME events Bringing new business perspective to IP eventsNew partnership: Open door policyIGOs, government focal points, SME support, training and financial institutions, chambers of commerce and industry, SME associations, SME research institutions, private sector institutions, universities, etc...
84 (3) New Areas IP for financing (venture capital, securitization) Accounting and valuation of IP assetsIP Asset Management, IP Due Diligence and IP AuditFiscal 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 associationsIP needs of SMEs in agriculture, biotechnology, handicrafts, software, textiles, etc
85 (4) Being ProactiveOriginal ContentLinksBest PracticesCase Studies
86 (5) E-Services Web site content SME mail E-mail newsletter Distance learning (proposed)Discussion forum (proposed)
87 (6) Partnership National and Regional IP Offices National SME focal points in government, private sectorChambers of Commerce and IndustrySME Associations; CooperativesIncubators, Science Parks, Technology ParksUniversities; R & D InstitutesPrivate Sector ConsultantsSME Finance Institutions (including venture capitalists)Other UN Agencies (ITC, ILO, UNIDO, AfDB, UN Regional Commissions)
88 Bringing it All Together Example No. 1 Decades ago, Coca-Cola decided to keep its soft drink formula a secretThe formula is only know to a few people within the companyKept in the vault of a bank in AtlantaThose who know the secret formula have signed non-disclosure agreementsIt is rumored that they are not allowed to travel togetherIf it had patented its formula, the whole world would be making Coca-Cola
89 Bringing it All Together Example 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 copyrightReverse engineering would have been easy
90 Bringing it All Together Example No. 3 Patent for the fountain pen that could store inkUtility Model for the grip and pipette for injection of inkIndustrial Design: smart design with the grip in the shape of an arrowTrademark: provided on the product and the packaging to distinguish it from other pensSource: Japanese Patent Office
91 Bringing it All Together Example No. 4 ® Registered Trade Mark‘TM’ UnregisteredRegistered DesignCopyright: Labels & ArtworkPatents: Several dozen!
92 Bringing it All Together Example No. 5 : Personal Computer Patent protection for the innovative functional features of the computerTrademark protection for the brand name that goes on the boxCopyright protection for the software that runs insideTrade secret protection for the semiconductor processing techniques used to create the processor
93 IP TRIGGERS Starting up, investing in, buying or selling a business Selecting a name or logo for a product, service, or companyDeveloping a new product or service (biotechnology, software, devices, and instruments)Improving an existing product or serviceApplying for a government grantEntering into a government, academic, or corporate collaborationBringing on a key employee or contractor for design, research, or development workProviding business or technical information to suppliers, customers, partners or investorsLaunching a major sales effort or marketing initiativeMaintaining or expanding a customer listSearching for advantages in a competitive marketSetting up a website for your business
94 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:Trademarks/ GIs Ind. Designs/Patents/CopyrightPatents / Utility Models/Trade secretsAll IP RightsPatents / Utility modelsIndustrial Designs/ Trademarks/GIsInventionCommercialization MarketingExportingFinancingProduct DesignLicensingLiterary / artistic creationCopyright/Related RightsAll IP Rights
95 Key Message 2IP Strategy should be an integral part of the overall business strategy of an EnterpriseThe 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
96 Key Message 3 (More for Less) Own UseLicensingFranchisingMerchandising (Mickey Mouse, Hello Kitty)
97 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?
98 Hierarchy of IP Value Biz Strategy Driver Deliver Revenue Build Markets and RelationshipsDesign FreedomPotential ReturnManage CompetitionProtecting Inventions
99 Stage 1: IP Health Check Identification/Documentation/Product review: patents, trademarks, copyrighttechnical specifications, manufacturing and design documentsbenefits statements, product descriptions, marketing statementsIP Management:processcapture, registration
100 Stage 2: IP Consolidation IP Protection:IP Gap/Risk Analysisincludes DRM focusIP Management:IP Register (Build/Refresh)IP Management Process“Like financial management, IP management must be disciplined and process rich to be effective”
101 Stage 3: IP Management IP Register IP Management Process IP as an Asset – CultureResultant 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”
102 Stage 4: IP Commercialisation ‘To Market’ advantage for your valuable resultant IPAn IP lifecycle management advantageNew or enhanced IP revenue streamsConstantly refresh and extract from your IP repositoryIP ROI“Uncaptured, unidentified and/or ill-managed IP cannot contribute to the overall IP ROI businesses must aspire to realise”
103 IP Management Tips Integrated management of all IP Allocate responsibilityInside and outsideConduct researchCreate, maintain, and enforce rightsCareful timing of decisionsTimely filingsBudget planning for expensive actionsAvoid liability and ownership disputesIP ownersCustomersCollaborators
104 IP Management Accounting Legal Tax Technical Insurance Business SecurityAutomationPersonnelLegalTechnicalBusinessExportFinancialRelationships
105 An Aspect of Good Management People Management – because IP is generated by people and used by peopleKnowledge Management – because a lot of knowledge is informal and may or may not crystallise as recognisable category of IPIT Strategic Planning – because a lot of IP is IT-related; some of the more complex IP issues arise in IT contextContract 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 valueRisk 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)Philip Crisp etc, could ask for any other suggestions from the audience herewith permission of P Crisp, AGS, 2003
106 Thank You Guriqbal Singh Jaiya firstname.lastname@example.org