The IP Experts 1 BY P. KANDIAH KASS INTERNATIONAL SDN BHD SHAPING BUSINESS STRATEGY THROUGH COMPETITIVE INTELLIGENCE STRATEGIC USE OF INTELLECTUAL PROPERTY INFORMATION

The IP Experts 2 Any business, in order to remain in business, Needs to know i) the market; ii) the activities of its competitors; iii) the activities of related parties – suppliers, licensees, contract manufacturers, etc. Needs to know the risks it is exposed to

The IP Experts 3 To remain competitive, or to grow, one needs information (read: intelligence) on market, competitors, etc. Competitive knowledge on Companies on same or related industries on Industry on Country

The IP Experts 4 Information on market obtained from i)published information ii)surveys iii)industrial espionage Sources of Published information– websites, – annual reports, – media, – statutory records / reports – Intellectual Property Office database / reports

The IP Experts 5 In modern economy Intangible assets are becoming more critical than tangible, or physical assets Intangible Assets – includes IP Assets owned by a business Information on IP Assets(i) Trademarks (ii) Patents / Utility Models (iii)Industrial Designs

The IP Experts 6 Information on Trademarks Marks often applied for before product is launched in market Able to know what new products and what competitors are involved in Marks advertised according to NICE Classification Able to know who are new players in your industry In which countries applied for by competitors Able to know marketing strategy of competitors

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8 Information on Industrial Designs (ID) Law requires Industrial Design application be made before ID is disclosed to public ID Gazette gives information on applicants, goods on which design is applied Able to extract intelligence on scope of research by competitors Who the designers are (in some countries)

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10 Information on Patent Most valuable of IP information All granted patents in any country are published Now patent applications filed 18 months from date of application Information contained in published patent is uniform throughout the world

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The IP Experts 12 Anatomy of a Granted Patent

The IP Experts 13 Important patent databases JPO PCT Published Patent Applications US Granted Patents US Published Applications EPO IPOS MyIPO

The IP Experts 14 Useful Information from Patents Patent Description – detailed enough to enable person skilled in the art to reproduce the invention WITHOUT further research – Best method / mode of working the invention Patent Claims – Scope of monopoly claimed Duration of Patent– Max 20 years from date of filing

The IP Experts 15 Useful Information from Patents (contd) Age of technology– From date of first application Owner of technology – Licensing Assignment purposes Inventor– Contactable - experts in the field of technology Closest prior art– Cited by patentee and patent examiner

The IP Experts 16 Patent Class Index – Ability to search for other patents in same / related field of technology –Universal Classification (WIPO) –Easier to search in other patent databases

The IP Experts 17 Patent Database – Publishes all granted patents in the country since the first granted patent in the country – Automatic machine translation available in some countries, e.g. JP – Bibliographic page published in the English language

The IP Experts 18 Baking Bread Search on US Patent Database discloses 437 patents Search on Baking Bread and Wheat Flour discloses 135 patents Search on Baking Bread and Rice Flour discloses 41 patents Example of Use of Patent Database

The IP Experts 19 Patent Database – search for state of art in a field of technology – use of prior art information to obtain information on new technology to challenge validity of any granted patent to develop new product / technology

The IP Experts 20 All trademark and patent applications are published before grant of right Possible to oppose grant based on valid grounds E.g. applicant is not true owner, examiner had not considered relevant prior art, prior user (in Trademark matters), etc. Easier, cheaper to oppose application at IP offices, rather than through Court proceedings

The IP Experts 21 PCT USPTOPatent Database can be analyzed to JPOprovide strategic information e.g. growth and decline of specific technology areas Field of R&D done in certain countries / technology areas

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The IP Experts 23 THANK YOU P. Kandiah Tel: Fax: