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Vivien Irish, WIPO and TPI, Istanbul 2005 Leveraging IP assets Vivien Irish Consultant Patent Attorney.

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Presentation on theme: "Vivien Irish, WIPO and TPI, Istanbul 2005 Leveraging IP assets Vivien Irish Consultant Patent Attorney."— Presentation transcript:

1 Vivien Irish, WIPO and TPI, Istanbul 2005 Leveraging IP assets Vivien Irish Consultant Patent Attorney

2 Vivien Irish, WIPO and TPI, Istanbul 2005 Reminder (1) – types of IPRs Patents for inventions, product or process Can last for 20 years, expensive Designs for appearance of product Last a minimum of 10 years, easy to avoid

3 Vivien Irish, WIPO and TPI, Istanbul 2005 Reminder (2), types of IPRs Trademarks for goods or services Can last for ever, fees every 10 years Copyright for literary, artistic, musical works Lasts for at least 70 years No fees

4 Vivien Irish, WIPO and TPI, Istanbul 2005 Success through patents – own manufacture Dysons bagless vacuum cleaner He built 5127 prototypes! UK application filed 1979 US JP and Europe in 1980

5 Vivien Irish, WIPO and TPI, Istanbul 2005 Drawing from US application

6 Vivien Irish, WIPO and TPI, Istanbul 2005 Financing not easy Banks were not willing to support a risky product Family support needed, substantial patent costs Sold Japanese patent rights, product price in Japan £1200, sales high

7 Vivien Irish, WIPO and TPI, Istanbul 2005 Dyson factory in England

8 Vivien Irish, WIPO and TPI, Istanbul 2005 Dysons success He owns the whole company He sued the Hoover company for patent infringement, and won. Damages $6.3M Continuing to innovate and now diversifying into other appliances:

9 Vivien Irish, WIPO and TPI, Istanbul 2005 Why licence your patent? Attack extended markets Extend geographical sales area Avoid transport costs Avoid cultural barriers Benefit from expertise of Licensee

10 Vivien Irish, WIPO and TPI, Istanbul 2005 Success through patents – licensing and litigation Workmate workbench – inventor Ron Hickman Patent application March 1968 Parallel beams form working surface, also act as a vice/vise

11 Vivien Irish, WIPO and TPI, Istanbul 2005

12 Exploitation of the invention Offered licence to 8 companies, all refused Manufactured it himself, soon selling 14,000 a year Black and Decker (one of the 8) asked for a licence Black and Deckers US parent hard to convince

13 Vivien Irish, WIPO and TPI, Istanbul 2005 Level of success Mr Hickman received 3% royalty, now a multimillionaire Over 55 million workbenches sold worldwide 15 improvement patents 9 Patent infringement actions in 8 countries, won every time, cost £1M

14 Vivien Irish, WIPO and TPI, Istanbul 2005 The patent infringements (1)

15 Vivien Irish, WIPO and TPI, Istanbul 2005 The patent infringements (2)

16 Vivien Irish, WIPO and TPI, Istanbul 2005 Licensing of Trademarks (1) Trademark Licence - often as part of IP licence Owner controls quality of product

17 Vivien Irish, WIPO and TPI, Istanbul 2005 Licensing of Trademarks (2) Franchising – a total business package RTM used for the registered goods or services Owner controls quality, image of shop, staff training. Franchisee must use Trademark, Eg Benetton - clothing McDonalds – fast food Hertz – car rental

18 Vivien Irish, WIPO and TPI, Istanbul 2005 Licensing of Trademarks (3) Eg: Disney licensed several cartoon characters for use on swimwear, licensee paid 10% of wholesale selling price Merchandising – RTM used on different goods. Eg: Cadillac cars licensed its name for use on leather goods; different companies in China, Taiwan and Japan paid 5 to 10% of wholesale selling price (US$5M)

19 Vivien Irish, WIPO and TPI, Istanbul 2005 The End thank you


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